Cargill, Incorporated v. Sales Office / Cargill Brasil
Claim Number: FA1706001737212
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Cozen O’Connor, Minnesota, USA. Respondent is Sales Office / Cargill Brasil (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargiillbrasil.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2017; the Forum received payment on June 23, 2017.
On June 26, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <cargiillbrasil.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cargiillbrasil.com. Also on June 28, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CARGILL marks in connection with the creation and sale of electronics products. Complainant registered the CARGILL marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 880,665, registered Nov. 11, 1969), as well as in numerous other jurisdictions, which demonstrates its rights in the mark. Respondent’s <cargiillbrasil.com> is confusingly similar to Complainant’s mark because it incorporates the CARGILL marks in its entirety, adding only an extra letter “i,” the geographic term “brasil,” and the generic top-level domain (“gTLD”) “.com.” None of these changes meaningfully distinguishes the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <cargiillbrasil.com>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the CARGILL marks for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, as the disputed domain name resolves to a parked site which, presumably, generates pay-per-click revenue for Respondent. Further, Respondent has used the domain name to host an email address with which Respondent is fraudulently attempting to pass off as Complainant, so that it may ‘negotiate business contracts’ on Complainant’s behalf. Neither of these functions constitutes a bona fide offering or legitimate noncommercial use of any kind.
Respondent registered and continues to use <cargiillbrasil.com> in bad faith. Respondent’s use of the disputed domain involves attracting Internet users to its site using Complainant’s notoriety, presumably so that it may financially profit by way of pay-per-click advertisements and the information it obtains by attempting to pass off as Complainant via email. Additionally, the fact that Respondent apparently uses the disputed domain name to conduct illicit criminal activity is further evidence of Respondent’s bad faith behavior regarding the same. Finally, Respondent must have had actual or constructive notice of Complainant’s rights in the CARGILL mark because of its longstanding and widespread notoriety, and exhibited bad faith in choosing to register a confusingly similar domain name despite this notice.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cargiillbrasil.com>, domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant claims to have registered the CARGILL marks—used in the creation and sale of various electronic goods—with the USPTO as early as 1969 (e.g., Reg. No. 880,665, registered Nov. 11, 1969), which it contends demonstrates its longstanding rights in the marks. Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in the CARGILL marks under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Although here, Complainant argues that the disputed domain name is identical to its CARGILL mark, the Panel finds that the domain name may be more appropriately characterized as confusingly similar, and chooses to analyze Complainant’s argument under that prong of Policy ¶ 4(a)(i). Complainant argues that the disputed domain name is identical to its CARGILL mark because it is composed entirely of the mark, with only three minor additions: an additional letter “i,” the geographic term “brasil,” and a “.com” gTLD. None of these, Complainant argues, sufficiently distinguishes the disputed domain name from its CARGILL marks. Adding or repeating letters in order to produce a visually-similar misspelling of a mark does not sufficiently differentiate a disputed domain name. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The addition of geographic words—particularly those which describe a location in which a complainant conducts corporate activities—also fails to sufficiently distinguish domain names from registered marks. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Finally, the addition of the “.com” gTLD is insufficient to preclude a finding of confusing similarity. See AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, the Panel finds that the changes Respondent made to Complainant’s CARGILL marks in the <cargiillbrasil.com> domain name do not serve to differentiate the two for the purposes of Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <cargiillbrasil.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the CARGILL marks, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information concerning <cargiillbrasil.com> identifies “Sales Office / Cargill Brasil” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. The Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <cargiillbrasil.com> domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that, since the disputed domain name resolves to a parked webpage, Respondent does not use the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Parked webpages—which typically generate revenue for the holder of the domain name in the form of pay-per-click links and advertisements—do not qualify as a bona fide offering or legitimate noncommercial or fair use of any kind. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Even further than simply disrupting Complainant’s by redirecting its would-be internet traffic, Respondent uses the disputed domain name to attempt to ‘pass off’ as Complainant in an email-based scheme. Respondent seems to be contacting individuals and pretending to be Complainant in order to create ‘business contracts.’ Attempting to pass off as a Complainant through the use of a confusingly similar domain name and its resolving site is also not a bona fide offering, nor can it be considered a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, this Panel agrees that Complainant sufficiently made its prima facie showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant asserts that Respondent registered and uses the disputed domain name for commercial gain. Complainant contends that Respondent uses the disputed domain name to attract Internet users to profit from pay-per-click advertisement revenue and the information it obtains (or attempts to obtain) by passing off as Complainant via email. Capitalizing on the goodwill and notoriety of widely known marks simply to attract internet users to generate pay-per-click revenue can provide evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Further, attempting to pass off as a complainant for personal profit can evince bad faith registration and use of a domain name for purposes of the Policy. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a fraudulent scheme is evidence of bad faith registration and use). Therefore, the Panel concludes that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶ 4(b)(iv).
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant argues that Respondent engages in a fraudulent scheme designed to allow Respondent to obtain Internet user information under the guise of a ‘business contract’—presumably for financial gain. Using a confusingly similar domain name in attempt to procure sensitive information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Further, Complainant contends that Respondent’s email-related activities are illegal, which is evidence of Respondent’s bad faith. Illegal use of a disputed domain name can further evidence bad faith on the part of a respondent. See Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). Thus, the Panel concludes that Complainant sufficiently proved Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Finally, Complainant argues that the CARGILL marks enjoy such widespread fame and notoriety that Respondent must have registered the disputed domain name despite either actual or constructive notice of Complainant’s rights therein, which provides clear evidence of bad faith. Although constructive notice alone is insufficient for a finding of bad faith, the Panel finds that Complainant’s arguments supporting actual notice sufficiently show bad faith registration and use of the <cargiillbrasil.com> domain name pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the CARGILL marks and registered <cargiillbrasil.com> in bad faith.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cargiillbrasil.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 21, 2017
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