Cargill, Incorporated v. Cimpress Schweiz GmbH
Claim Number: FA1710001754170
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Cozen O’Connor, Minnesota, USA. Respondent is Cimpress Schweiz GmbH (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cergill.com>, registered with Tucows Domains Inc.
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 October 17, 2017; the Forum received payment on October 17, 2017.
On October 17, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cergill.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@cergill.com. Also on October 17, 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 November 13, 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 offers food, agriculture, financial, and industrial products in services in the United States and internationally in connection to the CARGILL mark. Complainant registered the CARGILL mark with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 880,665, registered November 11, 1969). Respondent’s <cergill.com> is confusingly similar to the CARGILL mark because it takes the mark in its entirety, replacing the letter “a” with an “e,” and attaches a “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <cergill.com>. Respondent has no relationship with Complainant nor is commonly known by the disputed domain name. Instead, WHOIS information identifies the registrant of <cergill.com> as “Cimpress Schwelz GmbH.” Respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <cergill.com> domain name as instead, Respondent’s site once resolved to a parked page. Additionally, Respondent used an email at the disputed domain name to send several emails to Complainant’s employees, attempting to pass off as one of Complainant’s chief officers.
Respondent registered and used <cergill.com> in bad faith. Respondent’s inactive holding of the disputed domain name constitutes bad faith. Additionally, Respondent’s use of the domain name to send fraudulent emails to Complainant’s employees in connection with a phishing scheme further supports a finding of bad faith conduct.
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 <cergill.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.”).
Next, Complainant asserts Respondent’s <cergill.com> domain name is confusingly similar to the CARGILL mark as the misspelling of the mark is insufficient to distinguish the disputed domain name from the mark. The changing of a single letter in a mark and the addition of a gTLD is insufficient to differentiate a mark from a disputed domain name under Policy ¶ 4(a)(i). See Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Here, Respondent changed the “a” in the CARGILL mark to an “e” and attached the “.com” gTLD. The Panel agrees with Complainant and finds Respondent’s disputed domain name to be confusingly similar per 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 contends Respondent is not commonly known by the <cergill.com> domain name and Complainant did not authorize Respondent’s use of the CARGILL mark. When a respondent fails to submit a response, WHOIS information may help panels determine whether or not said respondent is commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). In this case, WHOIS information identifies the registrant for the <cergill.com> domain name as “Cimpress Schwelz Gmbh.” There is no other evidence to suggest Respondent is known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the domain name, and thus Complainant has satisfied Policy ¶ 4(c)(ii).
Next, Complainant asserts Respondent fails to use the <cergill.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent sends fraudulent emails in an attempt to pass off as Complainant. Use of a disputed domain name in an attempt to pass off as a complainant does not evince a finding of rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. Adilcon Rocha, FA 17355949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Here, Respondent sent various emails to Complainant’s employees in an attempt to pass off as Complainant’s Executive Vice President and CFO, Marcel Smits, and asked to meet with them to discuss a “new development.” Complainant asserts Mr. Smits never sent any of those emails. Additionally, Respondent’s <cergill.com> domain name resolves into a parked page, displaying an error stating “Sorry, we couldn’t find that page.” Therefore, the Panel agrees with Complainant and finds Respondent lacks rights and legitimate interests in the <cergill.com> domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Although Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant asserts Respondent registered and used the <cergill.com> domain name in bad faith by failing to make active use of the dispute domain name. Inactively holding a disputed domain name can be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Respondent’s <cergill.com> domain name resolves into a blank screen that only states there is an error with the page. Thus, the Panel finds Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant also contends Respondent registered and used the <cergill.com> domain name in bad faith by engaging in a phishing scheme. Use of a disputed domain name to pass off as a complainant in a phishing scheme represents bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Respondent sent emails to various employees for Complainant under the guise of “Marcel Smits,” the CFO and Executive Vice President for Complainant. As a result, Complainant contacted the registrar for <cergill.com> informing them of the phishing scheme, which resulted in the <cergill.com> domain name being suspended. Therefore, the Panel finds Respondent acted in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cergill.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: November 15, 2017
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