Sargento Foods Inc. v. Edwards James
Claim Number: FA2005001897517
Complainant is Sargento Foods Inc. (“Complainant”), represented by Jared Briant of Faegre Drinker Biddle & Reath LLP, Colorado, US. Respondent is Edwards James (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sargento-us.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2020; the Forum received payment on May 22, 2020.
On May 25, 2020, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <sargento-us.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 May 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2020 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@sargento-us.com. Also on May 28, 2020, 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 June 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is one of the largest retail cheese companies in the United States. Complainant has rights in the SARGENTO mark through its registration of the mark with multiple trademark offices around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,261,060, registered Dec. 13, 1981). See Amend. Compl. Annexes 3 and 4. Respondent’s <sargento-us.com> domain name is identical or confusingly similar to Complainant’s mark as it entirely incorporates Complainant's mark an adds "-us" and the ".com" generic top-level domain ("gTLD").
Respondent lacks rights or legitimate interests in the <sargento-us.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee of Complainant. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent has made no demonstrable preparations to use the disputed domain name. Respondent previously used an email address associated with the domain name in an attempted phishing attack on Complainant's customers.
Respondent registered and uses the <sargento-us.com> domain name in bad faith. Respondent disrupts Complainant's business by diverting internet traffic to a now defunct website. Respondent also disrupts Complainant's business by using the domain name to attempt fraudulently to obtain payment from Complainant's customers. Respondent registered the domain name with knowledge of Complainant's rights in the mark given how well-known the mark is. Respondent engages in typosquatting which is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the largest retail cheese companies in the United States.
2. Complainant has established its trademark rights in the SARGENTO mark through its registration of the mark with multiple trademark offices around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,261,060, registered Dec. 13, 1981).
3. Respondent registered the <sargento-us.com> domain name on March 8, 2020.
4. Respondent has made no demonstrable preparations to use the disputed domain name and previously used an email address associated with the domain name in an attempted phishing attack on Complainant's customers. These findings indicate that Respondent has no rights or legitimate interests in the domain name and that Respondent registered and used the domain name in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SARGENTO mark based on registration of the mark with trademark offices around the world, including the USPTO (e.g. Reg. No. 1,261,060, registered Dec. 13, 1981). See Amend. Compl. Annexes 3 and 4. Registration of a mark with multiple trademark offices sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Accordingly, the Panel finds that Complainant has established rights in the SARGENTO mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SARGENTO mark. Complainant argues that Respondent’s <sargento-us.com> domain name is identical or confusingly similar to Complainant’s mark as it entirely incorporates Complainant's mark and adds "-us" and the ".com" gTLD. The addition of generic or descriptive terms and a gTLD fails to distinguish sufficiently a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that the <sargento-us.com> domain name is confusingly similar to the SARGENTO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SARGENTO mark and to use it in the disputed domain name, adding the generic term “-us”;
(b) Respondent registered the <sargento-us.com> domain name on March 8, 2020;
(c) Respondent has made no demonstrable preparations to use the disputed domain name and previously used an email address associated with the domain name in an attempted phishing attack on Complainant's customers;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits Respondent lacks rights or legitimate interests in the <sargento-us.com> domain name as Respondent is not commonly known by the disputed domain name and Respondent is not a licensee of Complainant. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as "Edwards James/james foods,” and there is no other evidence to suggest that Respondent was authorized to use the SARGENTO mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent fails to use the <sargento-us.com>domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has made no demonstrable preparations to use the disputed domain name. The failure to make active use of a disputed domain name may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which does not resolve to an active webpage. See Amend. Compl. Annex 8. The Panel therefore finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant contends Respondent fails to use the <sargento-us.com>domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent previously used an email address associated with the domain name in an attempted phishing attack on Complainant's customers. Use of a disputed domain name to pass off as a complainant via email may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (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); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides the Panel the Declaration of Ebru Başaran-Shull alleging that an email associated with the domain name was used to attempt to obtain payment from Complainant's customers. See Amend. Compl. Annex 4. Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent registered and uses the <sargento-us.com> domain name in bad faith as Respondent disrupts Complainant's business by diverting internet traffic to a now defunct website. Use of a confusingly similar domain name to divert Internet users to an expired webpage can be disruptive to a complainant's business and show bad faith registration and use under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). The Panel recalls Complainant provides a screenshot of the resolving webpage of the disputed domain name which does not resolve to an active webpage. See Amend. Compl. Annex 8. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant avers that Respondent registered and uses the <sargento-us.com> domain name in bad faith as Respondent also disrupts Complainant's business by using the domain name to attempt to obtain payment from Complainant's customers. Passing off as a complainant in furtherance of phishing can show bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). The Panel recalls, via Declaration of Ebru Başaran-Shull alleging that an email associated with the domain name was used to attempt to obtain payment from Complainant's customers. See Amend. Compl. Annex 4. The Panel also recalls Complainant argues that Respondent uses the disputed domain name to collect personal information of users. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant argues that Respondent engages in typosquatting which is evidence of bad faith. The registration of a domain name utilizing typosquatting, the intentional misspelling of a complainant's mark, can constitute bad faith registration and use under Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Complainant argues that Respondent's inclusion of the term "-us," the common country abbreviation for United States, constitutes typosquatting. As the Panel agrees, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends Respondent registered and uses the <sargento-us.com> domain name in bad faith as Respondent registered the domain name with knowledge of Complainant's rights in the mark given how well-known the mark is. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a domain name to pass off as a complainant can indicate a respondent had actual knowledge of a complainant's rights in a mark at the time of registration. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that the SARGENTO mark had been in use since 1982 and days after Respondent registered the domain name, Respondent used it in connection with a phishing attempt. See Amend. Compl. Annex 4. The Panel therefore finds that Respondent had actual knowledge of the SARGENTO mark at the time of registration of the disputed domain name, thus constituting bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the SARGENTO mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sargento-us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 23, 2020
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