DECISION

 

J.R. Simplot Company v. Host Master / 1337 Services LLC

Claim Number: FA2308002059715

 

PARTIES

Complainant is J.R. Simplot Company ("Complainant"), USA, represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Host Master / 1337 Services LLC ("Respondent"), St. Kitts & Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <simplotjr.com>, registered with Tucows Domains Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 30, 2023; Forum received payment on August 30, 2023.

 

On August 31, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <simplotjr.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 August 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2023 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@simplotjr.com. Also on August 31, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On September 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, J.R. Simplot Company was founded in 1929 and has grown to become one of the world's largest privately held agricultural businesses selling products under the trademark SIMPLOT. Complainant has rights in the SIMPLOT mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 798,704, registered November 16, 1965). The disputed domain name is confusingly similar to Complainant's mark as it incorporates the SIMPLOT mark in its entirety, merely adding the letters "j" and "r" (intended to reference Complainant's trade name "J.R. Simplot Company") as well as the ".com" TLD.

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the SIMPLOT mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Respondent's unauthorized use of the SIMPLOT trademark and redirection of the domain to Complainant's website cannot be deemed a bona fide offering of goods or services. Respondent is an active cybersquatter who has engaged in a pattern of bad faith registration of domain names.

 

iii) Respondent registered and uses the disputed domain name in bad faith because Respondent redirects the disputed domain to Complainant's website. Respondent intentionally attempts to attract, for commercial gain, Complainant's customers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Respondent was on actual notice of Complainant's rights in its globally well-known mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on August 28, 2023.

 

2. Complainant has established rights in the SIMPLOT mark based upon registration with the USPTO (e.g., Reg. No. 798,704, registered November 16, 1965).

 

3. Respondent redirects the disputed domain to Complainant's website.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SIMPLOT mark based upon registration with the USPTO (e.g., Reg. No. 798,704, registered November 16, 1965). Registration of a mark with the USPTO demonstrates rights in such a mark for the purposes of Policy ¶ 4(a)(i). Complainant has provided evidence of registration of the SIMPLOT mark with the USPTO. Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i). 

 

Complainant contends that the disputed domain name <simplotjr.com> is confusingly similar to Complainant's mark as it incorporates the SIMPLOT mark in its entirety, merely adding the letters "j" and "r" (intended to reference Complainant's trade name "J.R. Simplot Company") as well as the ".com" TLD.

        

The Panel finds that merely adding the letters "j" and "r" (intended to reference Complainant's trade name "J.R. Simplot Company") as well as the ".com" TLD to Complainant's mark does not prevent a confusing similarity between the disputed domain name and the SIMPLOT mark. The Panel thus finds that the disputed domain name is confusingly similar to Complainant's SIMPLOT mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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.").

 

Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the SIMPLOT mark. When response is lacking, relevant Whois information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 1919893 (Forum Dec. 16, 2020) ("Here, the WHOIS information lists "er nong wu" as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)."). The unmasked Whois information of record identifies "Host Master / 1337 Services LLC" as the registrant of the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant then argues that Respondent fails to use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Respondent's unauthorized use of the SIMPLOT trademark and redirection of the domain to Complainant's website in an attempt to pass itself off as Complainant cannot be deemed a bona fide offering of goods or services. The Panel finds that a simple redirection or forwarding of a domain name to Complainant's controlled website does not grant Respondent rights or a legitimate interest in the disputed domain name and it cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. See Altavista Co. v. Brunosousa , D2002-0109 (WIPO April 3, 2002) (where the panel found that respondent "has no right or legitimate interest to use an otherwise deceptive trademark . . . even if it is directed to the legitimate owner of the trademark"); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that "the linking of the disputed domain name to the Complainant's commercial website is not a legitimate non-commercial or fair use of the domain name" and that the respondent's use "cannot give rise to a right or legitimate interest in the disputed domain name"). Complainant provides a screenshot of the disputed domain name's resolving website showing that it redirects Internet users to Complainant's own website. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent creates a likelihood of confusion with Complainant and its SIMPLOT mark. Complainant argues that the addition of the letters "jr" (intended to reference Complainant's trade name "J.R. Simplot Company") in forming the disputed domain name and the redirection to Complainant's legitimate website clearly reveal Respondent's intention that the disputed domain name be visually mistaken for Complainant's trade name. The Panel is of the view that such a conduct may constitute bad faith. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) ("The Panel finds that Respondent's registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant's own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii)."); see also WordPress Foundation v. Berat Berisha, FA 1657211 (Forum Mar. 1, 2016) (bad faith found where the disputed domain name resolves to Complainant's own webpage); see also Amgen, Inc. v. Alan Samuel, FA 1804634 (Forum Sept. 27, 2018) (respondent's redirection of the disputed domain name back to Complainant's website found to support a finding of bad faith registration and use). The Panel recalls that Complainant provides a screenshot of the disputed domain name's resolving website showing that it redirects Internet users to Complainant's own website. The Panel finds that Respondent attempted to commercially benefit off Complainant's mark, and thus it registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Complainant further contends that Respondent was on actual notice of Complainant's rights in its globally well-known mark as a result of Complainant's extensive use of the mark which long predates the date on which Respondent acquired the disputed domain name as well as the fact that the mark is a unique term that has no meaning other than to refer to Complainant. The Panel infers that Respondent had knowledge of Complainant's rights in the SIMPLOT mark at the time of registering the disputed domain name, due to the notoriety of Complainant's mark and the redirection of the disputed domain name to Complainant's website. The Panel thus finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <simplotjr.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: September 24, 2023