DECISION

 

Monogram Food Solutions, LLC v. bill wavrin / farmstead

Claim Number: FA2505002155503

 

PARTIES

Complainant is Monogram Food Solutions, LLC ("Complainant"), represented by Nicole Berkowitz Riccio of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Tennessee, USA. Respondent is bill wavrin / farmstead ("Respondent"), Minnesota, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <monogramfoodsus.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 14, 2025; Forum received payment on May 14, 2025.

 

On May 15, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <monogramfoodsus.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 16, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2025 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@monogramfoodsus.com. Also on May 16, 2025, 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 June 6, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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

Complainant states that it provides food services across the United States, with physical plant or office locations in Minnesota, Iowa, Wisconsin, Indiana, Massachusetts, Virginia, and Tennessee. Complainant has been using the MONOGRAM FOODS trademark in connection with its manufacturing, co-manufacturing, private labeling, and other food services since at least as early as 2012. Complainant has ten company-owned facilities, each of which provide strategic food manufacturing focused on the co-manufacturing, private label, and food service channels, distributing a wide range of food products, including chicken products, frozen entrees, snacks, meat snacks, assembled sandwiches, bacon products, baked goods, and other food products, to retail grocery stores, convenience stores, club stores, vending and corrections facilities, drug stores, military locations, foodservice locations, Dollar Stores, and more. It offers these services to various businesses under the MONOGRAM FOODS trademark. In 2021, Complainant surpassed $1 billion in annual revenue under the MONOGRAM FOODS trademark. Complainant achieved another $1.3 billion in revenue in 2022, $1.4 billion in revenue in 2023, and $1.3 billion in revenue in 2024, under its trademark. Complainant operates a website at the domain name <monogramfoods.com> and uses that domain name for its emails. Complainant asserts common law rights in the mark MONOGRAM FOODS.

 

Complainant alleges that the disputed domain name is confusingly similar to its MONOGRAM FOODS mark because it incorporates the mark in its entirety, merely adding the geographic term "us", and the ".com" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in its mark. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain name is redirected to Complainant's legitimate website, and it is used in furtherance of an email phishing scheme. Specifically, potential vendors received emails purporting to be from an actual employee of Complainant, using an email address based on the disputed domain name, stating an intent to procure food products. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The disputed domain name is used in furtherance of an email phishing scheme. Respondent registered the disputed domain name with actual/constructive knowledge of Complainant's rights in its mark. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has common law rights in the mark MONOGRAM FOODS predating the registration of the disputed domain name, and uses the mark to provide food services.

 

The disputed domain name was registered in 2025.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The disputed domain name is used in furtherance of an email phishing scheme; the signature block of the phishing emails displays Complainant's mark and logo.

 

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 common law rights in its MONOGRAM FOODS mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising."). Here, Complainant registered the domain name <monogramfoods.com>, and used it to market and to provide food services well before the registration of the disputed domain name. Further, Complainant used its MONOGRAM FOODS mark in various promotional and advertising materials. Therefore, the Panel finds that Complainant established common law rights in its MONOGRAM FOODS mark, with rights predating the first registration of the disputed domain name. See Monogram Food Solutions, LLC v. Awandong Brice, FA2410002119451 (Forum Oct. 31, 2024) (holding Complainant has common law rights in the MONOGRAM mark); see also Monogram Food Solutions, LLC v. Lemis Frank, FA2410002119452 (Forum Oct. 30, 2024) (holding Complainant has common law rights in the mark MONOGRAM APPETIZERS); see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA0305000157297 (Forum June 26, 2003) (finding common law rights in part because to find otherwise "would be contrary to two prior holdings of Forum panels, who have looked at this express issue with regard to Complainant's rights in its mark").

 

The disputed domain name incorporates Complainant's MONOGRAM FOODS mark in its entirety, merely adding the geographic term "us", and the ".com" generic top-level domain ("gTLDs"). Under Policy ¶ 4(a)(i), adding a gTLD and/or geographic terms and/or relevant or meaningless letters is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Fight Club New York v. (Name Redacted), FA 1836155 (Forum Apr. 26, 2019) ("The Panel accepts that the addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity and it does not sufficiently differentiate the disputed domain name from that trademark."); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.'  These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information for the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). Here, the WHOIS information shows Respondent is known as "bill wavrin / farmstead". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant presents evidence showing that Respondent used the disputed domain name in furtherance of an email phishing scheme. Specifically, potential vendors received emails purporting to be from Complainant, using an email address based on the disputed domain name, stating an intent to procure food products. Use of a domain name in a phishing scheme is not a bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of a domain name per Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) ("On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."); see also Home Depot Product Authority, LLC v. Domain Owner / Knowbe4, FA2204001990823 (Forum May 25, 2022) ("Using a domain name to gain commercially through a fraudulent email scam is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii)."). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and 4(c)(iii)). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, Respondent uses the disputed domain name in furtherance of an email phishing scheme. Use of a domain name in a phishing scheme can show registration and use in bad faith per Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum Jul. 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use.); see also National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant's President and CEO). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the signature block of the phishing emails displays Complainant's mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also 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."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain names and that this constitutes 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 <monogramfoodsus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Richard Hill, Panelist

Dated: June 6, 2025