Monsanto Company v. MDRGF c/o Francois
Veillerette
Claim Number: FA0603000660862
PARTIES
Complainant is Monsanto Company (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP,
77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is MDRGF c/o Francois Veillerette (“Respondent”), 7 Rue Principale, Saint
Deniscourt 60380, France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <monsanto-france.com> and <monsanto-ogm.com> , registered with Dstr Acquisition Vii, Llc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 15, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 16, 2006.
On March 17, 2006, Dstr Acquisition
Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <monsanto-france.com> and <monsanto-ogm.com> domain names are registered with Dstr Acquisition Vii, Llc and that the
Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc
has verified that Respondent is bound by the Dstr Acquisition Vii, Llc registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 21, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 10, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@monsanto-france.com and
postmaster@monsanto-ogm.com by e-mail.
A timely Response was received and determined to be complete on April
7, 2006.
On April 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
FACTUAL BACKGROUND
The Respondent has not contested the factual allegations of the
Complaint. As such, the Panel may take
as true all factual allegations of the Complaint. See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000); see also Talk City, Inc. v. Robertson, D2000-009 (WIPO Feb. 29,
2000) (“In the absence of a response, it is appropriate to accept as true all
allegations of the complaint.”).
Complainant has been for at least fifty years and is currently a
provider of agricultural products and solutions. Complainant does business in the United States and in France
through its affiliated company, Monsanto Agriculture France SAS, commonly known
as “Monsanto France.” Both Monsanto and
Monsanto France are in the business of production of genetically modified
organism, or “OGM’s.”
Complainant is the owner of the following United States trademarks:
Reg. No. 2,769,375 for the mark MONSANTO (hereinafter sometimes referred to as
the “Monsanto Mark”), and Reg. No. 2,766,879 for the mark MONSANTO plus
design. Complainant is owner of the
European Union trademark number 002028819 for the mark MONSANTO plus
design. Complainant sells many of its
products under the MONSANTO brand.
Monsanto France’s website can be found at <www.monsanto.fr>.
Respondent registered the domain names <monsanto-france.com>
and <monsanto-ogm.com>
(hereinafter sometimes referred to as “Respondent’s Domain Names”) years after
Complainant began extensive marking of its goods and services under the
Monsanto Mark.
At the time the Complaint was filed, Respondent’s Domain Names did not
resolve to any content of their own.
At the time the Complaint was filed, the <monsanto-france.com> domain name redirected consumers to
content which contained infringing copies of Monsanto’s copright protected
images and unauthorized derivative works of these images and mutilation of
Monsantos’ trademarks.
Complainant has not given Respondent any license, permission, or
authorization by which Respondent could make any use of the Monsanto mark.
Respondent filed a Response consisting of a letter dated April 6, 2006
in which the Respondent provided a copy of a letter dated March 23, 2006 that
was directed to the registrar of the Respondent’s Domain Names. In this letter to the registrar, the
Respondent requested that the registrar “suppress” the Respondent’s Domain
Names. It is not entirely clear to the
Panel what this means, as it could mean “delete,” “suspend,” or “cancel.” For purposes of this award, the Panel will
interpret this word to mean “cancel.”
In addition, the Respondent provided a copy of a mailing receipt for
said letter to the registrar. The
Respondent provided no other contentions, facts, or arguments concerning any
issue raised by the Complaint.
Respondent’s Domain Names are not currently operative.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(i)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(ii)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii) the
domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy has two
prongs: 1) that the Complainant has rights in a relevant trademark or service
mark, and 2) that the Respondent’s domain name is identical to or confusingly
similar to Complainant’s relevant trademark or service mark.
The Panel finds that Complainant has rights
in the Monsanto Mark by virtue of its United States trademark
registration. See Am. Online, Inc., v. Thomas. P Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that a successful trademark
registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech,., Inc., . DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that a USPTO registration
establishes rights in a mark).
The Panel finds that Respondent’s Domain
Names are confusingly similar to Complainant’s Mark. Each of Respondent’s Domain Names contains the word “monsanto,”
which is identical to Complainant’s Mark.
Further, in each of Respondent’s Domain Names, the word “monsanto” is in
the primary position, where it necessarily attracts attention and thereby
governs the perception of Respondent’s Domain Names. The addition of a country designator, here “france,” does not add
distinguishing content. See AT&T Corp. v. WorldclassMedia.com,
D2000-0553 (WIPO July 28, 2000) (“The addition of the name of a place to a
service mark, such as the addition of “France” to “AOL” is a common method for
specifying the location of business services provided under the service
mark. The addition of a place name
generally does not alter the underlying mark to which it is added.”); see also Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain
name <net2phone-europe.com> is confusingly similar to the complainant’s
mark because the combination of a geographic term with the mark does not
prevent a domain name from being found confusingly similar”). Adding misspellings and additional letters,
here “ogm,” does not create a distinct impression and does not overcome
confusing similarity. See Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letter to words, a respondent does not create a distance mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks). Further, the addition of a
hyphen does not add distinguishing content.
See Chernow Commc’ns, Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of
punctuation marks, such as hyphens, does not alter the fact that a name is
identical to a mark.”). Further still, the addition of “.com” does
not add distinguishing content. See
Innomed Techs., Inc. v. DRP Services,
FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“The differences between the disputed domain name,
<nasalaire.com>, and Complainant’s NASAL-AIRE mark are the omission of
the hyphen and the addition of the top-level domain, both of which are
irrelevant for purpose of the Policy.”).
The Panel finds that Respondent has no rights
or legitimate interests in Respondent’s Domain Names. Once a complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to show that it has legitimate
rights or interests in a domain name pursuant to Policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under the
Policy ¶ 4(a)(ii)”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov., 28,
2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist). Here Respondent has made no showing that it has rights or
legitimate interests in Respondent’s Domain Name, and therefore fails in its
burden.
The Panel finds that Respondent registered
and used Respondent’s Domain Names in bad faith.
The bad faith element of the Policy is, as
noted above, found in Policy ¶ 4(a)(iii).
Examples of what conduct can give rise to a finding of bad faith is
provided in Policy paragraph 4(b), which reads:
“b.
Evidence of Registration and Use in Bad Faith. For purposes of Paragraph 4(a)(iii), the following circumstances,
in particular but without limitation [emphasis
supplied], if found by the Panel to be present shall be evidence of the
registration and use of a domain name in bad faith:
(i)
circumstances
indicating that you have registered or have acquired the domain name primarily
for the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of your documented out-of-pocket cost directly related to the domain
name; or
(ii)
you have
registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in the corresponding domain name,
provided that you have engaged in a pattern of such conduct; or
(iii)
you have
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv)
by using the
domain name, you have intentionally attempted to attract, for commercial gain,
Internet users to your web site or other on-line location, by creating a
likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your web site or location or other
product or service on your web site or location.”
As an initial matter, the Panel notes that
Respondent’s actions do not match exactly with any of these examples. There is no indication from the Complaint
that Respondent is attempting to offer Respondent’s Domain names for sale as
contemplated by Policy ¶ 4(b)(i). There
is no indication that Respondent’s Domain Names prevent Complainant from
reflecting its trademark in a corresponding domain name as contemplated by
Policy ¶ 4(b)(ii). There is no
indication that Respondent and Complainant are competitors as contemplated by
Policy ¶ 4(b)(iii). And, there is no
indication that Respondent is attempting to attract Internet users for
commercial gain as contemplated by Policy ¶ 4(b)(iv).
However, the Panel finds that Respondent's
conduct involves essential aspects included within Policy ¶¶ 4(b)(iii) and
4(b)(iv). The Panel Finds that
Respondent's Domain Names were filed and used for the purpose of disrupting
Complainant’s business, and in so doing, Respondent was not furthering any of
its own rights and legitimate interests.
This is evident from an examination of Exhibit E attached to the
Complaint, which is a copy of a page from the website to which the <monsanto-france.com> domain name
resolved. This page from this web site
included infringing copies of Monsanto’s copright protected images and
unauthorized derivative works of these images and mutilation of Monsantos’
trademarks. The panel finds that
Respondent intentionally attempted to attract Internet users to an online
location by creating a likelihood of confusion with Complainant's mark as to
the source, sponsorship, affiliation, or endorsement of this web site location,
and in so doing, Respondent was not furthering any of its own rights and
legitimate interests. This is evident
from Respondent's use of confusingly similar domain names with actual knowledge
of Complainant’s rights. This
conclusion arises from the nature of the content on the web site to which the
Respondent's <monsanto-france.com>
domain name resolved, being criticism of Complainant and Complainant’s
activities. This type of content
necessarily presupposes actual knowledge of Complainant and Complainant’s Mark.
Further, the nature of the content on the web
site to which Respondent’s domain name <monsanto-france.com>
resolved is intended to tarnish the trademark at issue, which under Policy ¶
4(c)(iii) is specifically inconsistent with a legitimate interest on the part
of Respondent. This Policy paragraph
reads:
“c. How to Demonstrate your Rights to and Legitimate Interest in the
Domain Name in Rspoinseing to a Complaint:…(iii) you are making a legitimate
noncommercial or fair use of the domain name, without intent… to tarnish
the trademark or service mark at issue.
(emphasis supplied).
For these reasons the Panel finds that
Respondent’s registration and use of Respondent’s Domain Names was in bad
faith.
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 <monsanto-france.com>
and <monsanto-ogm.com> domain names be TRANSFERRED from
Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: April 28, 2006
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