Monsanto Company v. H J Shin
Claim Number: FA0603000669990
Complainant is Monsanto Company (“Complainant”), represented by Ryan M. Kaatz of Ladas & Parry, Digital Brands Practice, 224 South Michigan Avenue, Chicago, IL, 60604. Respondent is H J Shin (“Respondent”), 220 Sungo-ri Buksam-up Chilgok-Gun, Gyeongbuk, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <monsantoseminis.com>, registered with Hangang Systems, Inc. d/b/a Doregi.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 29, 2006; the National Arbitration Forum received a hard copy of the Complaint April 3, 2006. The Complaint was submitted in both Korean and English
On April 03, 2006, Hangang Systems, Inc. d/b/a Doregi.com confirmed by e-mail to the National Arbitration Forum that the <monsantoseminis.com> domain name is registered with Hangang Systems, Inc. d/b/a Doregi.com and that Respondent is the current registrant of the name. Hangang Systems, Inc. d/b/a Doregi.com verified that Respondent is bound by the Hangang Systems, Inc. d/b/a Doregi.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 12, 2006, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 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@monsantoseminis.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <monsantoseminis.com>, is confusingly similar to Complainant’s MONSANTO and SEMINIS marks.
2. Respondent has no rights to or legitimate interests in the <monsantoseminis.com> domain name.
3. Respondent registered and used the <monsantoseminis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Monsanto Company, is a leading provider of
agricultural products and solutions throughout the world. Through its predecessors, Complainant traces
its establishment to 1901. It began
producing and marketing agricultural chemicals in 1945. In 2000, Complainant merged with Pharmacia
Corporation and the merged company formed a new company in 2002. Complainant now has offices in forty-six
countries.
In January 2005, Complainant acquired Seminis, Inc., as a
wholly-owned subsidiary. Complainant’s
subsidiary, Monsanto Technology LLC, holds numerous trademark registrations
worldwide on behalf of Complainant, including registrations for the MONSANTO
(Reg. No. 511,037 issued June 14, 1949) and SEMINIS (Reg. No. 2404461 issued
November 14, 2000) marks with the United States Patent and Trademark Office
(“USPTO”).
Respondent registered the <monsantoseminis.com> domain name January 28, 2005. The disputed domain name resolves to a directory website that displays links to numerous third-party websites, presumably for the purpose of earning referral fees.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant established with extrinsic evidence in this proceeding that it holds registrations for its MONSANTO and SEMINIS marks with the USPTO. The Panel concludes that Complainant’s registrations sufficiently establish Complainant’s rights in the marks for purposes of Policy ¶ 4(a)(i). See Dermalogica, Inc. v. Gerassi, FA 624530 (Nat. Arb. Forum Feb. 22, 2006) (finding that the complainant had rights in the DERMALOGICA mark through its registration of the mark with the USPTO); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that the <monsantoseminis.com> domain name is confusingly similar to the MONSANTO and SEMINIS marks, because the domain name simply incorporates both marks in their entireties with the generic top-level domain “.com.” The Panel finds that combining multiple marks of a Complainant does not form a domain name that is distinguishable from those marks. Therefore, the Panel determines that the disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); cf. G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has legal rights to and
legitimate interests in the marks contained within the disputed domain
name. Complainant has the initial
burden of establishing a prima facie case that Respondent lacks rights
and legitimate interests in the <monsantoseminis.com> domain name
under Policy ¶ 4(a)(ii). Once
Complainant satisfies its burden, the burden shifts to Respondent to provide
evidence of its rights or legitimate interests under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”). Due to Respondent’s failure to respond, the
Panel may presume that Respondent has failed to meet its burden. See Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel chooses to
evaluate whether the evidence provided supports a finding of Respondent’s
rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that it has not authorized or licensed Respondent to register the <monsantoseminis.com> domain name. Furthermore, Complainant points out that nothing in the WHOIS information for the disputed domain name suggests that Respondent is commonly known by the domain name. Respondent has not come forward with any affirmative evidence to contest Complainant’s assertions in this regard. Therefore, the Panel concludes that Respondent has not established rights or legitimate interests in the <monsantoseminis.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Additionally, Complainant contends that Respondent is using the disputed domain name, <monsantoseminis.com>, to divert Internet users to a directory website through which Respondent likely earns click-through fees for diverting Internet users to third-party websites. In Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the respondent was using domain names incorporating the complainant’s DISNEY mark to redirect Internet users to a search engine website that included links to various commercial websites. The panel in that case found that it could infer that the respondent’s diversionary use was for profit, which did not constitute rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). The Panel finds Respondent’s use of the disputed domain name in this case to be nearly identical to the use in Disney and, therefore, concludes that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or (iii) in using Complainant’s registered marks for Respondent’s own commercial benefit. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and using a domain name that contains Complainant’s protected marks. The Panel infers that Respondent receives referral fees for connecting Internet users to third-party commercial websites via the links on its directory website. Respondent’s use of Complainant’s identical MONSANTO and SEMINIS marks to attract Internet users to its own website, where Respondent displays links to third-party websites for Respondent’s profit, suggests that Respondent intended to benefit from the goodwill associated with Complainant’s mark. Respondent’s attempt to gain from possible confusion resulting from its use of Complainant’s marks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monsantoseminis.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 19, 2006
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