national arbitration forum

 

DECISION

 

Cargill, Incorporated v. Domain Privacy Group

Claim Number: FA1305001501652

 

PARTIES

Complainant is Cargill, Incorporated (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA.  Respondent is Domain Privacy Group (“Respondent”), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cargillinvestorservices.net>, registered with DOMAIN.COM, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2013; the National Arbitration Forum received payment on May 24, 2013.

 

On May 24, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <cargillinvestorservices.net> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name.  DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2013 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@cargillinvestorservices.net.  Also on May 29, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Cargill, Incorporated (hereafter “Cargill”) is the owner of the CARGILL trademark used with a variety of products and services, including in the financial and investing industry.  Cargill is the owner of numerous registrations for the CARGILL mark in the United States and in other countries across the world.  In particular, Cargill is the owner of the following marks:

CARGILL       house mark for a line of financial services (full scope of goods in exhibit)        2976862            USA

CARGILL ENERGY AND RISK MANAGEMENT SOLUTIONS         Risk management and financial risk management to enable businesses to strategically manage energy needs    3123920        USA

CARGILL INTERNATIONAL COMMODITY INDEX     Financial risk management 85/851082     USA

CARGILL       Insurance; financial affairs; monetary affairs; real estate affairs 5268818        EU

 

These are mere examples of the various CARGILL marks related to financial and risk management solutions provided by Cargill.  The foregoing Cargill marks are hereinafter jointly referred to as Cargill’s “CARGILL Marks.” Cargill also uses its mark in connection with several websites, including the website located at cargill.com.  Further, Cargill and its subsidiaries also offer financial services under a wide variety of other trademarks, including the marks BLACK RIVER (Reg. No. 2978419), CARVAL INVESTORS (Reg. No. 3494102), and WHITEWATER (EU Reg. No. 3092707).

 

FACTUAL AND LEGAL GROUNDS

Cargill, Incorporated is an international provider of food, agricultural, and financial and risk management products and services.  Cargill offers risk management, investment, and financial solutions for food, financial, and energy customers in world markets.[1]  As part of its services, Cargill structures and markets over-the-counter risk management products on agricultural and energy commodities.  Cargill has continuously worked with businesses to identify their commodity price risk exposure since at least as early as 1994.  Additionally, Cargill and its subsidiaries offer investment services.[2]  Through these services, Cargill provides institutional investors with alternative investment opportunities.  In addition to institutional investors, Cargill provides opportunistic value investment in credit-intensive assets, including consumer, residential, and commercial loan portfolios, real estate, and corporate securities.  A more detailed explanation of Cargill’s financial and risk management business can be found at http://www.cargill.com/products/financial-risk/.

In addition to the financial and investment services, Cargill has extensively used and advertised the famous CARGILL brand in association with a wide range of products and services dating back to at least as early as 1865.  Cargill has invested millions of dollars developing and marketing its business under the CARGILL brand.  As a result of the extensive promotion of the CARGILL brand and trade name, Cargill has developed substantial goodwill and customer loyalty under this trademark.  CARGILL is a distinctive, widely recognized trademark. 

Respondent registered the domain name CARGILLINVESTORSERVICES.NET (“Domain Name”) on January 17, 2013 with Domain.com LLC ("Domain.com") under Domain.com’s registration agreement.  Cargill has not authorized or licensed Respondent to use the CARGILL Marks or any derivative mark for any purpose.  Cargill’s rights in the CARGILL mark dates back to 1865.  Cargill owned and established a protectable interest in its CARGILL Marks years before the Respondent registered the domain name.  As such, there is no controversy as to the fact that Cargill has priority over Respondent.

Respondent has no statutory or common law trademark rights or any other right or legitimate interest to the mark CARGILL or in the infringing Domain Name.  Rather, Respondent has used the domain name to perpetuate a scheme whereby Respondent uses Cargill’s intellectual property to represent itself as Cargill doing business as Cargill Investor Services.

The Respondent has registered and used a domain name that is confusingly similar to the CARGILL Marks in bad faith.  There is no evidence the domain name was registered for a legitimate reason.  The evidence shows the domain name was registered to trade upon the goodwill associated with Cargill’s CARGILL mark and to divert traffic away from Cargill’s own websites to third party websites.  Respondent associated the domain name with a website that prominently displays the CARGILL Marks.  Below is a screen shot of the header and welcome portions of the website that shows the prominent use of the CARGILL Marks:

[image redacted]

 

[image redacted]

The website’s meta data also prominently uses the CARGILL Marks.  For example, the title tag shows:

[image redacted]

Further evidence of the fraud associated with the website is the fact the copyright date associated with the website dates back to 2001, whereas the domain name was not registered until 2013.

[image redacted]

Respondent’s website is commercial in nature.  The site purports to offer a wide range of commercial services, including trading resources, commodities, futures contracts, and equities.  All of these services directly overlap with the services Cargill offers in connection with its CARGILL Marks.

Respondent’s use of the CARGILL Marks is likely to confuse consumers and potential consumers who are attempting to locate Cargill’s financial and investment services.  Respondent lures consumers to a website using a domain name that incorporates the CARGILL Marks combined with the very services Cargill provides.  The website then prominently displays the CARGILL Marks not only in the header, but in connection with the page title and text.  Respondent then directs consumers to open an account by providing personal information.  In addition to personal information, Respondent requests that consumers provide financial information as shown in part below:

[image redacted]

Additionally, Respondent requests driver’s license, passport, or alien identification numbers:

[image redacted]

As further evidence of Respondent’s lack of legitimate rights and bad faith, Respondent has registered other domain names to perpetuate its scheme.  For example, Respondent registered the domain name fdic-gov.org.[3]  That website, which trades on the FDIC name to lure customers to the site, also makes prominent use of the CARGILL Marks:

[image redacted]

(see also http://www.fdic-gov.org.) 

Additional evidence of Respondent’s bad faith comes from evidence Respondent copied the content of its website from third parties.  The content below was located on the website located at http://www.stainc.org:

[image redacted]

[image redacted]

The stainc.org domain name is associated with the Goldmann Capital Management Group.[4]  That same content was found on Respondent’s domain name:

[image redacted]

            Additional content for the domain name at issue was taken from the website located at http://www.condorfinancial.com:

[image redacted]

The condorfinancial.com domain name is associated with Condor Financials sarl.  That same content was found on Respondent’s domain name, including the copyright date:

[image redacted]

 

Moreover, the content headers on the cargillinvestorservices.net website and at condorfinancial.com appear nearly identical with the exception of the color schemes:

Cargillinvestorservices.net:

[image redacted]

 

Condorfinancial.com:

[image redacted]

These facts show that Respondent is not legitimately operating a business under the name Cargill Investor Services or using the domain name cargillinvestorservices.net legitimately.  Rather, the evidence supports a conclusion that Respondent is using the Domain Name is to trade upon the goodwill associated with Cargill’s CARGILL Marks.  That is not a legitimate use.  That is bad faith.  Transfer of the domain name to Cargill is appropriate

 

a.       The Domain Name is Confusingly Similar to the CARGILL Marks.

 

CARGILLINVESTORSERVICES.NET is identical to Cargill’s CARGILL mark with the exception that the domain name adds the generic terms “investor” and “services” in combination with the top level “.net.”  See Science Apps. Int’l Corp. v. WhoisGuard a/k/a Whois Guard Protected, FA0605000707100 (Nat. Arb Forum, June 20, 2006) (holding that the addition of the generic term “stock” to the mark SAIC would not negate a finding of confusing similarity); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that the addition of the suffix .com does not detract from the overall impression of the dominant part of the name).   Therefore, the Domain Name is equivalent to the CARGILL trademark.   

Moreover, consumers are likely to be confused that the website located at the Domain Name, which includes the CARGILL mark is sponsored and/or endorsed by or affiliated with Cargill and its financial and investment business.  That confusion is exemplified by the fact Cargill used to operate a subsidiary by the name Cargill Investor Services.  Despite selling the underlying business, Cargill has continued to operate financial and investing services under the CARGILL Marks.  Indeed, Cargill has offered risk management services since at least as early as 1994 and has used the CARGILL mark dating back to 1865 on other goods and services.  

It is natural for consumers to assume that the website located at the Domain Name, which contains prominent use of Cargill’s mark in connection with services Cargill provides, is sponsored by, affiliated, or associated with Cargill.  See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (holding the content of a website may increase the likelihood of consumer confusion).  The requirement of confusing similarity is met.

b.       The Respondent Does Not Have Any Right or Legitimate Interest in the Domain Name.

 

Respondent does not have any right or legitimate interest in the Domain Name.  Registration of a domain name to perpetuate a scheme to trick consumers to visit an illegitimate website cannot be considered a bona fide offering of goods or services pursuant to Policy ¶4(c)(i).  See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum March 13, 2002) (where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).  Respondent has no legitimate right to the name pursuant to Policy ¶4(c)(ii) in that it has not received permission to use the mark and is offering the domain name for sale.  Moreover, Respondent is not using the mark for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent uses the site for commercial purposes.    

 

1.   Respondent has not used the Domain Name in Connection with a Bona Fide Offering of Goods or Services in that the Intent was to Cause Unsuspecting Consumers to Veer away from Cargill’s Site, Visit Respondent’s Site, and Input Personal and Private Financial Information. 

 

A respondent’s use of a domain name to trick consumers into visiting its website instead of the trademark owner’s site is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i)”).  When a disputed domain name uses a complainant’s mark to offer counterfeit versions of the services offered under that mark, this fails to be a bona fide offering of services.  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i).”).  Likewise, if a disputed domain name is used to or does cause confusion with a complainant’s website, this does not qualify as a legitimate use or otherwise establish rights under Policy ¶¶4(c)(i) or (iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent does not have a bona fide interest in the domain name pursuant to Policy ¶4(c)(i) in that its intent in registering the domain name was to divert traffic away from Cargill and to commercially benefit from the confusion by having consumers visit its website at the Domain Name.  The evidence shows that Respondent registered a domain name that has the commercial impression of the CARGILL Marks.  Consumers seeing that domain name in search results are likely to believe that the Domain Name and website are affiliated with Cargill.[5]  Unsuspecting consumers attempting to visit Cargill’s website are likely to visit Respondent’s website because of the confusing name.  When they arrive at Respondent’s website, they are confronted with a website prominently uses the CARGILL Marks in connection with the same types of services offered by Cargill.  Respondent, in turn, profits off the confusion by collecting names as well as personal and financial information from unsuspecting consumers thinking they are submitting the content to Cargill.  Profiting off of Cargill’s CARGILL Marks is not a bona fide use – it constitutes trademark infringement. 

2.   Respondent has no Legitimate Right in the Domain Name because Cargill has not Granted Respondent Permission to use the Name.

 

Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the mark and has not received Cargill’s permission to use the mark.  Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).  A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name.  Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark).  Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent.”  Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Nat. Arb Forum March 29, 2005).

Respondent does not have a legitimate interest in the Domain Name.  Cargill has not licensed its CARGILL Marks to Respondent.  Cargill’s prior rights to the CARGILL Marks precede Respondent’s domain name registration.  Additionally, there is no evidence Respondent is commonly known by the name CARGILL.  Respondent claims to be “Cargill Investor Services.”  However, no such corporate entity exists. Respondent lists an address of Lake City Way NE, Seattle, Washington 98125 on its website.  A search of the Washington State corporations database reveals no business under that name.  Further, a search for brokerage firms by the name Cargill Investor Services only reveals Cargill’s prior subsidiary, which is listed as inactive.  This evidence shows Respondent is not providing legitimate services.  The Domain Name clearly does not refer to Respondent.

 

3.   Respondent’s Diversion of Traffic to a Commercial Website is not a Legitimate Use. 

 

Respondent is also not using the Domain Name for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the name is used commercially.[6]  Rather, Respondent’s purpose in registering and using the domain name is to trick consumers into believing Respondent is connected to Cargill and to lure Cargill’s web traffic to a confusingly similar website in order to capture their contact information.  Respondent’s use of “Cargillinvestorservices” in the domain name also misappropriates Cargill’s goodwill and cheats consumers by tricking them into visiting Respondent’s website when they think they will see information regarding Cargill and its products and services.

Respondent has no connection to Cargill or Cargill’s CARGILL marks.  Cargill has not licensed its CARGILL trademarks to Respondent.  Cargill’s prior rights to the trade name and CARGILL Marks as well as its federal registrations for the CARGILL Marks precede Respondent’s domain name registration.  That is not a legitimate use.  Transfer is appropriate.

 

c.       The Domain Name Has Been Registered and Used In Bad Faith

 

            Respondent’s registration of a domain name in association with Cargill’s CARGILL Marks shows the registration was in bad faith.  Respondent’s registration of a domain name with the actual knowledge of CARGILL’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii).  Because Respondent’s website associated with the Domain Name is aimed at taking customers away from Cargill, thereby disrupting Cargill’s business, Respondent has also acted in bad faith pursuant to Policy ¶4(b)(iii).  Further, Respondent’s intentional attempt to attract Internet users to its website by using a name that is confusingly similar to CARGILL is also in violation of Policy ¶4(b)(iv). 

1.   Respondent Registered the Domain Name in Bad Faith Knowing of Cargill’s Trademark Rights in the CARGILL Marks.

 

            Respondent’s registration of the Domain Name was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent was on notice of Cargill’s rights.  “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”  Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).  Regardless of actual knowledge, a respondent should have conducted a trademark search prior to the registration of the domain name.  See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case D2001-1319 (Feb 1, 2002) (holding the failure to conduct a trademark search considered an element of bad faith).

            The evidence here shows Respondent had actual knowledge of Cargill’s trademark rights in its CARGILL Marks.  There would be no reason to register a domain name that combines the trademark CARGILL with “investor services” other than to trade on Cargill’s trademark rights.  Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶4(a)(iii).”). Indeed, Cargill’s long standing use of the name Cargill Investor Services and subsequent use of the CARGILL Marks in connection with financial and investment services shows the sole reason to register that name was to trade on Cargill’s CARGILL Marks.

2.   Respondent Acted in Bad Faith when It Diverted Customers from Cargill.

 

            Respondent’s diversion of traffic from Cargill’s own website also shows bad faith pursuant to Policy ¶4(b)(iii).  Previous panels have defined “competitor” under Policy ¶4(b)(iii) as an entity who acts as a rival or opponent. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

            Respondent’s use of the Domain Name is to divert traffic away from Cargill’s own website at www.cargill.com to Respondent’s website.  Respondent and Cargill compete for the same consumers who are searching for products / services under the CARGILL Marks.  By registering a domain name that contains those marks, Respondent directly competes against Cargill for that traffic.  Traffic, in turn, is Respondent’s business.  Respondent’s diversion of consumers away from Cargill’s websites increases the traffic to Respondent’s site, thereby increasing the value of the site because of the additional traffic.  Respondent profits off of the increased traffic who provide personal and financial information on that site.  Cargill is harmed through Respondent’s diversion of traffic away from Cargill’s own websites.  Such use of the domain name is bad faith.

3.   Respondent Acted in Bad Faith by Intentionally Attempting to Attract Internet Users to Its Website for Commercial Gain by Creating a Likelihood of Confusion with Cargill’s CARGILL Mark.

            Respondent’s registration and use of a confusingly similar domain name to obtain consumer contact information is bad faith pursuant to Policy ¶4(b)(iv).  Bloomberg L.P. v. Jane Alley d/b/a BB Fin., FA0307000171260 (Nat. Arb. Forum, Sept. 12, 2003) (holding that respondent’s use of the domain name bloombergbank.com to solicit account details from unwary Internet users was not legitimate and was bad faith); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness). 

            Bad faith intent can also be inferred from Respondent’s choosing to use a designation that it knows to be similar to another’s registered trademark.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum, Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).  Indeed, “there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”  Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).

            Respondent’s intentional attempt to solicit Internet users to its website by using a name that is confusingly similar to the CARGILL Marks shows bad faith pursuant to Policy ¶4(b)(iv).  By placing content on the website that is similar to the content likely to be found in connection with Cargill’s own financial and investment services, Respondent used the Domain Name to deceive consumers into believing it was associated with or connected to Cargill.  Respondent also used the site’s contact page to solicit contact information from consumers.  Those consumers, thinking they were submitting to Cargill, were providing information to Respondent.  Respondent’s use of the domain name in such a manner proves its bad faith.  Transfer of the domain name to Cargill is appropriate.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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(e), 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 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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the CARGILL mark under Policy ¶4(a)(i). Complainant has used the CARGILL mark in association with its brand and wide range of products and services dating back to 1865. Complainant provides evidence of its registrations for its marks with the United States Patent & Trademark Office (“USPTO”) as well as with the Office of Harmonization for the Internal Market (“OHIM”).

USPTO

CARGILL (Reg. No. 880991 registered November 18, 1969)

CARGILL INVESTORS (Reg. No. 3,494,102 registered August 26, 2008)

CARGILL INTERNATIONAL COMMODITY INDEX (Serial No. 85,851,082 filed February 15, 2013).

OHIM

CARGILL: (Reg. No. 5,268,818 registered January 6, 2007)   

Previous panels have found evidence of a registration with the USPTO or other recognized authority is sufficient to prove Complainant has rights in a given mark under Policy ¶4(a)(i). See Petroleo Brasileiro S.A. – Petrobras v. Munoz, FA 1222428 (Nat. Arb. Forum Oct. 16, 2008) (finding complainant’s multiple trademark registrations around the world, including those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”), established complainant’s rights in its mark under Policy ¶4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant has satisfactorily established rights in the CARGILL mark under Policy ¶4(a)(i) through its registrations with the USPTO and the OHIM.

 

Complainant claims the <cargillinvestorservices.net> domain name is identical to Complainant’s CARGILL mark. Respondent added the generic terms “investor” and “services” as well as the gTLD “.net.” The disputed domain name is confusingly similar to Complainant’s mark even with these minor changes. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). Respondent’s disputed domain name is confusingly similar to Complainant’s CARGILL mark under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims Respondent has no rights or legitimate interests in the <cargillinvestorservices.net> domain name because it is not commonly known by the domain name. Complainant has not given Respondent permission or license to use its mark. While the WHOIS information might initially suggest Respondent is commonly known by the disputed domain name, Respondent’s name is fictitious (and is an impersonation of Complainant’s inactive broker/dealer subsidiary).  This means respondent is not commonly known by the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). This means Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii).

 

Complainant claims Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use as required by Policies ¶¶4(c)(i) and (iii).  Respondent is tricking consumers into visiting the website resolving from the <cargillinvestorservices.net> domain name while impersonating Complainant’s inactive broker/dealer subsidiary. Respondent is offering counterfeit versions of services offered by Complainant under its CARGILL mark. Respondent intended to register the confusingly similar domain name is to commercially gain from the Internet customers it attracts to the resolving website, which features Complainant’s CARGILL marks in connection with the same (but counterfeit) services offered by Complainant. Respondent’s resolving website features headers displaying Complainant’s CARGILL mark paired with the terms “Investor Services.”  Respondent’s resolving website features information indicating it is known as “Cargill Investor Services Mergers & Acquisitions Group.” Respondent provides links to third parties including, “Barchart,” “New York Merchantile Exchange,” “Chicago Merchantile Exchange” “CME Group,” “Reuters,” and “CNN.” Using a confusingly similar domain name to attract Internet users to a website featuring similar services or products as a complainant while benefitting from a complainant’s well known mark as well as featuring links to third parties is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name (especially if the services are counterfeit). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Respondent does not have rights or legitimate interests in the disputed domain name under Policies ¶¶4(c)(i) or (iii).

 

Furthermore, a respondent who provides fictitious WHOIS information cannot acquire any rights to the disputed domain name.  Respondent used the name of Complainant’s inactive broker/dealer to register the disputed domain name.  It seems self-evident Respondent cannot acquire rights to a disputed domain name while impersonating Complainant’s subsidiary and providing fraudulent services.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iii). Respondent diverts Internet traffic away from Complainant’s business and to Respondent’s website. Respondent’s use of the CARGILL mark disrupts Complainant’s business and competes with its Internet clients. Respondent’s resolving website features Complainant’s CARGILL mark in addition to information regarding similar services (but counterfeit) to the services Complainant offers. Previous panels have found that when a respondent uses a complainant’s mark to divert a complainant’s customers to respondent’s counterfeit business, it constitutes bad faith use and registration under Policy ¶4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶4(b)(iii)). Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iii).

 

Complainant claims Respondent registered and is using the confusingly similar <cargillinvestorservices.net> domain name to obtain consumer contact information in bad faith under Policy ¶4(b)(iv). Respondent is intentionally attempting to solicit unsuspecting Internet users to its website through the use of its confusingly similar domain name featuring Complainant’s CARGILL mark. Respondent’s disputed domain name resolves to a website featuring information similar to what a consumer would expect to be on Complainant’s website. Respondent deceives consumers into believing it is associated with Complainant in order to gain information from Internet users. Respondent commercially gains from the disputed domain name by having the domain resolve to a website that directs consumers to provide personal information such as financial information, driver’s license, passport, or alien identification numbers, in order to open accounts. Attracting consumers to a website for commercial gain and offering counterfeit services similar to those offered by Complainant indicates bad faith use and registration under Policy ¶4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Complainant claims Respondent is running a scheme to solicit personal information from unsuspecting Internet users. This is “phishing” for financial gain, which adequately demonstrates bad faith registration and use.  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii) as a result of its efforts to obtain personal and financial information from Internet users due to its phishing scheme.

 

Complainant claims its trademark registrations for the CARGILL mark existed well before the registration of the disputed domain name. This Panel finds Respondent had actual knowledge of the mark and Complainant's rights due to the fame of Respondent’s mark. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

Finally, Respondent has provided false WHOIS information by using the name of Complainant’s inactive broker/dealer.  This raises the rebuttable presumption Respondent registered and is using the disputed domain name in bad faith.  Since Respondent has not does do anything to rebut this presumption, it is sufficient evidence to find Respondent has registered and uses the disputed domain name in bad faith.

 

The Panel finds Policy ¶4(a)(iii) satisfied. 

 

DECISION

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

 

Accordingly, it is Ordered the <cargillinvestorservices.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Friday, July 5, 2013

 

 



[1] This provides links to Cargill Risk Management, Black River Asset Management LLC, and CarVal Investors.  The websites to those links are: http://www.cargill.com/company/businesses/cargill-risk-management/index.jsp, http://www.black-river.com/, and http://www.carvalinvestors.com/, all of which are incorporated in this Complaint.

 

[2] Cargill Investor Services, Inc. (“CIS”) was a wholly-owned subsidiary of Cargill, Incorporated.  Cargill sold CIS to Refco Group Ltd in September 2005.  Cargill did not sell the brand and continues to use the Cargill mark in connection with its financial and investment services businesses.

 

[3] While the WHOIS information for fdic-gov.org is hidden under a privacy service, the websites appear connected based on the identical content.  Further, both the cargillinvestorservices.net and fdic-gov.org domain names are registered with Domain.com, LLC, share an IP Address of 66.96.147.120, and an IP Location of Washington – Seattle – The Endurance International Group Inc.

 

[4] The website at stainc.org contains a logo and branding associated with the company Goldmann Capital Management Group.  Despite the fact the website states the company was founded in 1998, the WHOIS information shows the domain name was not registered until 2012.  To the extent Respondent is affiliated with the stainc.org domain name, that registration serves as additional evidence of lack of legitimate rights and bad faith in that the Respondent is merely using the name to attract consumers, not for any legitimate reason.

 

[5] Respondent is responsible for the content on its website.  Ideal Prods., LLC v.Manila Indus., Inc., supra (Respondent cannot duck its responsibility for the site by saying that others choose the content.)  Moreover, to the extent Respondent contends the content is that of a third party, Respondent has not made any use of the domain names, which also constitutes a lack of legitimate interest pursuant to Policy ¶4(c)(i).  See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); Morgan Stanley v. Guerilla Freedom Fighter c/o Bethesda Properties LLC, FA 1061232 (Nat. Arb. Forum, Oct 2, 2007) (holding resolution of domain name to website with no content was not a bona fide offering of goods or services); Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).

 

[6] The financial service offerings do not appear legitimate.  Rather, Respondent’s business associated with the Domain Name appears to be collecting personal and financial information from individuals who mistakenly visit the website.  That is not a noncommercial or fair use.

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page