Complainant is Archer-Daniels-Midland Company, United States of America (“United States”), represented by Innis Law Group LLC, United States.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Bucaneer Josh, .buccaneer computer systems, United States.
The disputed domain name <archer-daniel-midland.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On October 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 11, 2021.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 23, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on January 6, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant, Archer-Daniels-Midland Company (“ADM”), is an American multinational food processing and commodities training corporation founded in 1902 and headquartered in Chicago, Illinois. Complainant was originally founded as Daniels Linseed Co. before changing its name to Archer-Daniels-Midland Company in 1923.
Complainant owns numerous trademark registrations of the ADM Mark in the United States for a wide range of goods and services. Sample trademark registrations for Complainant include:
- ADM, United States Reg. No. 1,386,430, registered on March 18, 1986;
- ADM, United States Reg. No. 2,301,968, registered on December 21, 1999; and
- e-ADM, United Stated Reg. No. 3,344,263, registered on November 27, 2007.
The disputed domain name was registered by Respondent on September 20, 2021. At the time of the filing of this Complaint and as of this Decision, the disputed domain name does not resolve to an active website. The disputed domain name has also been used in a fraudulent email scheme.
According to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s ADM Mark in which Complainant has rights as demonstrated through its cited registrations. The ADM Mark was adopted and has been continuously used in the United States since at least as early as 1923 in connection with numerous products and services. Today, the ADM Mark is largely recognizable due to the international nature of Complainant’s business, as well as the online presence Complainant maintains. Complainant maintains an extensive presence online through its main website at “www.adm.com”.
Although the website under the disputed domain name is currently inactive, Complainant asserts that Respondent created a corresponding email address to impersonate a former employee of Complainant in email communications to cause confusion with Complainant’s ADM Mark and company name, and to trade on the reputation and goodwill of the ADM Mark and the presence that Complainant has built via its official website. Complainant states that it uses the domain name <adm.com> to communicate with its consumers and the public. Complainant argues that the disputed domain name completely incorporates Complainant’s full corporate name, with only a misspelling of “Daniels” differentiating it from Complainant’s corporate name “Archer-Daniels-Midland”.
Complainant asserts that the disputed domain name incorporates the ADM Mark and is fraudulently impersonating Complainant by incorporating Complainant’s corporate name in the disputed domain name, and that the removal of a single letter from Complainant’s corporate name – the letter “s” from “Daniels” – does not eliminate the confusing similarity. Complainant also argues that the disputed domain name and the ADM Mark and corporate name are confusingly similar in meaning or connotation. Both consist of three identical words, but for a purposeful misspelling, in the same order with hyphens between each word. Although Complainant’s domain name <adm.com> does not incorporate the entirety of the corporate name, it is not uncommon for “ADM” to be referred to or known as Complainant’s full corporate name. On account of these visual, phonetic, and conceptual similarities, Complainant argues that the disputed domain name and the ADM Mark and corporate name should be treated as conceptually identical.
Regarding the other likelihood of confusion factors, Complainant argues that the disputed domain name targets the same consumers as the ADM Mark and Complainant’s website. Complainant asserts that the disputed domain name purportedly targets average consumers who are interested in or interacting with Complainant. Complainant believes the disputed domain name is designed to deceive unsuspecting consumers, and that Respondent is likely expecting to profit from the disputed domain name either by leading Complainant’s customers to believe that the disputed domain name is in fact Complainant’s, or by selling the disputed domain name to a third-party or Complainant itself. Therefore, Complainant argues that any consumer who encounters the disputed domain name will be misled into believing that the disputed domain name belongs to or is somehow affiliated with Complainant.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that, upon information and belief, Respondent is not and has never been commonly known, either as a business, an individual, or an organization, by the disputed domain name. Respondent’s webpage does not contain any content associated with a bona fide business. Complainant argues that any claimed rights or legitimate interests in the disputed domain name are negated by Respondent’s impersonation of Complainant. Additionally, Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that, instead, Respondent is attempting to misleadingly divert consumers or to tarnish the mark at issue. Complainant also states that, it has not licensed or permitted Respondent to use its corporate name or to register the disputed domain name.
Complainant alleges that Respondent is using the disputed domain name in bad faith, particularly by impersonating a former employee of Complainant for fraudulent purposes. Complainant states that at least one third-party entity was contacted by Respondent via email to ask for purchase quotes for products under the disputed domain name. The email address used the name of an actual former employee of Complainant and the disputed domain name. The third-party entity found contact information for the former employee of Complainant who was being impersonated and informed him of the potentially fraudulent activity. Based on the contents of the email sent by Respondent, Complainant alleges that Respondent was attempting to impersonate an employee of Complainant in an effort to use Complainant’s reputation and goodwill to establish trust with the third-party in order to conduct potential scam attempts in the future. As a result, Complainant argues that Respondent is clearly fraudulently and intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s name as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns several registrations in the United States for the ADM Mark as referenced above. Therefore, Complainant has established that it has rights in the ADM Mark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates Complainant’s full corporate name. Although the disputed domain name drops the “s” from “Daniels”, it remains confusingly similar – nearly identical – to Complainant’s full corporate name and in concept to the acronym represented in the ADM Mark. Complainant set forth that the ADM Mark is recognizable as the initialism for its full corporate name “Archer-Daniels-Midland Company”, and that ADM is commonly referred to as such. Prior UDRP panels have generally found that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is confusingly similar to the relevant mark. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775. Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its ADM Mark.
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to come forward with any evidence showing rights or legitimate interests. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no evidence that Respondent has established trademark rights in the disputed domain name. Complainant has presented evidence that Respondent is using the disputed domain name to allegedly impersonate a former employee of Complainant for fraudulent purposes. The disputed domain name itself does not resolve to an accessible webpage. Panels have categorically held that the use of a domain name for illegal activity (phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) never confers rights or legitimate interests on a respondent. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
Bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the ADM Mark prior to Respondent’s registration of the disputed domain name. Due to the global nature of Complainant’s brand and Respondent’s alleged impersonation of a former employee of Complainant via email sent to a third party, Respondent was surely aware of Complainant and its rights in the ADM Mark when it registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. That Respondent registered a domain name nearly identical to Complainant’s corporate name further indicates that Respondent was aware of Complainant and its ADM Mark.
Respondent is currently using the disputed domain name to allegedly conduct a phishing scheme, or otherwise per se illegitimate activity, while the disputed domain name itself does not resolve to an active webpage. Prior UDRP panels have found that the non-use of a domain name, including use under which the domain name does not resolve to an active website, would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the concealment of the respondent’s identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. The passive holding doctrine applies in this case because Complainant’s mark is highly distinctive, particularly when acknowledging its connotation and meaning, and maintains a global presence; Respondent failed to present any evidence of a conceivable good faith use for the disputed domain name; Respondent has concealed its identity insofar as its name is unknown, as well as its use of a Complainant’s prior employee’s contact details in connection with the disputed domain name; and it is implausible that Respondent can put the disputed domain name to any conceivable good faith use without infringing upon Complainant’s rights in its ADM Marks. The Panel finds it more clear that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name containing Complainant’s corporate name and ADM Mark with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as misleading Internet users and other third parties for Respondent’s commercial gain by conducting phishing schemes or other per se illegitimate activity. A prior UDRP panel has found bad faith in a similar situation in which a fraudulent registrant attempted to impersonate a Complainant’s employee. See Archer-Daniels-Midland Company v. Name Redacted, WIPO Case No. D2016-1618.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <archer-daniel-midland.com> be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: January 20, 2022