WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Archer-Daniels-Midland Company v. Shawn Downey
Case No. D2015-0415
1. The Parties
Complainant is Archer-Daniels-Midland Company of Decatur, Illinois, United States of America (“United States”), represented by Innis Law Group LLC, United States.
Respondent is Shawn Downey of Hayward, California, United States.
2. The Domain Name and Registrar
The disputed domain name <adm.international> (the “Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2015. On March 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2015. The Response was filed with the Center on April 1, 2015. The Center received a further communication from Respondent on April 3, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 10, 2015. 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.
4. Factual Background
Complainant was founded in 1902 and is now an international multibillion dollar agribusiness and financial services company with over 30,000 employees and operations in more than 75 countries around the world. Complainant’s global revenues were USD 89.8 billion in 2013 and USD 81.2 billion in 2014.
The ADM mark was adopted and has been continually used in the United States since as early as 1923 in connection with numerous and diverse products and services. Complainant owns many trademark registrations for the mark, ADM, in the United States. United States registration No. 1386430 for the ADM mark, for example, has been registered since 1986 with a first use date of 1923 in connection with a wide array goods and services in the agricultural and industrial sectors. Complainant also owns trademark registrations in the United States for the ADM mark for financial and investment services, including advisory and consulting services, trading in financial instruments, and providing online financial services. In addition, Complainant owns numerous worldwide registrations for the ADM mark, covering numerous goods and services including financial services.
The Domain Name was registered by Respondent on January 15, 2015.
5. Parties’ Contentions
Complainant states that for over four decades, it has spent considerable time, effort, and resources creating, building and maintaining an international presence and reputation in its ADM mark across a diverse range of goods and services. As a result of the promotion of the ADM mark and its global use, Complainant contends that it has built an international reputation and goodwill in the ADM mark, which is now famous. Complainant is a market leader in the global agricultural commodity and processing industry and is one of the world’s largest processors of soybeans, corn, wheat and cocoa, as well as a leader in the production of soybean oil and meal, ethanol, biodiesel, corn sweeteners, cocoa, chocolate and flour. In addition, Complainant makes value-added food ingredients, animal nutrition and industrial products. Although originally a food and ingredients company, Complainant now provides a diverse range of goods and services. At more than 265 processing plants, it converts corn, oilseeds, wheat and cocoa into products for food, animal feed, chemical and energy uses. Complainant also operates a crop origination and transportation network, connecting crops and markets all over the world. Its business covers numerous goods and services beyond agriculture, including financial services and business management services; fuel production, including bioethanol and biodiesel; logistics services (agricultural storage and transportation services); and research and development services.
Complainant also provides financial services and business management services through ADM Investor Services, Inc. (“ADMIS”) and ADM Investor Services International Limited (“ADMISI”). ADMIS, which is located in Chicago, Illinois, has been in the brokerage industry for over 40 years. ADMIS provides trade execution, market research, and customer service in a 24/7 marketplace, and has offices and branches all over the world, including trading centers in London, New York and Hong Kong. ADMIS also provides online brokerage services around the world through a website at “www.admis.com”. Based in London, ADMISI is an affiliate of ADMIS and a full-service investment brokerage company with a 106-year corporate history in London and the international investment markets. In conjunction with ADMIS, ADMISI has related offices in Hong Kong, Mumbai, Singapore, Shanghai and Taipei. ADMISI maintains its online presence through a website at “www.admisi.com”.
Complainant states that it also maintains a presence online through its main website at “www.adm.com”. The website allows consumers to read about Complainant’s history, as well as the progress it has made since it was founded in 1902. The website describes Complainant’s array of products and services and provides consumers with news about Complainant. Moreover, the website allows Complainant’s customers to conduct business with Complainant from anywhere in the world. Complainant also provides online business services through its website at “www.e-adm.com”. This website is designed to provide customers with online ordering of products, including food, feed, fuel, and industrial applications, online viewing of accounts, contracts and invoices, online tracking of rail cars, and online inventory monitoring services for ingredients. In addition, it provides customers with a website for payment of accounts. Moreover, the “www.e-adm.com” website provides clients with research and credit tools.
In sum, Complainant maintains that as the result of its continuous use and promotion of the ADM mark, Complainant has maintained a consistent, long-standing international presence not only as a global agribusiness company with operations all over the world, but also in a diverse range of other business activities including financial services and business management services.
(i) Identical or confusingly similar.
Complainant contends that given the fame of its ADM mark, the Domain Name is visually confusingly similar to the mark. Complainant urges that the Domain Name completely incorporates its well-known ADM mark, and the “adm” portion of the Domain Name is the most prominent part. Moreover, the “.international” Top-Level Domain (“TLD”) is a descriptive and non-distinctive element, which does nothing to prevent the Domain Name’s confusing similarity with Complainant’s ADM mark. See Archer-Daniels-Midland Company v. Jim Zhu, WIPO Case No. D2013-0258 (finding <admapgroup.com> confusingly similar to ADM because it consisted of the ADM trademark and the addition of the elements “ap group” did nothing to prevent confusing similarity). Complainant maintains that the inclusion of the “.international” TLD increases the likelihood of confusion given Complainant’s international presence as a global company and brand. As a result, the Domain Name and Complainant’s ADM mark are visually similar.
Complainant states that the Domain Name and Complainant’s ADM mark are also phonetically similar. The ADM mark is fully encompassed by the Domain Name and, as a result, they are necessarily phonetically similar as the only difference between them is the non-distinctive TLD “.international”. Consequently, the Domain Name and Complainant’s mark are phonetically similar. Finally, the Domain Name and the ADM mark are also conceptually similar. Both consist of three identical letters in the same order with no punctuation. The letters “adm” contained in both have no direct or unequivocal meaning for the average consumer. Complainant maintains that “adm” will be perceived by most consumers as an acronym. As a result, the Domain Name and the ADM mark should be treated as conceptually identical. Furthermore, the Domain Name contains the “.international” TLD, but the inclusion of this descriptive element increases the Domain Name’s confusing similarity with the ADM mark given Complainant’s famous, international presence. Therefore, the concept that will be conveyed by the Domain Name and the ADM mark is the common identical element, “adm”.
Complainant contends further that there is similarity between Complainant’s clients and the consumers being targeted by the website linked to the Domain Name. Complainant is an actively traded global company. The website linked to the Domain Name is targeting average consumers who are interested in Complainant, particularly Complainant’s financial services. According to Complainant, while the Domain Name’s website does not offer investment-related services, it is designed to attract unsuspecting consumers who are looking for Complainant on the Internet and are instead led to the Domain Name’s site. That site includes numerous references to Archer-Daniels-Midland and ADM Milling, one of Complainant’s divisions, as well as links to various investment-related advertising such as “Stock Market Exchange” and “How to Trade Stock”, which Complainant urges is evidence of Respondent’s bad faith. Thus, any consumer who encounters the website linked to the Domain Name may be misled into believing that it belongs to or is somehow affiliated with Complainant. Therefore, the average consumer of the parties’ goods and services must be considered identical or closely similar.
Finally, Complainant contends that the services offered by Complainant, and the alleged services advertised on the Domain Name’s website, are identical. While the website linked to the Domain Name does not specifically offer any specific product or service, Complainant argues that it was designed, in bad faith, to lure consumers interested in Complainant’s financial services. The alleged services being promoted by the website are similar to the services offered by Complainant. Moreover, given Complainant’s global presence in almost every aspect of commercial business, there is an overlap with services being advertised on the Domain Name’s website.
In sum, Complainant contends that given the visual, phonetic, and conceptual similarities, along with the similarities in consumers and services, Respondent’s Domain Name is identical or confusingly similar to Complainant’s ADM mark. See Archer-Daniels-Midland Company v. Chamiris Mantrana, WIPO Case No. D2013-0257 (finding <ad-m.org> confusingly similar because it replicates the same three letters of the ADM mark in the same order).
(ii) Rights or legitimate interests.
Complainant states that it has not licensed or otherwise permitted Respondent to use its ADM mark or to register the Domain Name. Upon information and belief, Respondent is not and has never been commonly known by the Domain Name. Further, Complainant asserts that, upon information and belief, Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Furthermore, upon information and belief, Complainant asserts that Respondent does not use, nor has he made preparations to use, the Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services. On the contrary, Complainant believes that Respondent is a cybersquatter who has obtained the Domain Name in bad faith for the primary purpose of soliciting its sale. A review of the site linked to the Domain Name shows that Respondent is attempting to profit and/or solicit the sale of the Domain Name. The webpage does not contain any content associated with a bona fide business but instead contains advertisements for various businesses, including investment-related services, and prominently includes the statement “Interested in this domain?”
Finally, Complainant asserts that Respondent has included reference to both Archer-Daniels-Midland and ADM Milling, as well as various investment-related links and advertisements, which evidences Respondent’s bad faith. Complainant states, on information and belief, that Respondent is intentionally trying to create a likelihood of confusion with Complainant’s ADM mark for commercial gain by including specific references to Complainant and investment-related services. Given Complainant’s global presence in financial and investment services, an average consumer would believe that the services advertised on the website linked to the Domain Name are Complainant’s services or are sponsored, affiliated or endorsed by Complainant. Thus, the evidence indicates that Respondent has no rights to or legitimate interests in the Domain Name.
(iii) Registered and used in bad faith.
Complainant contends that given the worldwide fame of the ADM mark, Respondent must have been aware of Complainant’s rights in the mark prior to registering the Domain Name. Moreover, Complainant has an immense commercial presence in the United States where Respondent resides. For example, Complainant’s global revenues were USD 89.8 billion in 2013 and USD 81.2 billion in 2014. Nonetheless, Respondent registered the Domain Name on January 15, 2015, long after Complainant’s established rights in the ADM mark. Consequently, Complainant states that, based on the fact that the ADM mark is well known internationally, and especially in the United States, Complainant argues that Respondent’s registration of the Domain Name is “in and of itself sufficient in this case for a finding of bad faith.” Osram Sylvania, Inc. v. Jason Blevins, WIPO Case No. D2009-0233 (although there was no use of the <osramsylvaniainc.com> domain name, bad faith was found by the mere registration of the domain name because the SYLVANIA mark was well known internationally). Therefore, Complainant asserts that these facts alone support a finding that Respondent registered the Domain Name in bad faith.
Furthermore, a review of the site linked to the Domain Name shows that Respondent is attempting to profit and/or solicit the sale of the Domain Name. For example, the top of the webpage contains the solicitation: “Interested in this domain?” When you click on the link provided, a form appears that provides: “Use this form to submit an inquiry to the owner of this domain.” This evidence indicates that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. This evidence also supports a finding of bad faith. In addition, a reverse WhoIs report indicates that Respondent is associated with approximately 272 other domain names. Complainant asserts that this evidence further indicates that Respondent may be a serial cybersquatter, which further supports a finding of bad faith. Hotel Services Company LLC v. Xiaojie Yu, WIPO Case No. D2009-0647 (relying on evidence of a pattern of questionable registration of domain names in finding bad faith). This reverse WhoIs report shows that Respondent has registered numerous other domain names, which appear to infringe on the rights of trademark owners, such as <porschegirl.com>, <jordan.deals>, <esteelaudergirl.com>, and <smurf.tv>. Therefore, the evidence indicates that Respondent is using the Domain Name in bad faith.
Finally, Complainant contends, on information and belief, that Respondent registered the Domain Name and included references to “Archer-Daniels-Midland” and “ADM Milling” to intentionally attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s famous ADM mark as to the source, sponsorship, affiliation, or endorsement of the website and products and services advertised on the website. Respondent’s use of “Archer Daniels Midland” and “ADM Milling Co.” and the advertisement of identical financial, investment-related services evidences that the Domain Name is aimed at creating a likelihood of confusion. Therefore, Respondent is using the Domain Name in bad faith.
Respondent contends that Complainant “is trying to use legal manipulation to obtain for free a domain name they have no legal privilege to.” Respondent states that the acronym “adm” has multiple different meanings, is used by many companies, and is not reserved to be used exclusively by Complainant, as it does not hold the only ADM trademark. Respondent has included links to the websites at “www.trademarkia.com” and “www.acronymfinder.com” to support this point. Respondent argues it would set a bad precedent to allow any company to claim it has rights to all acronyms just because it wants them. Since Complainant’s name is the Archer-Daniel-Midland Company, Respondent asks why should Complainant, above all other companies that might use “ADM”, have exclusive rights to this acronym? Respondent indicates that he has bought a few “acronym” domain names and Complainant is the first company that has filed a claim against him for an acronym. Respondent also argues that it would seem Complainant’s proper acronym should be “ADMC”, since its legal name is Archer-Daniel-Midland Company. Respondent asserts that the “.international” TLD has been available since January 28, 2014; therefore, Respondent queries if Complainant was interested in the Domain Name, why did Complainant not buy it during the past year when it has been available for purchase?
Respondent states that he has not used the Domain Name and, since he first purchased it, it has been linked to a parked page monitored by Google for trademark infringement. Respondent argues that since he has not created a website for the Domain Name, there is no way that he could have defamed Complainant. Respondent indicates that the Domain Name has been linked to GoDaddy.com’s “cash parking” option, which offers the domain name holder a certain amount of money if an Internet user clicks on one of the links on the website associated with the Domain Name. The parked page does not defame or say anything disparaging about Complainant. Respondent states that since he first bought the Domain Name, less than one person per day has visited it, which is an indication that there is no confusion with Complainant. As for Complainant’s claim that Respondent is making money off of the ADM acronym, an acronym which is not exclusive to Complainant and which is shared with other companies, Respondent asserts he has had two clicks on links of the website linked to the Domain Name, which computes to a total of USD 0.15 for the three months he has owned the Domain Name. Of these two clicks, Respondent guesses at least one click (if not both clicks) is from Complainant or its representatives. Since the webpage linked to the Domain Name page is receiving negligible visits per day, Complainant’s claim of confusion is false.
Respondent acknowledges that a portion of Complainant’s claim might be valid as it relates to the company that manages GoDaddy.com’s links for the cash parking pages, which lead to Complainant’s site, among others. Respondent states that he does not control these links. As a link on the parking page to Complainant’s site may be the only valid portion of Complainant’s claim, Respondent states he would willingly take Complainant’s name out of GoDaddy.com’s cash parking, on request.
Respondent states that he is not familiar with Complainant nor has he worked for Complainant, and this is an erroneous assumption on Complainant’s part.
Respondent argues that Complainant is attempting to create a negative view by calling Respondent a cybersquatter and attempting to create a negative view of the normal practice of buying domain names. Respondent explains that selling domain names is nothing new and is a legitimate practice since domain names were first offered for sale by registrars, and he has a right (backed by United States and international law) to sell a domain name.
Respondent claims that Complainant has submitted a list of domain names owned by all “Shawn Downey(s)” worldwide. Respondent is not the only Shawn Downey, and thus the list contains domain names that Respondent does not own. Also, on the list are other domain names that, although the search indicates it is current, Respondent has not owned for a long time. Respondent highlights that there is another individual, “Shawn K Downey”, who owns domain names and is not the Respondent.
Respondent requests Complainant’s claim to the Domain Name be denied, as Complainant does not hold exclusive rights to the letters “adm”, even as a company acronym, since it is shared with other companies that would have an equal right to the acronym.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has strong trademark rights in its well-known ADM mark, including in the United States where Respondent is located.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name …”). Respondent did not attempt to dispute the identity between the Domain Name and Complainant’s ADM mark, which is completely incorporated into the Domain Name. In this case, the Panel finds the Domain Name is identical to Complainant’s ADM mark, even with the addition of the descriptive “.international” TLD, which only serves to reinforce the confusingly similarity given Complainant’s international operations.
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant’s ADM mark.
B. Rights or Legitimate Interests
The Panel finds that Respondent’s has no rights or legitimate interests in the Domain Name. Complainant has not authorized Respondent to use its ADM mark in the Domain Name. Moreover, Respondent is not commonly known by the Domain Name and is not making a legitimate noncommercial or fair use of the Domain Name. The Domain Name has been linked to a parking website that contains sponsored links to sites offering services competing with Complainant, as well as unauthorized links and references to Complainant and one of its divisions. The website includes the statement “Interested in this domain?” In the face of this showing, Respondent has stated that the acronym “adm” has different possible meanings, is used by other companies, and Respondent is entitled to buy a domain name corresponding to an acronym. Respondent’s points, even if assumed to be true for purposes of this second element, do not give rise to any rights or legitimate interests in the Domain Name on the part of Respondent, particularly as Respondent’s “use” of the Domain Name thus far has been for hosting a webpage tied to a “cash parking” system.
Thus, in view of all of the facts and circumstances in this case, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel must determine whether the Domain Name has been registered and is being used in bad faith. In this case, the Panel finds that Complainant’s ADM trademark has developed substantial goodwill and reputation such that it is a well-known mark, including in the United States where Respondent is located. A simple cursory Google search would have shown Respondent that the top half-dozen or more links all relate to Complainant and its operations. Moreover, during the entire time that Respondent has owned the Domain Name (from January 2015), it has been linked to a pay-per-click parking service with unauthorized links to Complainant and with links to Complainant’s competitors
Under circumstances, where Respondent lacks any rights or legitimate interests in the Domain Name and admits to being an individual who registers numerous domain names as a business practice, including several that relate to third-party trademarks, Respondent cannot invoke willful blindness of Complainant’s well-known ADM mark. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (“Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing Internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with this good faith requirement. The Panel holds that the Respondent cannot consistent with the Policy shield its conduct by closing it eyes to whether the domain name it is registering is identical or confusingly similar to the trademark of another.”); WIPO Overview 2.0, paragraph 3.4 (panels have applied a concept of willful blindness in UDRP cases as a basis for finding bad faith).
Regarding Respondent’s use of the Domain Name, it has been used for the bad faith purpose of attracting, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s trademark. Despite Respondent’s arguments that he was not responsible for the content on the parking site linked to the Doman Name, the Panel agrees with those UDRP panels who have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant operates. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. The Panel observes that Respondent states he would willingly take Complainant’s name out of GoDaddy.com’s cash parking database on request. This after-the-fact offer is insufficient and does not cure Respondent’s bad faith use prior to the commencement of the case. See WIPO Overview 2.0 (“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.”). Facing bad faith use, a trademark owner such as Complainant must be able to look to the relevant domain name registrant for enforcement purposes. In accordance with paragraph 2 of the Policy, Respondent as an experienced registrant of numerous domain names (even if as he claims, some are historical) should be aware that it is his “responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
The Panel finds that in this case, by using the Domain Name, Respondent has intentionally attempted to attract Internet users to a pay-per-click parking site by creating a likelihood of confusion with Complainant’s well-known ADM mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. This amounts to bad faith use within the ambit of the Policy.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name 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 Domain Name <adm.international> be transferred to Complainant.
Christopher S. Gibson
Date: May 4, 2016