WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Archer-Daniels-Midland Company v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / omeonu ome
Case No. D2021-2721
1. The Parties
The Complainant is Archer-Daniels-Midland Company, United States of America (“United States”), represented by Innis Law Group LLC, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / omeonu ome, United States.
2. The Domain Name and Registrar
The disputed domain name <adm-n.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2021. On August 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 19, 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 the Complainant on August 24, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 25, 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 the Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on October 7, 2021. 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
Founded in 1902, the Complainant is an international, multi-billion dollar company with over 30,000 employees serving more than 140 countries worldwide. Originally a food and ingredients company, the Complainant’s business now includes printing and publishing; financial and business management; fuel production, logistics, and research and development services.
The Complainant maintains its global presence online via its websites, specifically its official website at “www.adm.com”, which describes the history of the Complainant, its array of products and services, and provides to consumers the latest news about the Complainant. Moreover, the website allows the Complainant’s customers to conduct business with the Complainant from anywhere in the world.
The Complainant owns numerous trademarks for the ADM trademark in the United States for a wide range of goods and services. For example, the Complainant owns, among others, the following:
ADM, United States Registration No. 1,386, 430, registered on March 18, 1986, with a first use and first use in commerce date of 1923, in International Classes 1, 4, 12, 16, 29, 30, 31, 33, and 39;
ADM, United States Registration No. 2,766,613, registered on September 23, 2003, in International Classes 16, 35, 36, and 42; and
ADM, United States Registration No. 2,301,968, registered on December 21, 1999.
The Complainant also owns hundreds of additional trademark registrations in numerous jurisdictions worldwide.
The aforementioned trademarks are hereinafter collectively referred to as the “ADM Mark”.
The Disputed Domain Name was registered on September 3, 2020, almost a century after the Complainant first began to use its ADM Mark in commerce. According to the Complainant, the Respondent purportedly used the Disputed Domain Name to perpetuate a phishing scheme in which the Respondent configured the Disputed Domain Name for email functions and used the email address to impersonate the Complainant and send fraudulent emails purportedly from one of the Complainant’s employees to its unsuspecting customers. The purpose of the emails was to request payments from the Complainant’s customers and have the payments redirected to the Respondent, acting as the Complainant.
On September 27, 2021, the Center received an email from an individual who claimed not to have any connection to the Disputed Domain Name or this proceeding. The individual wrote to the Center because the registrant of the Disputed Domain Name apparently used that individual’s office mailing address on the WhoIs site for the Disputed Domain Name.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s ADM Mark
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the ADM Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the ADM Mark based on its over 100 years of use as well as its registered trademarks for the ADM Mark in the United States and other jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the ADM Mark.
The Disputed Domain Name consists of the ADM Mark in its entirety followed by the letter “n” joined by a hyphen, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms or letters. See ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004 (finding the disputed domain name confusingly similar to the trademark despite the addition of the letter “s”). See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Further, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281.
Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s ADM Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it, nor any evidence that the Respondent was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). Moreover, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Furthermore, the Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a fraudulent phishing scheme on unwitting customers of the Complainant by attempting to redirect funds meant for the Complainant to itself. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1. Given the phishing scheme the Respondent operated by configuring the Disputed Domain Name to send email communications impersonating the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for commercial gain with the intent to mislead by defrauding the Complainant’s customers.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Disputed Domain Name was registered more than 100 years after the Complainant first began using its ADM Mark and used the mark as part of an email phishing scheme to mislead and defraud the Complainant’s customers. Therefore, the Panel finds it likely that the Respondent had the Complainant’s ADM Mark in mind when registering the Disputed Domain Name.
Second, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed at the Complainant’s unsuspecting customers, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails to the Complainant’s customers, requesting that payments should be sent to the Respondent, acting as the Complainant, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s ADM Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the domain name in bad faith). Further, previous UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the domain name are evidence of bad faith. See WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”). Moreover, the Respondent created a false Authorization Letter of Funds Transfer that the Respondent sent along with the emails to the Complainant’s customers to bolster its request for funds. On the Authorization, the Respondent displayed the ADM Mark as well as its design featuring the Complainant’s signature leaf logo. Thus, the Respondent further deceived the Complainant’s customers by intentionally attempting to attract, for commercial gain, the Complainant’s customers, past or prospective, seeking the ADM website by creating a likelihood of confusion with the ADM Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain name.
Third, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer an opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s ADM Mark.
Finally, as explained above, the Respondent appears to have used a false address when it registered the Disputed Domain Name. Such false registration is yet another example of the Respondent’s bad faith registration and use of the Disputed Domain Name.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <adm-n.com> be transferred to the Complainant.
Lynda M. Braun
Date: October 21, 2021