WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Archer-Daniels-Midland Company v. Athos Informatica, Athos

Case No. D2017-1719

1. The Parties

The Complainant is Archer-Daniels-Midland Company of Decatur, Illinois, United States of America (“United States”), represented by Innis Law Group LLC, United States.

The Respondent is Athos Informatica, Athos of Sao Paulo, Brazil, represented by Guilherme Jorge, Brazil.

2. The Domain Name and Registrar

The disputed domain name <adm.online> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2017. The Respondent sent email communications on September 21, 2017 and October 5, 2017. On September 26, 2017 a Response was filed with the Center containing solely the Respondent’s consent to the requested remedy.

The Center appointed Alejandro Touriño as the sole panelist in this matter on October 11, 2017. 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

The Complainant, Archer-Daniels-Midland Company, is an international company founded in 1902. The Complainant is the undisputed market leader in the global agricultural commodity and processing industry. It operates and is known by its initials ADM, with over 30,000 employees serving customers in more than 140 countries around the world, including Brazil, the place of residence of the Respondent.

The Complainant has been using the ADM trademark for nearly a century and holds numerous trademark registrations in various jurisdictions for said trademark, including United States word mark registration 1386430 since March 18, 1986 for various goods and services.

The Complainant maintains an extensive presence online through its main website <adm.com>.

The disputed domain name was registered on August 26, 2015. The disputed domain name resolves to a parking page displaying sponsored links and offering the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant is the undisputed market leader in the global agricultural commodity and processing industry. Its goods and services range from printing and publication services to financial and business management services.

The Complainant has spent considerable time, effort, and resources in creating, building, and maintaining a truly international presence and reputation under the name ADM. The Complainant maintains an extensive presence online through its main website “www.adm.com”, intended to allow consumers to learn about ADM and to conduct business with the Complainant from anywhere in the world.

The Complainant has started using its ADM brand in 1923 and has been continuously using it in the United States since that time in connection with numerous products and services. Moreover, the Complainant holds numerous registrations for the ADM trademark in various jurisdictions for a wide range of goods and services. Specifically, since 1986, the trademark ADM has been registered in the United States for several goods and services.

As a result of promoting the ADM trademark and its global use, the Complainant has acquired an enhanced international reputation and goodwill in the ADM trademark, which is now well known and famous.

In the past years, the Complainant has successfully brought several UDRP actions against similar fraudulent domain names, which had very similar content as the disputed domain name, for instance, displaying pay-per-click links relating to the Complainant´s trademark.

The disputed domain name is visually confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, as “adm” forms the most prominent part of the disputed domain name, followed by the generic Top-Level Domain ("gTLD") suffix ".online". The Complainant contends that previous UDRP panels have found that the gTLD suffix should be disregarded for the purpose of considering identicality or confusing similarity.

The website at the disputed domain name is seeking to attract Internet users looking for the Complainant’s website and divert them to said website. The website contains a link at the bottom of the page, which reads “This domain may be for sale. Backorder this domain”, which redirects Internet users to a third-party website where users can bid for the disputed domain name. Thus, any consumer entering the disputed domain name will be misled into believing that the website belongs to or is somehow affiliated with the Complainant.

The Respondent is not and has never been commonly known, either as a business, an individual, or an organization, by the disputed domain name.

Any claimed rights or legitimate interests in the disputed domain name are negated by the Respondent’s inclusion of pay-per-click links describing the Complainant’s business and the option to bid, in order to “backorder” the domain.

The Respondent is attempting to misleadingly divert consumers or to tarnish the trademark of the Complainant.

The Respondent does not use nor has made preparations to use the disputed domain name regarding a bona fide offering of goods or services.

The Respondent is using the disputed domain name for the primary purpose of soliciting its sale or benefiting from pay-per-click traffic.

The Complainant has not licensed or permitted the Respondent to use its trademarks or to register the disputed domain name.

The Respondent is clearly attempting to intentionally trade on the goodwill of the Complainant’s famous name, trademark, business reputation and global online presence.

Due to the worldwide fame of the Complainant’s trademark and the Respondent’s reference to the Complainant on the website, it is clear that the Respondent was aware of the Complainant’s rights in the trademark prior to registering the disputed domain name.

All this indicates that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Respondent submitted two emails to the Center dated September 21, 2017 and October 5, 2017, respectively, informing on its decision to waive any right over the disputed domain name and agreeing to transfer the disputed domain name to the Complainant.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has demonstrated that it holds trademark registrations in numerous jurisdictions for its ADM trademark, including United States word trademark registration no. 1386430.

The disputed domain name reproduces entirely the Complainant’s ADM trademark with the addition of no other element before the gTLD suffix “.online”. The Panel does not consider that the use of the gTLD suffix “.online” in this context in any way distinguishes the disputed domain name from the Complainant’s ADM trademark (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the ADM trademark in which the Complainant has rights and therefore succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the 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) that the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark 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 trademark or service mark at issue.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to respond to the Complaint and, therefore, has failed to submit any evidence asserting such rights or legitimate interests.

The Respondent is not known by the disputed domain name. The Respondent did not allege nor provide any evidence to show any use of a website under the disputed domain name. The Respondent did not provide any evidence to show preparations made to use the disputed domain name.

The Panel finds that the Respondent did not manage to rebut the prima facie case made by the Complainant that it has no rights or legitimate interests in respect to the disputed domain name, and therefore the Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof. The Panel further finds that the Respondent has not engaged in a bona fide offering of goods or services under the disputed domain name. In addition, the Respondent has submitted two email communications to the Center in which it showed no objection to transfer the disputed domain name to the Complainant.

Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, thus, also succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by means of example, a number of circumstances which may be taken as an indication of bad faith.

In the case at hand, the Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the ADM trademark since at least 1986.

The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Also, the Respondent is operating under the disputed domain name a pay-per-click website with sponsored links connected to the Complainant’s business and to others’ competing services. In addition, the website at the disputed domain name features a notice that the disputed domain name may be for sale.

As a result, the Panel finds that the Respondent has used the disputed domain name incorporating the Complainant’s ADM trademark to attract Internet users to the website at the disputed domain name which features sponsored links. The fact that those sponsored links feature further uses of the Complainant’s ADM trademark and corporate name and that the website also features an offer to sell the disputed domain name only reinforces the inference that the Respondent acquired and has used the disputed domain name for its own commercial benefit.

Based on the evidence that was presented to the Panel, including the Respondent’s communication in which the Respondent agreed to transfer the disputed domain name to the Complainant, the Panel finds that the disputed domain name was registered and is being used in bad faith and therefore succeeds under the third element of the Policy.

7. Decision

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.online> be transferred to the Complainant.

Alejandro Touriño
Sole Panelist
Date: October 25, 2017