WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Archer-Daniels-Midland Company v. Damian Macafee
Case No. D2003-0198
1. The Parties
The Complainant is Archer-Daniels-Midland Company, Decatur, Illinois 62526 of United States of America, represented by Sterne, Kessler Goldstein & Fox, PLLC of United States of America.
The Respondent is Damian Macafee, London, W1P 1LA, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name is registered with BulkR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2003. On March 13, 2003, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain name at issue. On March 14, 2003, BulkR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 the Respondent of the Complaint, and the proceedings commenced on March 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on April 9, 2003.
The Center appointed Knud Wallberg as the Sole Panelist in this matter on April 10, 2003. 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
This Complaint is based upon the trademark "ADM," which is registered with the United States Patent and Trademark Office. A database printout concerning these registrations was attached to the Complaint. The mark has been adopted and continually used in commerce by Complainant since at least as early as 1923 in connection with a wide variety of business services and products, including procuring, transporting, storing, processing and merchandising agricultural products.
The ADM mark is used internationally by Complainant for the above-referenced goods and services. Complainant also uses the ADM mark on its web sites, located at "."
Complainant uses the ADM mark in all types of advertising media, including radio, national television, the internet, trade shows, brochures and in various other media.
As a result of the promotion of the mark ADM, the mark has, according to the Complainant acquired significant goodwill and wide public recognition, by which Complainant and its goods and services are known to the public and by which its source and origin are identified.
5. Parties� Contentions
A. Complainant
1) Respondent�s registered domain name is confusingly similar to and identical to Complainant�s mark ADM.
By using the exact lettering of Complainant�s well-known mark, Respondent demonstrates intent to create a likelihood of confusion with Complainant�s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent�s website. Any contemplated use of the domain name is likely to misleadingly divert web users trying to find ADM�s goods and services on the Internet.
2) Respondent has no rights or legitimate interest in the domain name.
Upon information and belief, Respondent is not and has never been commonly known by the domain name , either as a business, an individual, or an organization.
Respondent does not use this domain name in connection with a bona fide offering of goods or services. The domain name does not resolve to a web site or other lawful Internet presence.
Respondent is not making a noncommercial or fair use of the domain name.
Despite Complainant�s repeated requests for a response (by email and phone), to date Respondent has failed to articulate any rights or interest Respondent has in the domain name . Copies of Complainant�s correspondence to Respondent were attached to the Complaint.
3) The domain name was registered in and is being used in bad faith.
Respondent registered the domain name on December 12, 2000, long after Complainant had established rights in and to the mark ADM.
Respondent recently renewed the registration for on January 1, 2003.
After Complainant discovered that Respondent registered the domain name Counsel for Complainant sent two cease and desist letters by email (i.e. January 28, 2003, and February 4, 2003), informing Respondent that ADM was a registered mark of Complainant and requesting that Respondent cancel its registration of the domain name with Bulkr or assign the domain name to Complainant. Complainant also tried to phone Respondent, but the phone number listed in the WHOIS information is not a working number.
On February 14, 2003, Respondent replied to Counsel for Complainant�s February 4, 2003, email and stated, "I recently left the hospital after a prolonged stay. I am still recuperating, but just beginning to catch up on e-mail. I will need some time to get your Microsoft attachment translated into text, so I trust you may be patient�with me�." Counsel for Complainant replied to Respondent�s February 14, 2003, e-mail by attaching the original cease and desist letter in PDF format and asking Respondent to inform counsel whether or not he could read the PDF document or, in the alternative, to let counsel know if he would prefer a facsimile copy of the letter. To date, Respondent has not replied.
Respondent is aware of Complainant�s United States Patent & Trademark Registration for and Complainant�s use of the mark ADM, as well as the goodwill associated therewith, yet he has refused to respond substantially to Complainant�s emails, to cancel his domain name registration or to transfer the domain name despite evidence of such trademark ownership.
As owner of the ADM mark, Complainant has invested substantial money in an effort to market its goods and services. This year alone, Complainant intends to spend a substantial amount on marketing the mark ADM through advertisement in various media.
Respondent has been the registrant of various other domains, including, inter alia, , , and , all of which were the subject of UDRP proceedings, and all of which were ultimately transferred to the rightful trademark owner/Complainant under fact patterns virtually identical to those here.
On information and belief, Respondent registered the domain name , as well as the other well-known domains above, in order to divert traffic from the legitimate owners� websites, prevent the legitimate owners from using these sites to point to their respective web sites, and to potentially take advantage of the owners� goodwill or otherwise benefit from the owners� investment by reserving an identical domain name. The instant case is no different.
Although Respondent does not currently use the domain name under certain facts and circumstances even inaction can constitute "bad faith" use. See, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, 7.12 ("[i]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant�s rights under trademark law.") See, also, JVC Americas Corp. v. Damian Macafee, ICANN Case No. CPR007-001031, "Respondent�s bad faith use of the domain name is clearly demonstrated by his inaction, that is, his passive holding of the domain name to the exclusion of Complainant, the owner of the JVC mark."
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a 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 but without the benefit of a Response.
A. Identical or Confusingly Similar
The domain name is phonetically and visually identical to the marks in which Complainant has rights, except for the addition of the suffix ".org." The domain name is thus confusingly similar to the trademark AMD in which the Complainant has rights.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name. Since Respondent has not filed a response, the Panel will not go into further elaboration as to whether such legitimate interest actually could exist or not.
The prerequisites in the Policy, Paragraph 4(a)(ii) and Paragraph 4(c) are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
The burden of proof of bad faith lies with Complainant, and the Panel finds that the question on registration and use in bad faith is somewhat questionable in the present case.
On the one hand Complainant�s trademark AMD is apparently neither registered nor used in the country of residence of the Respondent, United Kingdom, and the Complainant has not provided any conclusive evidence showing that Complainant had or ought to have any knowledge of Complainant�s trademark rights when the contested domain name was initially registered. On the other hand, Respondent has not rebutted Complainants claim that he knew of Complainant�s rights.
In addition, it is clear from the provided information and from the Panel�s verification thereof, that Respondent has been the responding party in several other cases under the UDRP, in which he has registered and used domain names in bad faith. It is therefore reasonable to conclude that Respondent can be seen as being engaged in a pattern of such conduct.
The contested domain name is currently not used to promote an active web site. When entering the domain name in the URL a standard holding page from what appears to be the Respondent�s ISP emerges. As it has been first established in WIPO Case No. D2000-0003, Telstra Corp. Ltd. v. Nuclear Marshmallows and confirmed in numerous later cases the concept of "use" in the Policy is not limited to active, i.e. directly infringing use. In the Panel�s view the present use not only prevents Complainant from reflecting their trademark in a corresponding domain name but the use is also liable to disrupt or otherwise harm the Complainant�s business.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, Paragraph 4(a)(iii) are also fulfilled in this case.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: April 23, 2003
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