1.1 The Complainant is Archer-Daniels-Midland Company of Decatur, Illinois, United States of America (“United States”), represented by Innis Law Group LLC, United States.
1.2 The Respondent is Sinsimula Barnabus of Kampala, Uganda. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with D, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. An amendment to the Complaint was received by the Center on March 23, 2017.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2017.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 26, 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
4.1 The Complainant is a corporation based in the United States. Its business was founded in 1902 and it is engaged in the agricultural commodity and processing industries. Since 2012 it and its predecessor in business (“Specialty Commodities Inc.”) have engaged in the importation, processing and distribution of health ingredients under the name “Specialty Food Ingredients”. Sales under that name were approximately USD 33 million in 2013, USD 92 million in 2014, USD 158 million in 2015, and USD 142 million in 2016.
4.2 The Complainant also owns and operates a website from the domain name from which it promotes its various products, including products sold under the name “Specialty Food Ingredients”. It also uses the domain name to direct Internet users to that website.
4.3 The Domain Name was first registered on March 16, 2016. According to publicly available data from the WhoIs database, the Domain Name is registered in the name of an individual based in Uganda. However, given the use that has been made of the Domain Name it is not clear whether that individual is a real person. For the purposes of the remainder of this decision, references to the Respondent are intended to be references to the person or persons that actually control the Domain Name. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that it has sold products under the “Specialty Food” name since 2012. However, the evidence it has supplied in order to support this contention demonstrates that the actual names that it uses are “Specialty Commodities Inc.”, and “Specialty Food Ingredients”, with in each case a particular emphasis on the word “Specialty”. For example, on its website it uses logos that take the following form:
5.2 The Complainant contends by reason of its activities under these names it has developed and owns common law rights in the term “Specialty Food” with that term having become well-known to consumers and having acquired a secondary meaning identifying the Complainant and its goods and services.
5.3 The Complainant refers to various other proceedings under the Policy in which it was successful. However, most of these cases appeared to have involved domain names that incorporated the term “ADM”, and none of these cases involved claims of rights in the terms “Specialty”, “Specialty Food” or “Specialty food Ingredients”.
5.4 The Complainant contends that the Domain Name has been used to impersonate an employee of the Complainant in an attempt to defraud either the Complainant or third parties through what it describes as a “fraudulent invoice payment scam”. In particular, it is said that the operator of the Domain Name has falsely represented him or herself as the “Purchasing Manager of Specialty Commodities” in order to purchase USD 38,880 worth of goods from a third party.
5.5 In support of that contention the Complainant exhibits a series of emails. None of the emails appear to show the sending of an email from an address that incorporated the Domain Name. Instead they show that emails were sent from a Gmail address that incorporates the text “specialtyfoodus”. However, there is an email from the third-party supplier which appears to be directed to an email address incorporating the Domain Name and to which an email from the Gmail address then responds. From this the Complainant contends that it is apparent that the Domain Name is being used by the Respondent as part of an email address to further the claimed fraud.
5.6 The Complainant contends that the Respondent has no right or legitimate interest in the Domain Name and that the way that it has been used demonstrates that the Domain Name was both registered and used in bad faith. B. Respondent
5.7 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
6.3 The way that the Complainant has presented its case so far as trade mark rights are concerned is unhelpful and arguably even misleading. The Complainant (or perhaps more accurately its lawyers) claims that it has used, and as a consequence has common law trade mark rights in the term “Specialty Food”. However, no evidence is presented of this term being used alone in respect of the Complainant’s products. All the evidence provided suggests that the name that has actually used for its products is instead “Specialty Food Ingredients” and “Specialty Commodities Inc.”, with an emphasis on the word “Specialty”.
6.4 Given this, had the Panel only been able to rely upon the Complainant’s evidence of its own activities it is questionable whether this would have been sufficient for the Complainant confidently to conclude that the term “Speciality Food” (as opposed to “Specialty” or “Specialty Food Ingredients”) had acquired sufficient secondary meaning among its customers for the Complainant to claim common law trade mark rights in the same in the United States.
6.5 Therefore, were this an ordinary dispute between two commercial organisations as to who could use the term “Specialty Food”, this might well have resulted in the Panel taking the unusual step of dismissing the Complaint on the grounds that the Complainant had failed to demonstrate sufficient rights for the purposes of the Policy.
6.6 However, this is not such an ordinary case. The unusual feature is that, as the Panel will go on to describe, the Panel accepts the Complainant’s claim, with submitted evidence, that the Respondent has used the term “Specialty Foods” in an email address with a view to impersonating the Complainant so as to defraud third parties. In RapidShare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089, the Panel expressed the view that although the test of confusing similarity for the purposes of the Policy was an objective one involving a comparison of domain name and mark, in certain cases how the respondent had used the domain name might well inform that objective assessment. Similarly, in the present case the Panel is also prepared to accept that how the Respondent has used the Domain Name, is of itself evidence of how the term “Speciality Foods” is understood among the public and therefore whether the Complainant can claim trade mark rights in the same.
6.7 Therefore, notwithstanding its initial misgivings, the Panel is prepared to conclude that the Complainant holds trade mark rights as claimed in the term “Specialty Foods”. Further, since the Domain Name can only sensibly be understood as that term combined with the letters “us” (which would most likely be read as a reference to the United States) and the “.com” Top-Level Domain, it follows that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
6.8 Given this, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.9 It is typical for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.10 The Panel accepts that the Domain Name has been registered and used with the intention of using it in an email address in order to impersonate an employee of the Complainant in order to fraudulently mislead a third party or parties to supply goods to the Respondent under the mistaken belief that it is supplying those goods to the Complainant.
6.11 The Complainant has not supplied a copy of any email sent from such an email address. However, the Panel accepts that the Domain Name has been used in this fashion from an email chain that has been supplied with the Complaint. That email chain includes an email sent to an email address incorporating the Domain Name and the replies that appear to have been sent by the Respondent from a different email address incorporating the term “specialtyfoodus”. The contents of these emails are consistent with the Complainant’s claims that the Domain Name has been used to further the alleged fraudulent scheme.
6.12 There is no right or legitimate interest in holding a domain name for the purpose of furtherance of fraud through impersonation. Further, the registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins,WIPO Case No. D2008-1308 and The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki,WIPO Case No. D2017-0388). It is difficult to conceive of more clear cut examples of bad faith registration and use of a domain name, even if use of an impersonating email to further fraudulent activity does not obviously fall within the scope of any of the non-exhaustive list examples of circumstances indicating bad faith registration or use set out in paragraph 4(b) of the Policy.
6.13 In the circumstances, the Panel finds that the Complainants have made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision
7.1 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 be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: May 9, 2017
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