WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ConAgra Foods RDM, Inc. v. Mark Berry

Case No. D2013-0240

1. The Parties

Complainant is ConAgra Foods RDM, Inc. of Omaha, Nebraska, United States of America (“US”), represented by Husch Blackwell LLP, US.

Respondent is Mark Berry of Towson, Maryland, US.

2. The Domain Name and Registrar

The disputed domain name <conagra-foods.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2013. On February 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2013, 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 Complainant on February 8, 2013 notifying that the Complaint was administratively deficient as well as providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 11, 2013.

The Center verified that the Complaint together with the amended 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 February 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 4, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 5, 2013.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on April 12, 2013. 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 is a publicly traded Fortune 200 company in the food industry. Complainant distributes foods under brands such as Banquet, Chef Boyardee, Egg Beaters, Healthy Choice, Hebrew National, Hunt’s, Marie Callender’s, Orville Redenbacher’s, PAM, Peter Pan, and Reddi-wip. Complainant has also registered the marks CONAGRA FOODS, CONAGRA, or some variation thereof in at least thirty countries. Complainant asserts that it has used these marks since at least as early as 1970.

The disputed domain name was created on September 13, 2012. The disputed domain name does not lead to a website.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is identical to Complainant’s CONAGRA FOODS mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith for a phishing scam in which consumers are offered nonexistent jobs with Complainant in an effort to gather personal information about applicants.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Complainant’s trademark registrations demonstrate that Complainant has rights in the CONAGRA FOODS mark in multiple classes and multiple countries around the world.

The disputed domain name consists of the CONAGRA FOODS mark with a dash in the middle and the “.com” gTLD at the end. The addition of the dash does not distinguish the disputed domain name from Complainant’s mark, Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853 (“The Panel considers that the omission by the Respondent of the period (.) after the word ‘dr’ and the addition of the ‘dash’ (-) and the misspelling of the name ‘grandle’ are immaterial and irrelevant for these purposes, adding no distinctiveness whatsoever.”), nor does the addition of the “.com” gTLD distinguish the disputed domain name from Complainant’s mark. WRc plc v. W&R Corp., WIPO Case No. D2007-1284 (“The addition of the generic top-level domain ‘com’ is insufficient to distinguish the domain name from Complainant’s mark.”); Amedia Limited v. Bkarato, WIPO Case No. D2008-0567 (“The addition of the gTLD in the domain name can be disregarded for these purposes”).

Accordingly, the Panel finds that the disputed domain name is identical to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii).

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] 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.”

Policy, paragraph 4(c).

There is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. Rather, Complainant asserts that Respondent is using the disputed domain name to send email messages about non-existent job listings in order to entice applicants to provide Respondent with personal information. Complainant attached copies of such email messages as annexes to the Complaint, along with inquiries from consumers seeking to verify the job listings with Complainant. Respondent has not disputed these allegations.

The use of a domain name for a phishing scam does not give rise to rights or legitimate interests in a domain name. Société des Hotels Meridien v. WhoIs Guard / Jim Thiam, WIPO Case No. D2011-1030 (“The Panel accepts the arguments of the Complainant that the Respondent’s only use of the disputed domain name appears to be in connection with this job fraud scam and the related online data collection scheme designed to collect the names, email addresses and other personal contact details from unsuspecting job applicants. The Panel concludes that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademarks and company name. Therefore the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.”).

Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

The use of a domain name (that is likely to be confused with the complainant’s mark) for purposes of a phishing scheme satisfies paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use. PCL Construction Holdings Ltd. v. Chye Ling, WIPO Case No. D2012-2498 (“Respondent’s exploitation of the Complainant’s trademark to perpetrate what appears to be a fraud on unsuspecting job applicants in particular and on Internet users in general demonstrates, in the view of this Panel, the Respondent’s bad faith”); Starwood Hotels & Resorts Worldwide, Inc. The Sheraton LLC, and Sheraton International, Inc. v. PrivacyProtect.org / power mark consult, mark pd, WIPO Case No. D2012-1125 (“Complainant has provided evidence showing that Respondent has used the disputed domain name in connection with fraudulent job fraud scam especially to provide cover for sending fraudulent email messages, and to redirect all Internet traffic to the disputed domain name to Complainant’s official website for the Sheraton Heathrow Hotel in order to confuse prospective job applicants so that they believe that the job offer and subsequent request for the applicant’s personal information and money is legitimate. The Panel finds that the public is likely to be confused into thinking that the disputed domain name <sheraton-heathrowhotel.com> has a connection with Complainant, which is contrary to fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. The Panel finds Internet users may be led to believe that the disputed domain name is owned by Complainant or is the official authorized partner of Complainant, which is not the case, for Respondent’s commercial gain. The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith.”); Société des Hotels Meridien v. WhoIs Guard / Jim Thiam, WIPO Case No. D2011-1030 (“The Respondent’s exploitation of the Complainant’s goodwill for financial gain by perpetrating what appears to be a fraud on unsuspecting job applicants demonstrates in the view of this Panel the Respondent’s bad faith.”); Travellers Exchange Corporation Limited v. Sandy Dreben, WIPO Case No. D2009-1333 (“Using an email address associated with the Domain Name, [email protected]> the Respondent has been phishing to attract people to fictitious jobs with Travelex UK Limited (a member of the Travelex Group). […] The activities of the Respondent in adopting the identity of the Complainant to conduct a phishing scam, clearly has the potential to cause enormous harm to the reputation of the Complainant, which operates a global and successful business. Any fraudulent use of the Domain Name inevitably conflicts with Complainant's trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's products and services. […] The Panel finds that the information regarding fraudulent activity, which is unchallenged by the Respondent, is clear evidence of its use of the Domain Name in bad faith.”).

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

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 <conagra-foods.com> be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: April 27, 2013