Archer-Daniels-Midland Company v. Shawn Downey
WIPO Case: D2015-0415
May 04, 2015
Defences to UDRP claims are more likely to succeed if they are plausible. The defences relied on here were somewhat far-fetched and, if anything, probably weakened the Respondent’s case.
The disputed domain name was <adm.international>. It was registered on January 15, 2015 by the Respondent, Shawn Downey of California, United States and was under one of the new generic Top Level Domains, .international.
Relative to the background of this case is the size and fame of the Complainant's multibillion-dollar agribusiness and financial services company. The Archer-Daniels-Midland Company was founded in 1902 and had global revenues at 81.2 billion in 2014 and 67.7 billion in 2015. Despite the slump in revenues, they are a powerful and well-known company. The Complainant maintained that it had rights in the ADM mark, which it used to promote a diverse range of its businesses.
Implausible Response: Acronyms can't be exclusively owned.
The Respondent argued that the acronym "adm" has multiple different meanings, is used by many companies, and is not reserved to be used exclusively by the Complainant. The Respondent contended that the Complainant was "trying to use legal manipulation to obtain for free a domain name they have no legal privilege to". The Respondent then argued that it would "set a bad precedent to allow any company to claim it has rights to all acronyms just because it wants them".
The Panel stated that a simple google search of "adm" would have shown the Respondent that the top half-dozen or more links relate to the Complainant.
The Respondent failed to account for the test of identity or confusing similarity under the 4(a)(i) of the UDRP; the threshold for this test involves a comparison between the trademark and the domain name itself to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognisable as such within the domain name, which in this case was indisputable.
Implausible Response: No control over web links.
The Respondent stated he had not used the Domain Name and since he purchased it, is was linked to a parked page monitored by Google for trademark infringement. The Respondent argued further that less than one person per day visited the site, an indication that there was no confusion with the Complainant, a defence that clearly did not impress the Panel.
Despite the Respondent’s argument that he was not responsible for the content on the parking site linked to the Domain Name, the Respondent had the "responsibility to determine whether (the) domain name registration infringes or violates someone else's rights." See Grundfos A/Sv. Texas International Property Associates, D2007-1448 (WIPO Dec. 14; 2007) (where the Panel found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant operates).
Needless to say, the Panel in this case found the Domain Name was identical or confusingly similar to the trademark, the Respondent had no rights or legitimate interests in respect of the Domain Name and the Respondent registered and used the Domain Name in bad faith.
But the real weakness of the Respondent’s case was that his domain name was linked to a website that promoted services in competition with the Complainant and, more importantly, links to the Complainant itself and one of its divisions. That made it very hard for the Respondent to succeed. Would a stronger response have helped the Respondent's case? Possibly, but at least it would have been less embarrassing.
Cases where the domain name is an acronym or an abbreviation are not necessarily lost by respondents. Sometimes, respondents succeed in acronym cases. But they all depend on their facts. If a respondent is relying on an acronym in its domain name, its chances of success are greater if there is no hint of a reference on the respondent’s website to a company whose name and trademark is an acronym, especially a well known one.