WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION J. Macêdo S/A v. Private Registrations Aktien Gesellschaft Case No. D2010-0264 1. The Parties
The Complainant is J. Macêdo S/A of Brazil, represented by Neumann, Salusse, Marangoni Advogados of Brazil.
The Respondent is Private Registrations Aktien Gesellschaft of Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with About Domain Dot Com Solutions Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to About Domain Dot Com Solutions Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On March 2, 2010, About Domain Dot Com Solutions Pvt. Ltd. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2010.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on April 6, 2010. 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 following uncontested facts are found by the Panel and established as true.
The Complainant is one of Brasilian largest company manufacturing biscuits, cookies and pasta since 1980 and is the largest wheat processor and worldwide buyer of this commodity since 2004. The Complainant owns the trademark DONA BENTA which is object of approximately 90 trademark applications and registrations throughout the world in particular:
- DONA BENTA in Brazil No. 006950620 filed on 16.08.1977, and covering products and services in classes 32 and 20;
- DONA BENTA in USA No. 3174555 filed on 06.08.2004, and covering products and services in classes 29 and 30;
- DONA BENTA in Japan No. 55155415 filed on 04.06.2007, and covering products and services in classes 29 and 30;
- DONA BENTA in the European Union No. EU 8266462 filed on 30.04.2009, and covering products and services in classes 29 and 30.
The Complainant is also the owner of the following domain names: registered on February 1, 1997 and registered on July 2, 2008.
The disputed domain name was registered in the name of the Respondent on August 28, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name subject of this dispute.
The Complainant contends the following:
- the disputed domain name, which reproduce in its entirety the Complainant's trademark, is confusingly similar to the Complainant's trademarks;
- the Respondent has no rights or legitimate interests in the domain name and has not received any authorization to register the contested domain name from the Complainant;
- the Respondent, at the time of the registration of the disputed domain name, was surely aware of the trademarks of the Complainant;
- the Respondent has been riding and switching names as can be seen on the searches conducted at the WhoIs database in order to hide itself. Moreover, it has given false information like telephone contact and non-existent website;
- the Respondent does not use the contested domain name in connection with a bona fide offering of goods and services; its sole purpose is to earn revenue through advertising and by directing Internet users to Complainant's competitor pages;
- the Respondent was also a respondent on several previous UDRP proceedings and all decisions issued were favorable to the Complainants.
The Complainant requests the Panel to transfer the disputed domain name to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has several trademarks registrations for DONA BENTA all over the world, including domain names. Therefore it has been proved that the Complainant has rights in the DONA BENTA trademark.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name is identical to a complainant's mark.
The addition of the generic top level domain extension “.com” does not eliminate the confusion (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media,WIPO Case No. D2007-0840; Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457).
There is no doubt that the domain name is confusingly similar to the trademark of the Complainant. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by the evidence submitted by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the domain name, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the notice of the dispute; or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial 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.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark, or to apply for, or to use the disputed domain name incorporating said mark.
The Respondent has not submitted any evidence to demonstrate any rights or legitimate interests in the disputed domain name, and there is prima facie indication in the case file that there are no rights or legitimate interests on the part of the Respondent in the disputed domain name, as per paragraph 4(c) of the Policy (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media,WIPO Case No. D2007-0840; UPIB, Inc. v. Texas Internet,WIPO Case No. D2004-0073).
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name and under these circumstances, finds that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainant, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
As sufficient evidence of registration and use in bad faith, the Panel finds that the Respondent registered the disputed domain name (which corresponds to a quite widely known trademark) most probably with knowledge of the Complainant's rights. Only someone who was familiar with the Complainant's mark would have registered an identical domain name.
There is no information as to the business activity of the Respondent that would justify the registration and the use of the disputed domain name; nor is there evidence of any rights or legitimate interests in the domain name by the Respondent. Moreover, the Panel is of the opinion that the Respondent has registered the disputed domain name with the intent to profit from the reputation of the well-known trademark of the Complainant, by using a domain name that is confusingly similar to the Complainant's mark. This circumstance is confirmed by the fact that the disputed domain name is largely dedicated to the food industry, in particular to the flour, pasta and cake mixes segment which are the main products of the Complainant, and also directs Internet users to web sites of Complainant's competitors. Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, and in the absence of any rights or legitimate interests and of any contrary evidence from the Respondent, it is the opinion of this panel that the Respondent's registration of the domain name confusingly similar to the Complainant's trademark was done in bad faith (see Accor v. Howell Edwin,WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395; Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
As a further confirmation of bad faith registration, the Respondent has given false information in terms of telephone and contact details, at the moment of the registration.
Thus, the Panel finds that the Respondent has registered the disputed domain name with the intent to benefit from the reputation of Complainant's well-known trademark. As such, the Panel finds that the Complainant has satisfied the third element of the Policy. 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.
Nicoletta Colombo
Sole Panelist
Dated: April 19, 2010
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