Complainant is Unifrutti Traders Limitada of Santiago, Chile, represented by Garay Guerrero Abogados, Chile.
Respondent is Arturo Aravena of Afganistan. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2014. On February 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 12, 2014 the Center sent several communications to the Parties regarding the Language of the Proceedings, the existence of multiple potential respondents (consolidation), a Deficiency Notification and a request for confirmation on the existence of Other Legal Proceedings. In response to a notification by the Center that the Complaint was administratively deficient, Complainant requested an extension of the due date to submit the amended Complaint on February 13, 2014, which the Center granted on February 14, 2014. Complainant filed an amended Complaint on February 25, 2014. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 28, 2014.
On February 12, 2014 the Center received an informal communication from Medya Portakal/Kevser Sahin.
On February 28, 2014 the Center received an informal communication from Mariana Albornoz De Nadai.
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 the Respondent of the Complaint, and the proceedings commenced on March 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 31, 2014. 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 has furnished a list of trademark registration numbers, registration dates and class identifications with respect to a substantial number of countries for the trademark UNIFRUTTI. The Panel has confirmed registration on the Principal Register of the United States Patent and Trademark Office (USPTO) of the word trademark UNIFRUTTI, registration number 1390155, dated April 15, 1986, in International Class (IC) 31, covering “fresh fruit, namely peaches, grapes, nectarines, plums, apples”. The Panel has confirmed registration on the Community Trade Mark register of the Office for Harmonization in the Internal Market (OHIM) of the figurative mark displaying UNIFRUTTI (in distinctive font over a stylized piece of fruit within an incomplete oval), registration number 003314317, registration dated 07/02/2005, in IC 31. Confirmation of these specific registrations is sufficient for purposes of this decision.1
Complainant is the second-largest Chilean exporter of fresh fruits, doing business in countries around the world. In addition to use of the UNIFRUTTI trademark in connection with advertising and sale of fresh fruits, Complainant has registered a number of domain names incorporating its UNIFRUTTI trademark, including , and . Complainant operates a commercial website in Spanish at , and a commercial website in English at .
According to the Registrar’s verification, Respondent Arturo Aravena is registrant of the disputed domain name. According to the Registrar, the disputed domain name was registered to Respondent on October 25, 2007.
The reseller/hosting company (Medya Portakal) listed as the administrative and technical contact for the disputed domain name submitted the following information to the Center in response to receiving the Complaint:
“We are a reseller hosting company for 14 years working with O. What we basic[al]ly do is buy the domain names on behalf of our customers and give them hosting service as well.
Three of the mentioned domain names were bought by us at October 2007 and one of them was bought on December 2011 on behalf of Ms. Mariana Olivia Albornoz Arancibia. The purchase order was sent by Mr. Erhan Dogan who was working for Ms. Arancibia fo [sic] IT manager. We bought the domains online from OnlineN with our customer ID […] and made the payment by credit card. All renewals were also made before expiry dates. You may easily get billing and payment details from OnlineNic about these domains.
As for the business ethic rules we accept Ms. Arancibia for the owner of the domains, we never did or
ever do transfer the domains to anyone else unless they are taken from us by force of law which would be unjustice and would destroy our trust to laws and justice. Kevser Sahin.”
According to a webpage printout from the address associated with the disputed domain name, Respondent presently is General Manager of an entity named “Unitarim” operating a commercial website at . The disputed domain name does not appear to be linked to an active Internet website, and Complainant has not submitted any evidence of actual use of the disputed domain name by Respondent or any other party.
According to Complainant, Respondent registered the disputed domain name as an employee of Mr. Giancarlo De Nadai and Ms. Mariana Olivia Albornoz Arancibia, the wife of Mr. De Nadai. Complainant indicates that Unitarim is the business entity through which Mr. De Nadai and Ms. Albornoz Arancibia conduct their fruit exporting business in Turkey.
As such, Complainant links this dispute to two concurrent proceedings for which this Panel is also serving as sole panelist, and involving claims regarding Mariana Olivia Albornoz Arancibia (as respondent inWIPO Case No. D2014-0315) and Erhan Dogan (as respondent inWIPO Case No. D2014-0177). In caseWIPO Case No. D2014-0315, respondent Mariana Olivia Albornoz Arancibia filed a response. In the instant proceeding only a brief informal response was filed by Mariana Olivia Albornoz Arancibia.
According to Complainant, Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia established Unitarim Urunleri Ltd. in Turkey in 1996, and Respondent worked for them in Turkey, first for two companies, Unifrutti Turkey (part of the Unifrutti group of enterprises) and Unitarim, and subsequently only for Unitarim, where he appears to work as General Manager today.
Complainant is a privately held family-owned company. According to Complainant, Giancarlo De Nadai was appointed as Chief Executive Officer of the Unifrutti Group following the death of its founder, Mr. Guido De Nadai. Mariana Olivia Albornoz Arancibia was appointed to certain executive positions within the company, although “against the will of some members of the Company” which resulted in those members deciding to sell their shares. Further, according to Complainant’s account, Mariana Olivia Albornoz Arancibia “manages to participate in the businesses of the Unifrutti Group, among which are several Unifrutti companies with activities in Chile, South Africa, the Canary Islands, United States, Turkey, Dubai and India.”
Although intra-family business disputes have been brewing for some time, such disputes recently boiled over, and in 2013 certain partners within the family removed Giancarlo De Nadai from the position of CEO, and replaced him with a brother, Mr. Francesco De Nadai. According to Complainant, as a consequence of this change of leadership, Mariana Olivia Albornoz Arancibia and her husband were removed from their executive positions, and “their participation remained only for the Boards at the parent office”. This included removal from administrative positions at Complainant “Unifrutti Traders Limitada” and at “Unifrutti Asia DMCC”.
Complainant has provided a document showing the Minutes of the directors’ meeting held at the Companies registered office in Nicosia on 14 October 2013 at 11 AM for Unifrutti Traders Limited. That document stated, inter alia:
“2. Management of Unifrutti Asia DMCC
2.1. The directors noted that:
(a) the Company is the sole shareholder of Unifrutti Asia DMCC;
(b) the current directors of Unifrutti Asia DMCC are Camilo Venegas, Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia;
(c) the general manager of Unifrutti Asia DMCC is Mariana Olivia Albornoz Arancibia;
(d) the bank authorized signatories of Unifrutti Asia DMCC registered with the banks with whom Unifrutti Asia DMCC has opened bank accounts, namely United Arab Bank and Mashreq Bank, are Camilo Venegas, Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia; and (e) a power of attorney was issued on 27 June 2011 in favor of Camilo Venegas, Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia to represent Unifrutti Asia DMCC (the "Unifrutti Asia Power of Attorney"), as per Annex 1 [not attached to Complant].
2.2. The directors further noted that it was proposed that Giancarlo De Nadai be removed with immediate effect as a director and bank authorized signatory of Unifrutti Asia DMCC and Mariana Olivia Albornoz Arancibia be removed with immediate effect as a director, general manager and bank authorized signatory of Unifrutti Asia DMCC and that Riccardo Covezzi be appointed as a director, the general manager and bank signatory of Unifrutti Asia DMCC.”
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, such as the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a). 5. Parties’ Contentions A. Complainant
Complainant contends that it has rights in the trademark UNIFRUTTI as evidenced by a list of registrations in a substantial number of countries. Complainant argues that the disputed domain names can easily be confused with its trademarks and registered domain names, damaging its business and reputation.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent registered the disputed domain name as an employee of Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia for use in connection with their business interests, and Complainant has been unable to track ownership of the disputed domain name; (2) certain email addresses operated by Complainant’s employees have been disabled without notice, and certain employees no longer with Complainant are continuing to use those email addresses; (3) the aforementioned facts are causing confusion, disruption and damage to the company Unifrutti has in Dubai, and for which the disputed domain name was originally set up, and as to which Respondent has never been an employee, and (4) because “Unifrutti is the creator of the expression UNIFRUTTI, … Respondent has no right to make use of this expression”.
Complainant argues that Respondent registered and is using the disputed domain in bad faith because: (1) Respondent without consultation to Unifrutti registered the disputed domain name under his own name, acting on behalf Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia, without the authority of Complainant, removing the rights of Unifrutti and constituting an abusive act; (2) despite changes in control of Complainant, Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia continue to attempt to manage “the business” ignoring that they do not have authority; (3) by acting on behalf Mariana Olivia Albornoz Arancibia (for whom he manages email systems) Respondent is using the disputed domain to mislead customers about the source of services; (4) Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia have been formally removed from administration of Unifrutti and are using the disputed domain name without permission and in bad faith for their own personal ventures, and; (5) the actions of Giancarlo De Nadai, Mariana Olivia Albornoz and Respondent are causing confusion for customers of Unifrutti. B. Respondent
Respondent did not reply to the Complainant’s contentions. However, an informal response was transmitted by email on February 28, 2014 by Mariana Albornoz De Nadai stating that all of the information submitted in relation to the claims is false and lacks foundation, and reserving the right to take legal action against the parties responsible for contributing to the defamatory information. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent, and the Center received an informal response from Mariana Olivia Albornoz Arancibia (aka Mariana Albornoz De Nadai) who the Panel notes is the Respondent inWIPO Case No. D2014-0315. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant provided registration numbers and other data with respect to a number of trademark registrations. The Panel verified that Complainant, Unifrutti Traders Limitada of Chile, is the owner of registration at the USPTO for the word trademark UNIFRUTTI, and is the owner of registration at OHIM for figurative CTM incorporating the word UNIFRUTTI. Registration by Complainant on the Principal Register of the USPTO and as a CTM at OHIM establishes a presumption of rights in the trademark UNIFRUTTI. Respondent has not challenged that presumption.
Complainant has established rights in the trademark UNIFRUTTI at least in the United States and European Union.
The disputed domain name combines Complainant’s distinctive UNIFRUTTI trademark with a geographic term. Internet users would be likely to assume that the disputed domain name is used by Complainant or under its authority to identify its business in the region indicated.
The Panel determines that Complainant has rights in the UNIFRUTTI trademark and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
The Panel basis its determination in this proceeding on Complainant’s failure to establish that Respondent registered and is using the disputed domain names in bad faith. As a matter of administrative efficiency, the Panel does not address the issue of rights or legitimate interests. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s ] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Based on a combination of several factors, the Panel determines that Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy. The Panel notes at the outset that a proceeding under the Policy is substantially different from the standpoint of substantive assessment than civil trademark infringement or other similar proceedings. The Panel makes no determination or suggestion regarding the respective rights of the parties in respect to any potential trademark infringement or other similar causes of action.
Complainant states that Respondent acted in this case as an employee of an enterprise owned by two individuals who at the time of registration of the disputed domain name held significant authority in respect to Complainant and/or its affiliated entities.2 In particular, at the relevant time Giancarlo De Nadai was the Chief Executive Officer of the Unifrutti Group and his wife, Mariana Olivia Albornoz Arancibia, was a management executive and/or owner of affiliated entities, including Unifrutti Asia DMCC. The disputed domain name incorporated the trademark of the enterprise group, and geographic identifier expressly relates to an area where the enterprise conducted business. The disputed domain name was registered in 2007.
Complainant has suggested that Respondent registered the disputed domain name in 2007 for the benefit of a company (Unitarim) that was not part of the Unifrutti Group, but was instead controlled by Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia for their own personal gain. Complainant has not provided documentation to indicate that Respondent was employed by Unitarim in 2007, and has referred to his employment both by Unitarim and Unifrutti at some stage. There is no documentary evidence linking Respondent to Unitarim in 2007.3 The disputed domain name was not registered in the name of Unitarim and has not subsequently been transferred to or used by Unitarim. It is not apparent why Respondent would have thought that the disputed domain name, , was being registered other than to be used in connection with the business of Unifrutti Asia as to which Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia had management, ownership and control interests.
It is not uncommon for a particular individual within a business to register a domain name in his or her name, notwithstanding that the intended ultimate beneficiary of use is the enterprise. This practice is sufficiently common -- based on this Panel’s experience as panelist -- that the Panel is not prepared to draw an adverse inference that registration of a domain name by an employee under his or her own name evidences bad faith, absent some evidence supporting such an inference. A presumption might be rebutted in a particular case by some specific legal rule or set of facts to suggest that an employee acted in his or her own personal capacity, e.g., with some bad faith interest. But, Complainant has not presented a specific legal basis to support a claim that Respondent was acting outside the scope of his apparent duties as an employee of one or more businesses owned and/or controlled by Giancarlo De Nadai and Mariana Olivia Albornoz Arancibia when he registered the disputed domain name.
Assuming that Respondent was acting within the apparent scope of his employment when he registered the disputed domain name in 2007, he might still have done so in “bad faith” if he had intended to impermissibly take advantage of Complainant within the meaning of Paragraph 4(b). However, Complainant has presented no evidence to support a claim that Respondent in 2007 intended to act abusively.
Complainant has presented no evidence other than mere allegation that Respondent has used the disputed domain name to divert customers or tarnish the business of Complainant. Complainant has presented no evidence that Respondent has used the disputed domain name in connection with any active website. To be clear, there is no evidence that the disputed domain name has been linked to a business outside the Unifrutti Group, whether to Unitarim (in Turkey) or another party.
While it is not a prerequisite of a finding of bad faith that a respondent has actively used a disputed domain name (i.e., so-called “passive use”), a finding of bad faith based on passive use typically requires that the respondent has no plausible good faith use of the disputed domain name. At the time of registration of the disputed domain name Respondent was an employee of one or more businesses controlled by the CEO of the Unifrutti Group, even if Unitarim was not part of the Unifrutti Group (and assuming that he was employed at the relevant time only by Unitarim). The disputed domain name is registered in Respondent’s own name, not in the name of a company that is controlled outside the Unifrutti Group. Complainant has presented no concrete evidence of abusive “use” of the disputed domain name by Respondent. This is not a context in which a finding of abusive “passive use” is appropriate.
That Panel does not consider it necessary to address each of the potential non-exhaustive elements under Paragraph 4(b).
The Panel emphasizes that the disputed domain name was registered by Respondent in 2007. There is no concrete evidence to support bad faith “registration”, that is, that Respondent had some intention to misuse Complainant’s trademark at the time of registration. There is no evidence that the disputed domain name has ever been used in connection with an active website. It has not been “redirected” to a website competing with the business of Complainant.
The Panel appreciates that relations among the family owners of Complainant’s enterprise group have deteriorated markedly since 2007, and that there may well be significant unresolved legal issues regarding the rights of the respective parties. The Panel further appreciates that civil court proceedings are not an expedient mechanism in a global business environment to deal with allegations of domain name misadventure such as those alleged to be present here. But, the Policy and proceedings before an administrative panel such as this one were not designed to resolve complex long-running multinational intra-corporate and intra-family ownership disputes. This decision should not be understood as expressing any opinion regarding the ultimate outcome of this complex multifaceted affair.
This opinion should be considered in the context of the Panel’s decisions in concurrent casesWIPO Case No. D2014-0315 andWIPO Case No. D2014-0177.
The Panel determines that in these circumstances, Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: April 14, 2014
1 It is preferable practice for parties seeking to establish trademark rights to submit evidence of registration in the form of printouts of certificates of registration and/or current status reports from trademark authorities. Self-generated lists do not confirm registration. The present proceeding is resolved on grounds not specifically involving the validity of claims of rights in a trademark. The Panel undertook to confirm a limited number of registrations as a matter of administrative expediency, rather than delaying the proceedings by reverting to Complainant for an additional submission. Panel visit to USPTO Trademark Electronic Search System (TESS) database and OHIM eSearch plus database of April 13, 2014.
2 The informal response from the reseller/hosting company used by Mariana Olivia Albornoz Arancibia suggests that the disputed domain name was initially purchased by the reseller/hosting company for Mariana Olivia Albornoz Arancibia, but the Registrar in this proceeding indicates that the disputed domain name has been registered to Respondent since its creation. Because the Panel assumes that Respondent has been acting at the direction of Mariana Olivia Albornoz Arancibia, this suggestion does not raise a material issue.
3 Even assuming there were some evidence that Respondent was technically employed by Unitarim in 2007, if he were asked by an alleged owner, Mariana Olivia Albornoz Arancibia, to register the disputed domain name, there remains no evidence that he registered the disputed domain name for use by Unitarim.
Full & Egal Universal Law Academy