Complainant is Unifrutti Traders Limitada of Santiago, Chile, represented by Garay Guerrero Abogados, Chile.
Respondent is Mariana Olivia Albornoz Arancibia of Dubai, of United Arab Emirates, represented by Afridi & Angell, United Arab Emirates. 2. The Domain Names and Registrar
The disputed domain names and are 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 28, 2014. On February 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 3, 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed amended annexes on March 3, 2014.
On February 28, 2014, the Center received an informal communication from Respondent.
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 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2014. The Response was filed with the Center on March 24, 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 .
Complainant is a privately held family-owned company. According to Complainant’s account, Respondent is the wife of Giancarlo De Nadai. Giancarlo De Nadai was appointed as Chief Executive Officer of the Unifrutti Group following the death of its founder, Mr. Guido De Nadai. Respondent (his wife) 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, Respondent “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.”
It is during the period of Respondent’s participation in senior Unifrutti Group management that Respondent registered the disputed domain names.
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 the husband of Respondent 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, Respondent 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 and Respondent have submitted a large number of documents regarding the nature of the family dispute in respect to management of the Unifrutti Group, its various operating companies, newly formed entities, and so forth. The Panel specifically refers to a document submitted by Complainant constituting a notification from Unifrutti Asia DMCC to Respondent (Mariana Olivia Albornoz Arancibia), dated December 18, 2013, referring to the restructuring of Unifrutti, and in particular Unifrutti Asia DMCC, and the decision “to terminate your employment with the Company [DMCC] effective today”.
Complainant also has provided a document showing the “Minutes of the directors’ meeting held at the Company’s 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 Panel does not consider it necessary to detail the conflicting versions of family history for purposes of resolving this dispute.
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to the Registrar, both of the disputed domain names were registered to Respondent on February 15, 2008.
Complainant has generally alleged that Respondent is using the disputed domain names “to identify the very same products and services provided by [Complainant]”. Complainant has not furnished specific printouts or other evidence of website pages that might be construed to unfairly take advantage of its trademark rights. It has made only a general allegation. In discharging its obligations under Rules, paragraph 2(a)(ii)(A), the Center captured a printout of the disputed domain name; as such, the Center has furnished the Panel with a printout of what appears to be a nondescript third-party parking page from “MEDYA Portakal” to which the disputed domain names appear to resolve.
Respondent has challenged whether the entity named as Complainant is the owner at law or in fact of the trademark on which the Complaint is founded, observing among other things the absence of evidentiary backup in respect to Complainant’s self-generated list of trademark registrations. Respondent also raises factual question regarding the entity owning the disputed domain names. However, both the Registrar verification and the InterNIC database report furnished by the Center (see Rules, paragraph 2(a)(i)(A)) list the individual named as Respondent (Mariana Olivia Albornoz Arancibia) as the owner of registration (and not a corporate entity).
Respondent indicates that the husband of Respondent continues to own a substantial interest in parts of the Unifrutti Group, that Respondent was actively involved in setting up the Middle East operations of that Group, that she held executive positions regarding the entities involved in those Middle East operations, and that all of the interested parties involved were “aware and consented to” her creating and registering the disputed domain names. Respondent has further pointed out that Complainant has not furnished any specific evidence of misuse of the disputed domain names in connection with active websites.
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 names because: (1) Respondent registered the disputed domain names in the name of a corporate entity created by herself and her husband in 1996 as a Turkish exporting company, and that Complainant has been unable to track ownership of the disputed domain names; (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 a disputed domain name was originally set up, and as to which Respondent is no longer an employee (as of December 2013) and which Respondent has no authority to represent, 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 domains in bad faith because: (1) Respondent without consultation to Unifrutti registered the disputed domain names under her own name, removing the rights of Unifrutti, and constituting an abusive act; (2) despite changes in control, Respondent and her husband continue to attempt to manage “the business” ignoring that they do not have authority; (3) Respondent is using the disputed domains to divert business, attempting to mislead customers about the source of services; (4) Respondent and her husband have been formally removed from administration of Unifrutti and are therefore using the disputed domain names without permission and in bad faith for their own personal ventures, and; (5) the actions of Respondent and her husband are causing confusion for customers of Unifrutti, which may subject them to both civil and criminal liability.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant. B. Respondent
Respondent contends that Complainant has failed to prove that it is the owner of trademark registrations for UNIFRUTTI. Respondent states that Complainant has presented a number of documents relating to a Cypress Company that owns shares in Unifrutti Asia DMCC, that Complainant has not evidenced its relationship with the Cypress Company, and that the Cypress Company owns a number of the UNIFRUTTI trademarks. Respondent also asserts misrepresentations by Complainant in respect to formal ownership of certain domain names in which it has asserted rights.
Respondent asserts that Respondent and her husband have a beneficial interest in the Cypress Company, and therefore a beneficial interest in the UNIFRUTTI trademark.
Respondent alleges that Complainant has failed to establish its ownership interest in the two Dubai companies to which the disputed domain names relate, which by Complainant’s own submissions are owned by the Cypress Company, which is not Complainant.
Respondent claims that the rightful owner of Unifrutti Asia DMCC is the only party that could lawfully make any claim against Respondent in respect to the disputed domain name , and that it has not done so.
Respondent contends that Unifrutti Middle East DMCC is the UAE entity to which the disputed domain name relates, that this corporate entity is owned 50% by Respondent’s husband, that the disputed domain name was registered to serve the interests of this corporate entity, and there has been no objection from this entity or her husband as to her maintaining administrative control over the disputed domain name.
Respondent argues that Complainant has failed to demonstrate its own rights or legitimate interests in the disputed domain name .
Respondent contends that Complainant has failed to demonstrate that Respondent registered and used the disputed domain names in bad faith because: (1) Complainant’s allegations regarding bad faith are largely irrelevant or totally false; (2) Complainant cannot argue on behalf of the “Unifrutti Company” or “Unifrutti” because Complainant is neither of these; (3) Respondent in 2008 registered the disputed domain names in the business interests of Unifrutti Asia DMCC and Unifrutti Middle East DMCC, that Respondent was actively involved in setting up these entities as CEO and Director of Unifrutti Asia DMCC, and as wife of a 50% shareholder of Unifrutti Asia DMCC, that when she registered the disputed domain names “all interested parties were aware and consented to her doing so”, and that she maintains an interest in the Dubai entities and the Cypress Company and is entitled to retain control over the disputed domain names (until WIPO or a court directs otherwise); (4) Complainant has not explained or proven how the disputed domain names detract from Complainant’s business in Chile, or from the interests of the Cypress Company, an actual owner of the UNIFRUTTI trademark; (5) that Complainant’s allegations that Respondent and her husband have been removed from authority by the Company Unifrutti is not clear, but that in all events Respondent’s husband remains a 50% shareholder of Unifrutti Middle East DMCC, and both Respondent and her husband maintain a beneficial interest in the parent of the Cypress Company and thereby all subsidiary companies, including the Dubai entities. In light of the foregoing, Respondent did not register the disputed domain names in bad faith, Complainant and Respondent are not competitors, Respondent did not register the disputed domain names to disrupt Complainant’s business, and Respondent registered the disputed domain names to serve the legitimate business interests of the Dubai entities and the Cypress Company.
Respondent requests the Panel to reject Complainant’s request. 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 Respondent filed a Response. 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 a 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 alleged that Complainant may not be the entity owning at least some trademark registrations it has claimed. Alternative ownership of some trademark registrations might be relevant to the question whether Respondent is able to establish rights or legitimate interests in the disputed domain names. However, for purposes of establishing rights in a trademark it is sufficient for Complainant to demonstrate ownership of trademark rights in some jurisdiction. It is not necessary for Complainant to demonstrate rights in all of the countries/regions it has referred to in its Complaint.
Complainant has established rights in the trademark UNIFRUTTI at least in the United States and European Union.
The disputed domain names and combine Complainant’s distinctive UNIFRUTTI trademark with geographic terms. Internet users would be likely to assume that the disputed domain names are used by Complainant or under its authority to identify its business in the regions indicated.
The Panel determines that Complainant has rights in the UNIFRUTTI trademark and that the disputed domain names are 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 names 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 by its own account accepts that Respondent held significant executive authority in one or more affiliated entities at the time she registered the disputed domain names. Those disputed domain names incorporated the trademark of the enterprise group, and geographic terms expressly relating to areas where Respondent had executive responsibilities, and where she and/or her husband had ownership interests in the affiliated entities. The disputed domain names were registered in 2008. While it is evident that intra-family relations deteriorated substantially after 2008, there is very little on the record of this proceeding to suggest that in 2008 Respondent would have been registering the disputed domain names for any other reason than to promote the general interests of the family-owned enterprise group, taking into account that at the relevant time her husband was Chief Executive Officer of the enterprise group.
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 by an individual acting in the interests of an enterprise evidences bad faith.
In the present context, Respondent was unarguably in a position of some substantial authority in respect to one or more of the enterprise group entities by which she was employed. The Panel presumes that a senior management executive of a business has the inherent authority to register a domain name on behalf of the business. Such a presumption might be rebutted in a particular case by some specific legal rule or set of facts to the contrary. But, Complainant has not presented a specific legal basis on which it bases its claim that Respondent was acting outside the scope of her authority when she registered the disputed domain names. There is nothing on the record of this proceeding to suggest that in 2008 Respondent lacked the authority to register the disputed domain names in her own name on behalf of Complainant and/or its affiliated companies.
Assuming that Respondent had the authority to register the disputed domain names in 2008, she might still have done so in “bad faith” if she 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 somehow in 2008 intended to act abusively in relation to an enterprise group for which her husband was CEO and in which she was exercising management authority. That Panel does not consider it necessary to address each of the potential non-exhaustive elements under Paragraph 4(b).
Moreover, Complainant has presented no evidence other than mere allegation that Respondent has somehow used the disputed domain names to divert customers or tarnish the business of Complainant. Complainant has presented no evidence that Respondent has used the disputed domain names in connection with any active website (other than an nondescript unrelated parking page). 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. Here, Respondent, at least until recently, was a participant in good standing of the “family business” with apparent authority and reason for registering the disputed domain names. Complainant has presented no concrete evidence of abusive “use” of the disputed domain names by Respondent, and this particular case is not a context in which a finding of abusive “passive use” is appropriate.
The Panel appreciates that relations among the family owners of Complainant’s enterprise group have deteriorated markedly since 2008, 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, including the residual impact of the dissolution of employment relations. 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 cases D2014-0177 and D2014-0178.
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.
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