The Complainant is Bebidas Fruki S.A. of Lajeado, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Wendy Webbe, Ancient Holdings, LLC of Charlestown, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2015 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, the Complainant filed an amendment to the Complaint on December 22, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2016.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on January 19, 2016. 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 Complainant Bebidas Fruki S.A. produces non-alcoholic beverages in the State of Rio Grande do Sul, Brazil. In 1996 it incorporated “Fruki” into its legal corporate name.
The Complainant owns several trademark registrations including the word “fruki” as the principal element of the mark, such as Brazilian Registration No. 710017375 FRUKI and Device granted on November 30, 1982 and originally applied for on January 27, 1971. In addition, the Complainant holds Certificates of Registrations for the trademark FRUKI and Device in Argentina, Plurinational State of Bolivia, Chile and Paraguay.
Throughout the years the Complainant Bebidas Fruki S.A. has received several prizes for different achievements related to the quality of its products, social responsibility, care of media protection, investment in constant improvement of the treatment of effluents going back to 1988.
The disputed domain name was registered on January 21, 2002.
In 2011 the disputed domain name was transferred to the Complainant under UDRP case Bebidas Fruki S.A. v. NitroTrade LLC,WIPO Case No. D2011-0913.
In this connection, the Complainant explains that the disputed domain name was registered by the Respondent after failing to renew it.
Prior to bringing this administrative proceeding, the Complainant sent a cease-and-desist letter to the Respondent, which has remained unanswered. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
That it began its history in 1924 as a small factory in the countryside of the Brazilian state of Rio Grande do Sul with an average production of 200 bottles of soft drink a day, and that today it is one of the most important nonalcoholic beverages producers in Brazil.
That FRUKI is a well-known trademark in the field of soda beverages in the south of Brazil, but today FRUKI’s renown goes beyond the Brazilian borders; its products, (specially “Guaraná Fruki”) have loyal customers in several countries whose markets are targets of the Complainant, such as the United States of America, Spain, China, Japan, etc.
That Complainant first filed the trademark FRUKI with the Brazilian Industrial Property Office (INPI) in 1971 using this brand – a neologism – to designate its products (non-alcoholic beverages) since then.
The disputed domain name is identical to the trademark FRUKI in which the Complainant has rights.
The Respondent has no rights or legitimate interests concerning the disputed domain name.
The Respondent is not affiliated to the Complainant and the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks. Furthermore, Respondent is not commonly known as “Fruki”, has never operated a business under the name “Fruki” and does not have any trademark registration for the word “Fruki”.
The Respondent registered and is using the disputed domain in bad faith for “domain name parking” or “pay-per-click marketing scheme”.
The disputed domain name is being clearly exploited by the Respondent to mislead customers to its website for commercial purposes, which does not constitute a bona fide offering of goods or services.
Before commencing this administrative proceeding, on September 14, 2015 the Complainant sent a cease-and-desist letter to the Respondent requesting the assignment of the disputed domain name to the Complainant, which remains unanswered.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
For the Complaint to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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
The Panel considers that under the Policy the disputed domain name and the trademark FRUKI and Device in which the Complainant has rights are confusingly similar. Clearly, the principal distinctive element in the Complainant’s trademarks is the word Fruki, which is also the only distinctive element in the disputed domain name .
Following what has become the consensus view among UDRP panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2) the Panel shall disregard the generic Top-Level Domain suffix “.com” from the confusing similarity test.
Therefore, the Complainant has succeeded on this first element of the Policy. B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then prove its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production of evidence has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
As argued by the Complainant, none of the circumstances provided in paragraph 4(c) of the Policy, nor any other to demonstrate legitimate interests in the disputed domain name have been proven by the Respondent who carries this burden.
Therefore, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore the Complainant has made the second prong. C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) of the Policy holds that if the circumstances indicate that the disputed domain name was registered for the purpose of attempting to attract, for commercial gain, Internet users to the registrars website or other online location, by creating a likelihood of confusion with the complainant´s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the web site location, then this is evidence of bad faith registration and use on behalf of the Respondent.
The disputed domain name was registered on January 21, 2002, twenty years after the Complainant registered its trademark FRUKI and Device on November 30, 1982, which was applied for on January 7, 1971.
In the previous case in which the Complainant was involved including the same disputed domain name, it was established that “the word ’Fruki’ does not have a meaning in any language. It is an arbitrary term which has been coined by the Complainant, which makes the trademark FRUKI highly distinctive” (Bebidas Fruki S.A. v. NitroTrade LLC, supra). In the same case, it has been held that “[a]ccording to the documents contained in the docket, FRUKI is recognized among its consumers”. Moreover, in the present administrative proceeding the Complainant has produced evidence to sustain the prestige of the trademark FRUKI.
Therefore, most likely than not, Internet consumers will easily associate the disputed domain name to the Complainant’s products and business.
The Complainant has proved that some of the links disposed at the disputed domain name are directly related to the Complainant’s main market “Rio Grande do Sul” and even to a competing company “AMBEV”, a brewing company that, according to the Complainant, also sells non-alcoholic beverages.
The website to which the disputed domain currently relates to indicates “FRUKI.com is for sale. Click to make an offer”.
In view of the foregoing, including that the Respondent failed to respond to the Complainant’s cease-and-desist letter in which Complainant requested the transfer of the disputed domain name, and the Respondent’s failure to answer the Complaint and provide a plausible explanation as to why it chose to make the trademark FRUKI the central word in the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name to take unfair advantage of the Complainant’s trademark FRUKI, for commercial gain, which is tantamount to bad faith.
Hence, the Complainant has also satisfied the third element of the Policy. 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 be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: January 28, 2016
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