The Complainant is Minerva S.A. of São Paulo, Brazil, represented by Salusse Marangoni Advogados, Brazil.
The Respondent is TT Host of Houston, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2016. On February 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2016, 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. The Center sent an email communication to the Parties on March 7, 2016 informing of the updated Rules for Uniform Domain Name Dispute Resolution Policy. The Complainant submitted an Amended Complaint on March 7, 2016
The Center verified that the Complaint together with the amended Complaint (both hereinafter referred to as 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 proceedings commenced on March 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2016.
The Center appointed Isabel Davies as the sole panelist in this matter on April 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 has been using the MINERVA trademark since 1992.
The Complainant is the owner of registered trademarks in Brazil (registration No. 901436941) and Switzerland (registration No. 628254), registered in 2013 and 2012, respectively, and owns several domain names incorporating the registered trademarks MINERVA and MINERVA FOODS including registered on June 20, 2012 and registered on June 19, 2012.
The Respondent registered the Disputed Domain Name on May 27, 2015. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant states that Minerva S.A. was acquired in 1992 by the Vilela de Queiroz family which started commercializing the raising of cattle and related activities in 1957 in Brazil.
Currently, it states the Complainant operates seventeen slaughtering and boning plants, eleven of which are located in Brazil, three in Paraguay, two in Uruguay and one in Colombia. The Complainant’s slaughtering capacity is of 17,330 heads of cattle per day, and boning capacity is of 20,300 heads per day, employing more than 14,000 people around the world. It is today the second largest Brazilian exporter of beef.
Additionally, the Complainant states it has a protein processing plant (beef, pork and poultry) named Minerva Fine Foods which operates thirteen distribution centers, eleven of which are located in Brazil and two in Paraguay. In addition, the Complainant has international trading offices in Algeria, China, Chile, Colombia, United States, Italy, Iran, Lebanon and Russia.
The Complainant has won several awards including the “Chico Mendes Award” which the Complainant has been awarded four times in a row in 2014, highlighting its Sustainable Livestock Program and it is considered one of the leading companies in the industry in South America, exporting to more than 100 countries in five continents.
The Complainant states that it is the owner of trademark registrations for MINERVA in Brazil and Switzerland and has several domain names incorporating “Minerva” and “Minerva Foods” including the domain names registered on June 20, 2012, and registered on June 19, 2012.
The Complainant states that the Respondent registered the Disputed Domain Name on May 27, 2015 and has been using it to impersonate the Complainant, causing irreparable losses and consumer confusion.
The Complainant states that apart from registering the Disputed Domain Name, the Respondent has used it as a means to attack the Complainant’s goodwill, business and image.
The Complainant states that the Disputed Domain Name reproduces in fullthe MINERVA trademark registered in Brazil and in Switzerland over which the Complainant has prior rights and is very similar to the Complainant’s domain names and registered prior to the Disputed Domain Name.
The Complainant states that the addition of the generic term “food” in the Disputed Domain Name does not add sufficient distinctiveness in relation to the Complainant’s mark and merely adds likelihood of confusion in view of the Complainant’s business.
The Complainant states that the possibility of confusion is evident given that Internet users will immediately identify the Disputed Domain Name with the Complainant’s trademarks and domain names, believing, incorrectly, that both registrations identify the Complainant.
The Complainant therefore submits that the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.
Respondent lacks rights and legitimate interests in the Disputed Domain Name (Policy, paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent is not entitled to any trademark, trade name or any other right in the name “Minerva”.
The Respondent has not been authorized by the Complainant to use the MINERVA trademark and there is no business relationship between the Complainant and the Respondent.
The Respondent does not have any relationship with MINERVA. It is not included in its name, nor is it its name, surname or nickname. It is not known by this name, nor has it sought an authorization or license to use the MINERVA trademark, and does not own any trademark be it a registration or application in connection with MINERVA or any other application or registration whatsoever in Brazil.
The Complainant contends that it is therefore incontestable that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Complainant states that the registration of the Disputed Domain Name was made with full knowledge of the MINERVA trade mark and the Disputed Domain Name was intentionally registered with the purpose of profiting from the fame and renown of the MINERVA trademark and trade name, creating a likelihood of confusion amongst Internet users and indicating that the Disputed Domain Name belongs to the Complainant.
It states that knowledge of the Complainant’s rights may be presumed because it is a registered mark. In addition to that and in view of the use of the Complainant’s trademark and impersonation of the Complainant perpetrated by the Respondent (who used the Complainant’s logo, name of one of the Complainant’s directors, addresses, stationery and so on) as well as aiming precisely at the Complainant’s clientele, there is no doubt about the Respondent’s knowledge of the Complainant’s mark.
It states that bad faith is demonstrated when the Respondent registered it with the purpose of using it for unlawful purposes, profiting from the attempts to solicit business transactions with third parties, thus creating a likelihood of confusion and possibly taking undue advantage of the Complainant’s reputation and goodwill.
The Complainant states that the Respondent made use of the Disputed Domain Name by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant.
The Complainant has annexed emails to the Complaint evidencing that the Respondent tried (and sometimes succeeded) in impersonating the Complainant, sending emails with quotations for the sale of Complainant’s typical products using the name of one of Complainant’s board members, reproducing the Complainant’s logo and address, as well as stationery.
The Complainant contends that the Respondent increased the likelihood of confusion by redirecting the Disputed Domain Name to the Complainant’s website while mentioning it in the signature of the several emails sent by him to the Complainant’s customers and business partners. In impersonating the Complainant, the Respondent sent emails with quotations for the sale of the type of products sold by the Complainant products, signing as one of Complainant’s board members, reproducing the Complainant’s logo and address.
This scheme perpetrated by the Respondent attempted to mislead the Complainant’s customers so that they transmitted payment to the Respondent’s bank account. It included the remittance by the Respondent of model contracts, invoices, all of which included the Complainant’s logo, addresses, materials, etc., taking undue advantage of the Complainant’s reputation and goodwill.
The use made of the Disputed Domain Name in an attempt to solicit business transactions with third parties, creating a likelihood of confusion and taking undue advantage of the Complainant’s reputation cannot, submits the Complainant, be considered a good faith offering of goods and services.
The Complainant submits that all of the aforementioned facts, analyzed separately or in their entirety, lead to the conclusion that the bad faith of the Respondent is incontestable.
The Complainant therefore submits that the Disputed Domain Name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a response.
In the absence of a response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. The Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is a major company internationally specializing in commercializing the raising of cattle and related activities, that it is the owner of trademark registrations for MINERVA in Brazil and Switzerland and has several domain names incorporating “Minerva” and “Minerva Foods”, including the domain names registered on June 20, 2012 and registered on June 19, 2012
The Panel accepts that the Disputed Domain Name reproduces in totalitythe MINERVA trademark registered in Brazil under No. 901436941 and in Switzerland under No. 628254 over which the Complainant has prior rights and is very similar to the Complainant’s prior domain name registrations for and .
The Panel accepts that the addition of the generic term “food” in the Disputed Domain Name does not add sufficient distinctiveness in relation to the Complainant’s mark and merely adds likelihood of confusion in view of the Complainant’s business(Compagnie Générale des Etablissements Michelin v. Llantas Supremas S.A.,WIPO Case No. D2013-1211 (citing “The addition of the generic term “llantas” which means “tires” in Spanish only makes the disputed domain name even more similar to the Complainant’s trademark, creating a high risk of association by Internet users.”).
In addition, the Panel notes that the only difference between the Complainant’s domain name and the Disputed Domain Name is the addition of the hyphen and an extra “s”, which in no significant way differentiates it.
The Panel accepts that there is a likelihood of confusion given that Internet users will identify the Disputed Domain Name with the Complainant’s trademarks and domain names, believing, incorrectly, that both registrations identify the Complainant.
The Panel finds that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has not been authorized by the Complainant to use the MINERVA trademark and there is no business relationship between the Complainant and the Respondent.
The Panel also accepts that the Respondent does not have “Minerva” in its name, nor is it its name, surname or nickname. It is not known by this name, nor has it sought an authorization or license to use the MINERVA trademark.
Absent any reply form the Respondent, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that the registration of the Disputed Domain Name was made with full knowledge of the MINERVA trademark and the Disputed Domain Name was intentionally registered with the purpose of profiting from the MINERVA trademark and trade name, creating a likelihood of confusion amongst Internet users by giving the impression that the Disputed Domain Name is associated with the Complainant.
As MINERVA is a registered trademark belonging to the Complainant and the Disputed Domain Name is nearly identical to one of the Complainant’s domain names (apart from the addition of a hyphen and the lack of “s”), the Panel considers that it was inconceivable that the Respondent was unaware of the Complainant’s business, trademarks and domain names when the Disputed Domain Name was registered.
As was stated in Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163: “Distilled to their essence, the cases suggest that a domain name that essentially copies or trades on another’s mark will be ordered transferred to the complaining party unless the registrant can provide a credible reason for having adopted the name. As noted by the one panel, bad faith will be found where a domain name is so obviously connected with complainant or its product that its use by anyone other than complainant suggests ‘opportunistic bad faith’”.
In addition, in view of the use of the Complainant’s trademark, the Complainant’s logo, name of one of the Complainant’s directors, addresses, stationery, as well as the targeting of the Complainant’s clientele, the Panel is in no doubt about Respondent’s knowledge of Complainant’s mark.
Bad faith is demonstrated when the Respondent registered it with the purpose of using it for unlawful purposes, profiting from the attempts to solicit business transactions with third parties while impersonating the Complainant, creating a likelihood of confusion and aiming to take undue advantage of the Complainant’s reputation and goodwill.
The Panel accepts that the Respondent made use of the Disputed Domain Name by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant. The Complainant has annexed emails to the Complaint evidencing that the Respondent tried (and sometimes succeeded) in impersonating the Complainant, sending emails with quotations for the sale of the same type of products as those of the Complainant, as mentioned above.
The Panel accepts that the Respondent attempted to mislead the Complainant’s customers so that they would make payment to the Respondent’s bank account by including model contracts, invoices, which included the Complainant’s logo, addresses, materials, etc. taking undue advantage of the Complainant’s reputation and goodwill. This cannot be considered to be use in good faith as has been previously recognized in Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy P, WIPO Case No. D2014-0133 (“In this case, the use of the disputed domain name in connection with fraudulent emails sent to third parties in an attempt to solicit and attempt to engage in business transactions mimicking the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s mark” and “According to the emails attached to the Complaint (Annexes 3 and 3bis) the Respondent has indeed used the disputed domain name in a manner to solicit and attempt to engage in business transactions with third parties creating a likelihood of confusion with the Complainant and attempting to profit unduly from the Complainant’s reputation and goodwill. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use of the disputed domain name”).
The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. 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.
Isabel Davies
Sole Panelist
Date: May 3, 2016
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