Complainant is Fibria Celulose S.A. of Sao Paulo, Brazil, represented by Silveiro Advogados, Brazil.
Respondent is Hugues le Grand of Charente, France. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2016. On June 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2016.
The Center appointed James H. Grossman as the sole panelist in this matter on July 21, 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
Complainant states that it is the world leader in the production of pulp that is predominately used for pulp, paper, and related products. Complainant includes in the appendices to the Complaint certain awards received for its commitment to adopting the best environmental practices such as re-cultivation of forests and such awards confirm also the size of Complainant. Complainant employs 15,000 people and has an annual production capacity of approximately 5.4 million tons of pulp and over 300,000 tons of paper. Complainant’s securities are not only listed on the Sao Paulo Stock Exchange, but also its stock is listed as an American Depositary Receipt (“ADR”) on the New York Stock Exchange under the letters “FBR”. According to Complainant, its new revenue over the last twelve months amounted to BRL 10.5 billion (USD 1.00 = 3.246 Brazilian Reals as of August 1, 2016). The pulp and paper manufactured by Complainant is exported to more than forty countries.
Complainant advises that it is the sole owner of a number of trademark registrations and applications for FIBRIA in Brazil filed with the Brazilian Patent and Trademark Office (“INPI”), copies of which are listed in the appendices to the Complaint. Further, Complainant states it owns more than 375 trademark registrations/applications and domain names incorporating the trademark FIBRIA in 62 countries, including, for example, four registrations in both the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and the United States of America (“United States”) and two registrations in Switzerland. In addition, Complainant advises it has a strong digital presence throughout the world on social media aimed at improving its recognition in the market and its reputation focused on the environment. As noted, Complainant cites some of the significant prizes and reviews received.
The vast majority of the Brazilian trademark registrations for FIBRIA date from July and August of 2009 according to Complainant as set forth in the appendices to the Complaint. The Complaint refers to domain names but is not clear as to specific dates of registrations of such domain names.
The Disputed Domain Name was registered on February 2, 2016 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant sets forth a picture of Respondent’s use of the Disputed Domain Name as part of a fraudulent scheme for 1) hacking of Complainant’s billing documentation to customers and then 2) using the Disputed Domain Name in an email address to falsely advise customers to send amounts owed to Complainant instead to a false bank account in the Czech Republic. Apart from said bank account, the invoice was identical to one of Complainant’s normal invoices and was sent in the name of Complainant’s chief financial officer. This scheme was fortunately discovered prior to any damage by a suspicious customer.
Accordingly, not only is there a wrongful usage of Complainant’s trademark FIBRIA, but, according to Complainant, the Disputed Domain Name is used as part of a fraudulent scheme.
With regard to specific legal contentions, Complainant argues that the Disputed Domain Name not only reproduces Complainant’s trademark, but also the central and distinctive portion of Complainant’s company name. The trademark was first deposited in 2009, long before Respondent registered the Disputed Domain Name in February 2016. Complainant asserts that it also owns domain names in several countries registered prior to the registration of the Disputed Domain Name by Respondent.
The word “Fibria” is a neologism in that it has no meaning whatsoever in Portuguese or any other language to the knowledge of Complainant. Thus, it is a name created by Complainant which at this time can only be directly associated with Complainant. The “br” refers to Brazil and is used to convince a viewer that this is a domain name belonging to Complainant. Thus, the “br” is merely a geographic description that does not provide further specification of the Disputed Domain Name. Complainant cites prior cases that hold that confusing similarity is generally recognized when well-known trademarks are paired with different kinds of generic prefixed and/or suffixes. Finally, the use of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in determining the issue of confusing similarity of the Disputed Domain Name to Complainant’s trademark.
Among other cases, Complainant cites the following administrative decision of an earlier administrative panel in support of its argument as to confusing similarity:
“In the situation where a domain name incorporates a trade mark in its entirety, adding a geographic indicator (i.e. “br”) will generally not distinguish the domain name from the trade mark (…). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the Trade Mark. The addition of the geographic indicator “br” (the country abbreviation for Brazil) does nothing to prevent the confusing similarity of the Disputed Domain Name with the Trade Mark. In fact, the fact that the Disputed Domain Name incorporates the country abbreviation for the country where the Complainant originates adds to the confusing similarity”. Petróleo Brasileiro S.A.-Petrobras v. Ivan Matveyev/WhoIs Privacy Services provided by DomainProtect LLC.,WIPO Case No. D2013-2065; and see Philip Morris USA Inc. v. Malton International Ltd.,WIPO Case No. D2009-1263; and Western Union Holdings, Inc. v. XYZ a/k/a Chahat Topiwala,WIPO Case No. D2005-0945.
Complainant states that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent is not affiliated with Complainant nor has Complainant licensed or otherwise permitted Respondent to use its trademark.
Respondent, according to Complainant, has not made a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, but rather has used the Disputed Domain Name as part of its fraudulent attempt to divert to Respondent monies due from customers to Complainant. Neither is the Disputed Domain Name used for any legitimate business in that it resolves to a passive and undeveloped website. Thus, there is a prima facie case that Respondent lacks any rights or legitimate interests in the Disputed Domain Name.
Complainant cites several UDRP decisions on this issue including the following:
“Respondent is not commonly known by the Doman Name nor has she acquired trademark right in it. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its mark. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Based on the evidence provided by Complainant, Respondent only uses the Domain Name as part of a common phishing scheme. The phishing scheme uses the Domain Name as its root to create the impression that an email is sent by the financial director of Complainant to customers of Complainant in order to fraudulently induce customers to provide banking information. Obviously, such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Respondent did not submit any response.” CMA CGM v. Diana Smith,WIPO Case No. D2015-1774; and see The Prudential Assurance Company Limited v. Prudential Securities Limited,WIPO Case No. D2009-1561; and W.W. Granger, Inc. v. Name Redacted,WIPO Case No. D2015-1500.
As for the issue of registration and use of the Disputed Domain Name in bad faith, Complainant states the facts are overwhelming that the registration and use of the Disputed Domain Name are part of a fraudulent plan by Respondent to misdirect funds owed by customers of Complainant. Complainant cites previous decisions of UDRP panels to this point such as the following:
“Establishing a phishing website using a domain name that incorporates the complainant’s mark is a strong example of bad faith under the Policy.” Olivetti S.p.A v. mez inc,WIPO Case No. D2015-1934; and see Banco Brandesco S.A. v. Samanbaia valinhos/ Private Registrant,WIPO Case No. D2010-1658. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, Complainant must demonstrate that each (and thus all) of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Respondent has defaulted by failing to file a response to the allegations of Complainant. Paragraph 14(a) of the Rules states: “In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint”. Further, pursuant to paragraph 15(a) of the Rules, certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations.
Also, paragraph 14(b) of the Rules states: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.” When applying this provision, UDRP panels have generally concluded that the respondent’s default does not automatically result in a decision in favor of the complainant. A number of cases hold for a non-responsive respondent where a complainant fails to prove all the elements of paragraph 4(a) of the Policy. Nevertheless, a panel may draw negative inferences from the respondent’s default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413. A. Identical or Confusingly Similar
The Disputed Domain Name fully incorporates Complainant’s trademark. Many UDRP panels have found confusing similarity where a trademark is owned by a complainant and the disputed domain name fully includes the complainant’s trademark. For example, the issue of confusing similarity is well considered by the panel in Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768. The panel in that case, which involved a well-known trademark, “concurs with the opinion of several prior WIPO UDRP panels, which have held that, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy”. See,e.g. Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615.
The prefix “br“ only adds to the confusing similarity as it refers to Complainant’s headquarters’ location.
The Panel agrees that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The second element of a claim of wrongful domain name registration and use is that a respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.”
Complainant has provided in detail, as set forth above, a clear picture of the reasons Respondent has failed to meet any of the requirements of paragraph 4(a)(ii). In reality, Respondent has used the Disputed Domain Name in an attempt to create the impression that the Disputed Domain Name is, in fact, a domain name belonging to Complainant in order to fraudulently obtain monies, using hacked invoices owed to Complainant from its customers.
Respondent obviously has failed to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Panel determines that Complainant has adequately demonstrated that Respondent lacks rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The third element of the Policy states that Complainant must show that Respondent registered and is using the Disputed Domain Name in bad faith (Policy, paragraph 4(a)(iii)). The elements necessary for proof that the Disputed Domain Name has been registered and is being used in bad faith have been set forth in Complainant’s contentions which the Panel has set out above in detail. In this case, the trademark was registered six years earlier than the registration of the Disputed Domain Name.
The Panel also has found relevant the fact that the trademark FIBRIA is a neologism with no meaning in Portuguese other than to refer to Complainant. Thus, Respondent must have registered its Disputed Domain Name solely for the purpose of confusing customers of Complainant that this Disputed Domain Name was sourced from Complainant.
Respondent, as stated earlier, simply sought to deceive customers of Complainant into thinking that invoices sent by an email address containing the Disputed Domain Name were sent by Complainant and contained truthful information as to where to send funds owed to Complainant. In fact, the documents were fraudulent in that they contained reference to a bank account other than that of Complainant. The Panel believes that the Disputed Domain Name was registered by Respondent knowingly seeking to use it to send said fraudulent emails.
In this case Complainant has spent considerable effort in its Complaint to show in detail how documents were falsified and that the Disputed Domain Name was the conduit for implementation of this fraudulent scheme.
The Panel finds that the third element of the Policy has been satisfied. 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 Complainant.
James H. Grossman
Sole Panelist
Date: August 1, 2016
Full & Egal Universal Law Academy