The Complainant is Camil Alimentos S.A. of São Paulo, Brazil, represented by Opice Blum, Brazil.
The Respondent is Matheus Henrique, CAMIL ALIMENTOS S.A. of São Paulo, Brazil. 2. The Domain Name and Registrar
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 September 11, 2018. On September 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2018, 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 reply to a request for clarification from the Center, the Complainant filed an amended Complaint on September 18, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2018.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 1, 2018. 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 is a Brazilian company operating in the food market, specialized in the processing of rice and sugar.
The Complainant uses the brand CAMIL to identify its products as well as the core and distinctive part of its corporate name.
The Complainant obtained a trademark registration for CAMIL in Brazil in August 8, 2006.
The Respondent registered the disputed domain name on January 4, 2018.
The Panel accessed the disputed domain name on November 10, 2018, when it was linked to a webpage that reproduces the Complainant’s CAMIL trademark and logo, offering for sale products such as rice, sugar and many others. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the trademark CAMIL, which was registered in Brazil in 2006. This registration confers to the Complainant the exclusive rights to use the term CAMIL in connection with products such as rice and sugar. Additionally, the CAMIL trademark is also core part of the Complainant’s corporate name “Camil Alimentos S.A”. The disputed domain name is identical to the trademark CAMIL, considering its phonetical and textual characteristics. The Complainant was informed by its consumers about the undue use of its trademark and corporate name on the disputed domain name, as well as in the context of fake invoices sent using the email addresses “[...]@” and “[…]camilalimentossa@”. It is clear that the use of the disputed domain name has been causing confusion to third parties, including the Complainant’s consumers, and exposing them to risk of frauds.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed, permitted or authorized any third parties to register and use its trademark CAMIL. The disputed domain name has been used to commit frauds, without a bona fide offering of goods and services. There is no evidence that the Respondent is commonly known by the disputed domain name, nor that the Respondent holds any registered or unregistered trademark rights on the term “Camil”.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s operations in the food sector started in 1963 and its trademark CAMIL was registered in 2006. The disputed domain name was registered only in 2018, at least eighteen years after the trademark application filed by the Complainant, and twelve years after the trademark registration. The Complainant’s operations in the food sector is well known. The Respondent registered the disputed domain name clearly knowing about the Complainant’s operations and trademark. The disputed domain name is being used by the Respondent to send fake invoices and quotations to the Complainant’s consumers. These circumstances, together with the unauthorized use of the Complainant’s registered trademark demonstrates that the Respondent is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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 has no doubt that “Camil” is a term directly connected with the Complainant’s activities in processing and selling products such as rice and sugar in Brazil.
Annex 4 to the Complaint demonstrates that the Complainant is the right owner of a CAMIL trademark registration in Brazil, obtained in 2006.
The trademark CAMIL is wholly encompassed within the disputed domain name, together with the suffix “alimentossa”, composing the exact corporate name of the Complainant “Camil Alimentos S.A.”. This addition, does not prevent a finding of confusing similarity with the Complainant’s trademark.
The disputed domain name also presents the generic Top-Level Domain (“gTLD”) “.com”. It is already well established that the addition of a gTLD extension is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent.
Although the Respondent has used the Complainant’s corporate name as the organization to which he is supposedly part when he registered the disputed domain name, this circumstance is not confirmed by the Complainant and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a website offering for sale products such as rice and sugar under the Complainant’s brand and logo. Previous UDRP cases have shown that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the disputed domain name if its use meets certain requirements. These requirements normally include, inter alia, the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant’s relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.)
The present case does not fit into these requirements: the Respondent is not a reseller of CAMIL products; and there is no disclosure concerning the Respondent’s relationship with the Complainant or the CAMIL trademark or the lack of relationship. The Panel notes the nature of the disputed domain name which almost matches the Complainant’s corporate name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2018) the trademark CAMIL was already directly connected to the Complainant’s products in Brazil.
The disputed domain name encompasses the trademark CAMIL and – besides the gTLD “.com” – reproduces exactly the Complainant’s corporate name.
Furthermore, the disputed domain name is currently linked to a website containing unauthorized reproductions of the Complainant’s trademark, offering for sale competing products.
The Respondent resides in Brazil, where the Complainant is established and operates, as well as where the latter owns the rights of a CAMIL trademark registration.
Therefore, the Panel concludes that it would definitely not be feasible to consider that the Respondent could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “camilalimentossa” could be a mere coincidence.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark; and
(ii) potentially obtains revenue selling CAMIL and other competing products to consumers that were looking for the Complainant; and
Furthermore, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of a third-party trademark and corporate name, certainly cannot be used in benefit of the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and 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 cancelled.
Rodrigo Azevedo
Sole Panelist
Date: November 12, 2018
Full & Egal Universal Law Academy