The Complainant is JBS S.A. of Sao Paulo, Brazil, represented by SP Law (Spiewok Carneiro), Brazil.
The Respondent is Name Redacted.1 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 February 13, 2019. On February 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 20, 2019.
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 February 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2019.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 28, 2019. 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 JBS S.A., a Brazilian joint stock company founded in 1953 in the State of Goias, representing one of the global leaders in the food industry and other segments such as leather, biodiesel, collagen, metal packaging and cleaning products. The Complainant is present in over 15 countries with approximately 230,000 direct and 700,000 indirect employees worldwide, and is well known due to the exportation of its products throughout the world.
JBS is the main element of the Complainant’s trade name since March 2006, and the Complainant owns several trademark registrations in different classes, including the Brazilian trademark No. 826207650, for JBS, registered on July 15, 2008, in international class 29, in addition to many other registrations comprising the word “jbs” in other countries around the world.
The Complainant also owns numerous domain names consisting of the word “jbs”, including the domain name , registered on January 19, 2004.
The disputed domain name was created on January 28, 2018, and the website is currently inactive. At the time of filing the Complaint, the disputed domain name resolved to a website displaying the Complainant’s logo, and which was a copy of the Complainant’s website. In addition, the disputed domain name was used to send fraudulent emails. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Respondent registered the disputed domain name, which is identical to the Complainant’s trade name “JBS S.A.”, followed by the generic term “company”, giving the impression that it pertains to the Complainant’s business, despite the fact that there is no relationship between the Parties.
The Complainant alleges that the Respondent has no license or authorization from the Complainant and also no relationship at all with the Complainant.
Furthermore, the Complainant says that the Respondent is not commonly known by the disputed domain name and that the disputed domain name was registered without any rights or legitimate interests.
In addition, the Complainant argues that the Respondent is clearly aware of the Complainant’s fame and notoriety, since the printed page of its website reproduced a description about the Complainant made by the Respondent himself (Annex 16 of the Complaint).
According to the complaint, the Respondent was fraudulently and intentionally attracting Internet users to its website, seeking to capitalize on the fame of the Complainant’s mark for commercial gain and creating a likelihood of confusion with the Complainant. The Respondent’s website under the disputed domain name reproduces the Complainant’s registered logo mark JBS, the Complainant’s address, and the real names of its former managers.
The Complainant also informs that the Respondent provided false contact information and false identity when registering the disputed domain name.
Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant 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;
(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 evidence presented to the Panel demonstrates that the Complainant is the owner of several trademark registrations for JBS around the world, including the United States of America and Brazil.
The Complainant’s trademarks predate the registration of the disputed domain name.
The disputed domain name incorporates the Complainant’s trademark JBS in its entirety and the letters “sa”, forming exactly the Complainant’s trade name JBS S.A. The addition of the descriptive term “company” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademarks and trade name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark JBS.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name was used before the notice of the dispute to mislead users.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use, or demonstrable preparations to a bonna fide use of the disputed domain name under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The trademark JBS is registered by the Complainant in several jurisdictions, including the United States of America and Brazil, and has been used since 2004. Also, the Complainant registered many domain names consisting of the mark JBS, including the domain name , registered in 2004. The registration of the Complainant’s trademarks predate the registration of the disputed domain name.
The disputed domain name incorporates the Complainant’s trademark JBS and the letters “sa”, which correspond to the Complainant’s trade name “JBS S.A.”, in addition to the descriptive word “company”. The Respondent has no rights or legitimate interests in the disputed domain name. The inclusion of these terms was not by coincidence and creates even more confusion for customers, since it actually makes it appears that the disputed domain name belongs to the company JBS S.A., the Complainant.
The Complainant’s JBS mark is well known in the food industry, not only in Brazil but also abroad. Thus, a domain name that comprises such mark may be suggestive of the respondent’s bad faith.
There is enough evidence in the Complaint that the disputed domain name was used with the intent to deceive Internet users to believe they were negotiating with the Complainant, such as the reproduction of the Complainant’s logo mark and the names of the company’s members on the Respondent’s website, as well as the use of email addresses to simulate sales on behalf of the Complainant.
In addition to the above, the Complainant demonstrated that the disputed domain name was registered by the Respondent using a false contact information and a false identity.
Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s attempt of taking undue advantage of the Complainant’s trademarks as described in paragraph 4(b)(iv) of the Policy and the fraudulent email activity have been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., 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.
Mario Soerensen Garcia
Sole Panelist
Date: April 8, 2019.
1 The Respondent appears to have used the name and contact details of someone who was formerly related to the Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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