The Complainant is JBS S.A., Brazil, represented by SP Law (Spiewok Carneiro), Brazil.
The Respondent is JBS SA, South Africa. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2020. On March 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2020, 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 March 30, 2020 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 March 30, 2020. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 6, 2020. The Center verified that the Complaint together with the amended Complaints 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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2020. The Center appointed John Swinson as the sole panelist in this matter on May 14, 2020. 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 company incorporated in Brazil. According to the Complainant, the Complainant is a global leader in the food industry and has hundreds of production units and businesses for food (particularly meat products), leather, biodiesel, collagen, metal packaging, and cleaning products. The Complainant has over 400 facilities and offices around the world and is present in over 150 countries. The Complainant was founded in 1963. The Complainant is the owner of numerous trade marks for JBS throughout the world, the earliest of which is Brazilian registered trade mark number 826207650, registered on July 15, 2008 (“Trade Mark”). The Complainant has also used JBS in the Complainant’s trade name since March 2006, and owns numerous domain names incorporating the Trade Mark, including The Respondent is JBS SA, South Africa. No formal response was received by the Respondent and therefore little information is known about the Respondent. The Respondent registered the Disputed Domain Name on April 1, 2017. The Disputed Domain Name does not resolve to an active website (and there is no evidence that the Disputed Domain Name has ever resolved to an active website). 5. Parties’ Contentions A. Complainant Identical or confusingly similar The Complainant is well known worldwide. The term JBS has been the main and distinctive element of the Complainant’s trade name since March 2006. The Complainant is a global company with enormous strength and prestige linked to its trade name and the Trade Mark. The Trade Mark is intrinsically associated with the Complainant by consumers and the market in general. The Disputed Domain Name is identical to the Complainant’s Trade Mark and trade name JBS SA. The use of “SA” in the Disputed Domain Name does not avoid the illicit reproduction of the Trade Mark, the “SA” forms part of the Complainant’s trade name. Rights or legitimate interests The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is the legitimate and exclusive owner of the Trade Mark and the Complainant has never granted any authorisation, permit or license to use the Trade Mark. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or acquired any rights. Registered and used in bad faith The Respondent is fraudulently and intentionally attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of its website, and location of its products and services on its website. The Disputed Domain Name is clearly making reference to the Complainant, which is evidence of bad faith. When the Respondent registered the Disputed Domain Name, the Trade Mark was already registered and widely used. The Complainant and the Trade Mark are famous worldwide. The Respondent was aware of the Trade Mark and registered the domain name using a third party’s identity to cover up his or her true identity. The Respondent’s purpose was to mislead consumers. The Disputed Domain Name incorporates the Trade Mark and the word “SA” (meaning company) which is descriptive and unduly tries to give the idea that the Respondent is one of the Complainant’s business units or branch companies. The Disputed Domain Name was registered with the purpose of (a) taking advantage of the Trade Mark; (b) misleading consumers; and (c) disrupting the business of Complainant, given the Respondent’s use of the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response notwithstanding that the contact email address affirmed by the Registrar was used to notify the complaint. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the letters “SA” at the end. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. In this case, the additional letters “SA” also create a domain name that fully corresponds to the Complainant’s trade name JBS SA. The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel considers the Complainant has made out a prima facie case. This finding is based on the following: - The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name does not resolve to an active website. - The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name. While the Respondent (according to the WhoIs) is listed as “JBS SA”, this is not by itself sufficient to show that the Respondent is known by the Disputed Domain Name as a registrant can enter any name/identity when registering a domain name and the veracity of such entry is not verified by the registrar. - The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name does not resolve to an active website. At the time of the Complaint and this decision, the Disputed Domain Name does not resolve to an active website. The Respondent had the opportunity to provide a credible explanation for its registration of the Disputed Domain Name, but did not do so. It is therefore open to the Panel to decide that the intention was to take advantage of the Complainant’s business especially as the Disputed Domain Name corresponds exactly to the Complainant’s trade name and the Complainant’s United States-focused online presence is at the domain name Further, the Complainant has provided evidence that the Trade Mark has a strong reputation and there is a likelihood of confusion between it and the Disputed Domain Name (particularly given that the Disputed Domain Name is identical to the Complainant’s trading name and US-focused web presence). As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith. The Panel accepts the Complainant’s submissions that the Trade Mark and the Complainant are well known internationally, having been used since 2006. The Complainant has developed a significant reputation in the Trade Mark. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name almost 10 years. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview). The Panel acknowledges that the letters JBS do not necessarily only refer to the Complainant. However, in the present case, it is more likely than not that this refers to the Complainant, as they are used with the addition of the letters “SA”, with the result being that the Disputed Domain Name is identical to the Complainant’s trading name and US-focused web presence. Furthermore, a Google search by the Panel using the terms “JBS” and “SA” indicates only references to the Complainant on the initial result pages (see also JBS S.A. v. Francinei Evangelista da Silva,WIPO Case No. D2017-0415). The Disputed Domain Name is, as mentioned above, also identical (excluding the generic Top-Level Domain “gTLD”) to the domain name Based on the facts discussed above, the Panel can reasonably infer that the Respondent either knew or should have known that the Respondent’s registration would be identical or confusingly similar to the Complainant’s Trade Mark. The Panel thus finds that the Disputed Domain Name was registered in bad faith. The Disputed Domain Name does not resolve to an active website (and there is no evidence that it has ever resolved to an active website). Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that: While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. The particular circumstances of this case which lead to a conclusion of bad faith use are: - the Trade Mark has a strong reputation and is widely known throughout the world, as evidenced by numerous registrations worldwide and the Complainant’s evidence of its reputation, size and earnings; - the Disputed Domain Name has never resolved to an active website, despite the length of time that has elapsed; - the Disputed Domain Name is identical to the Complainant’s name and the Complainant’s (or its related entities / foreign arms) own identical domain names in other gTLDs; - the Respondent had the opportunity to but has not submitted a response or provided any evidence of actual or contemplated good-faith use; and - the Respondent has taken active steps to conceal its true identity through a privacy service (but not, as the Complainant claims, using a third party’s identity), see section 3.6 of WIPO Overview 3.0. In light of the above, the Panel finds that the Complainant has succeeded on 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, John Swinson
Sole Panelist
Date: May 28, 2020
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