Complainant is Frigorifico Canelones SA, Uruguay, represented by Opice Blum, Brazil.
Respondent is PDR Ltd. d/b/a PublicDomainRegistry.com, India / Frigorifico Canelones S.A., Uruguay. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 Complainant on September 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 16, 2020. 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 Respondent of the Complaint, and the proceedings commenced on September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2020. The Center appointed Roberto Bianchi as the sole panelist in this matter on November 10, 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. On November 20, 2020, the Panel issued Administrative Panel Procedural Order No. 1, requesting the Parties to comment on the fact that, according to the relevant WhoIs data provided by the Registrar, Respondent’s name coincides with Complainant’s corporate name. By this Procedural Order No. 1, the deadline for rendering the Decision was reset to December 4, 2020. On November 24, 2020, Complainant sent its comments with regard to Procedural Order No. 1. Respondent failed to send any comment thereon. 4. Factual Background Complainant is a Uruguayan corporation dedicated to the processing and marketing of meat and other Complainant owns a Uruguay registration for the trademark FRIGORIFICO CANELONES, Registration No. 406622, filed on October 16, 2009 and registered on December 7, 2009, covering products in Classes 18, 20, 22, 29, 30, and 31. A renewal of this registration was filed on May 6, 2020 under No. 513854, and is pending. The disputed domain name was registered on May 19, 2020. At the time of rendering the Decision, the website at the disputed domain name displayed a list of “related searches” resolving to links entitled “Order Seafood Online”, “Organic Meat Delivery”, “Best Seafood Restaurants”, “Wholesale Meat Prices”, “Seafood for Sale”, “Fresh Seafood Delivery”, and “Online Canned Meat”.1 Apparently, none of these links are related to Complainant or to Complainant’s business. 5. Parties’ Contentions A. Complainant Complainant contends as follows: The disputed domain name is identical or confusingly similar to the FRIGORIFICO CANELONES mark in which Complainant has rights. As a trademark owner, Complainant has the right to use the expression “Frigorifico Canelones” specially related to food matters. In addition, since the expression “Frigorifico Canelones S.A.” is Complainant’s corporate name, these words combined reproduce a distinctive identifier of Complainant’s practice and goods. By using the Spanish word “frigorífico” (“meat processing facility”) the disputed domain name makes a clear reference to Complainant’s trademark and area of practice. Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not licensed, permitted or authorized Respondent to use Complainant’s FRIGORIFICO CANELONES mark or its “Frigorífico Canelones S.A.” corporate name. Respondent is hiding its personal data by using a privacy service. The current use of the disputed domain name is related to frauds and unrequested communications with Internet users. The disputed domain name has been registered and is being used in bad faith. Complainant’s operation in the food sector began in the 1990s with it trademark application filed before Uruguay’s official trademark office in 1999. The disputed domain name was registered on May 19, 2020, almost 10 years after Complainant’s latest application for renewal of the FRIGORIFICO CANELONES trademark, published on November 6, 2009. Therefore, it is clear that at the time of registering the disputed domain name Respondent already knew of Complainant, its operation in the food sector and its ownership of the FRIGORIFICO CANELONES trademark. Respondent is hosting an entire website that purports to be Complainant’s website, with the same expression and visual presentation. Therefore, the disputed domain name is being used to commit fraud, i.e. in bad faith. In reply to the Panel’s Procedural Order No. 1, Complainant referred to the fact that per the relevant WhoIs data provided by the Registrar to the Center, Respondent’s name is “Frigorifico Canelones S.A.”, which happens to be Complainant’s own corporate name. Complainant says that at the time of registering the disputed domain name, Respondent was not required to provide any evidence of its real name. Respondent then illegally provided to the Registrar Complainant’s corporate name, perhaps with the purpose of making the disputed domain name more credible, and also to create confusion and commit fraud. Respondent has no authorization to use Complainant’s corporate name for any purpose whatsoever. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has shown that it owns the FRIGORIFICO CANELONES trademark in Uruguay since 2009. See section 4 above. Therefore, the Panel finds that Complainant has rights in such mark for purposes of Policy paragraph 4(a)(i). The Panel notes that the disputed domain name incorporates Complainant’s FRIGORIFICO CANELONES mark in its entirety, with the addition of a hyphen and the “sa” term (an abbreviation of “sociedad anónima”, the Spanish term for a type of corporation). Such addition would not prevent a finding of confusing similarity to Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“1.8 Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests In the Complaint, Complainant says that Respondent has no rights or legitimate interests in respect of the disputed domain name. By using the Spanish word “frigorífico” (“meat processing facility”) in the disputed domain name, Respondent is making a clear reference to Complainant’s trademark and area of practice. Complainant has not licensed, permitted or authorized Respondent to use Complainant’s FRIGORIFICO CANELONES mark or its “Frigorífico Canelones S.A.” corporate name. In its comment in reply to the Panel’s Procedural Order No. 1, Complainant states that Respondent was not authorized to use Complainant’s corporate name for registering the disputed domain name. Complainant says that in order to register the disputed domain name, Respondent was not required to show evidence that it has an authorization or right to use such corporate name. Complainant adds that Respondent tried to hide its personal data by contracting a privacy service, and that the current use of the disputed domain name is related to committing frauds and engaging into unrequested communications with Internet users. The Panel does not see any evidence that Complainant authorized or licensed Respondent to use Complainant’s corporate name or the FRIGORIFICO CANELONES mark. There is also no evidence that Respondent is being or was ever known – commonly or otherwise – by the disputed domain name or by Complainant’s corporate name, which excludes the application of Policy paragraph 4(c)(ii). In particular, Respondent failed to explain why it is using Complainant’s corporate name “Frigorífico Canelones S.A.” without any authorization from Complainant, its legitimate owner. In the view of the Panel, this is an attempt at impersonation, which evidences lack of rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). The Panel also notes that the website at the disputed domain name is being used to display a list of “related searches” resolving to links entitled “Order Seafood Online”, “Organic Meat Delivery”, “Best Seafood Restaurants”, “Wholesale Meat Prices”, “Seafood for Sale”, “Fresh Seafood Delivery”, and “Online Canned Meat”. In turn, each of these links resolves to a website apparently unrelated to Complainant or to Complainant’s business. By displaying such links, Respondent presumably is generating click-through income, i.e., using the disputed domain name to extract a profit from the confusion it creates among Internet users most likely looking for Complainant and its products. This is neither a use in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue under Policy paragraph 4(c)(iii). Complainant has thus succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to present the Panel with any arguments of reasons in its own favor. Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Complainant has shown that it registered the FRIGORIFICO CANELONES trademark two decades before the registration of the disputed domain name. The Panel also notes that the disputed domain name not only incorporates Complainant’s mark in its entirety, but also literally reproduces Complainant’s full corporate name. At the time of registering the disputed domain name, Respondent even provided Complainant’s corporate name as its own name, thus attempting at impersonating Complainant. It is thus evident that when Respondent registered the disputed domain name, it had in mind and targeted Complainant, its FRIGORIFICO CANELONES mark and products. In the circumstances of this case, this is evidence of registration of the disputed domain name in bad faith. As shown above, Respondent is using the website at the disputed domain name to display a list of “related searches” resolving to a commercial websites apparently unrelated to Complainant. In this manner, Respondent presumably is generating click-through income from the visits of Internet users most likely looking for Complainant and its products and services. In other words, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of products or services on its website or location. This is evidence of registration and use of the disputed domain name in bad faith, pursuant to Policy paragraph 4(b)(iv). The fact that Respondent provided Complainant’s corporate name as its own name at the time of registering the disputed domain name, is evidence of an attempt at impersonation and passing-off, and therefore of registration and use in bad faith. The Panel concludes that the disputed domain name was 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 Roberto Bianchi 1 On November 16, 2020, the Panel, in exercise of its powers under Rules paragraph 10(a), visited the website at the disputed domain name.
meat-related products.
Sole Panelist
Date: December 4, 2020
Full & Egal Universal Law Academy