Complainant is Mazzetta Company, LLC, United States of America (“United States”), represented by Greenberg Traurig LLP, United States.
Respondent is Perfect Privacy, LLC, United States / Name Redacted1 .
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 20, 2021, 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 21, 2021.
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 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. Respondent sent an informal email communication on September 27, 2021, which indicated that the name of a third party may have been used when registering the Domain Name. The Center informed the Parties of its commencement of Panel Appointment process on October 15, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 20, 2021. 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 BackgroundComplainant, the Mazzetta Company, LLC (“Mazzetta”), is an importer and distributor of seafood in the United States. Complainant has been in operation for over 40 years and sells over a 100 million pounds of finished seafood products annually. Mazzetta owns a United States federal trademark registration for MAZZETTA COMPANY under registration number 1,891,234, registered on April 25, 1995 (the “MAZZETTA” mark). Complainant also owns and operates its website at “www.mazzetta.com” and uses this domain name for all of its official email addresses.
Respondent registered the Domain Name on February 22, 2021. The Domain Name resolves to an error page.
Complainant has provided evidence indicating that Respondent is using the Domain Name to engage in deceptive email activities, including impersonating Complainant to divert funds. Specifically, Respondent created several email addresses on the Domain Name, such as “[…]@mazzettle.com”, to impersonate Complainant’s officers.
Complainant has also provided evidence that by using the above noted email addresses, impersonating Complainant’s executives, Respondent sent fraudulent email messages to Complainant’s supplier. In two representative fraudulent email messages, Respondent deceptively presented itself as one of Complainant’s executives, as shown by the content of the message, and Respondent’s use of Complainant’s executive’s actual, official contact information in the signature line of the messages. The header information in the email messages also showed that the emails were sent from the Domain Name. On May 17, 2021, Complainant’s counsel submitted an abuse complaint to Weebly, the reseller of the Domain Name, advising Weebly of Respondent’s fraudulent email activities in connection with the registration and use of the Domain Name. Thereafter, Weebly suspended the Domain Name.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the MAZZETTA marks and own domain names incorporating the MAZZETTA marks. Complainant contends that Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known MAZZETTA products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the MAZZETTA mark, as noted above. Complainant has also submitted evidence, which supports that the MAZZETTA mark is a widely known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the MAZZETTA mark.
With Complainant’s rights in the MAZZETTA mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s MAZZETTA mark. This mark is recognizable in the Domain Name. The incorporation of the MAZZETTA mark with the replacement of the letter “a” with the letters ”le”, in the Domain Name
Thus, the Panel finds that Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the MAZZETTA mark, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MAZZETTA trademark or to seek registration of any domain name incorporating the trademark. Respondent is also not known to be associated with or commonly known by the MAZZETTA mark.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of filing of the Complaint, the Domain Name resolves to an error page. Respondent has also used the Domain Name to engage in deceptive email activities, including impersonating Complainant to divert funds. Specifically, Respondent created several email addresses on the Domain Name to impersonate Complainant’s officers. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the MAZZETTA mark long predates the registration of the Domain Name, more specifically, the MAZZETTA mark, has been registered since at least as early as 1995, well before the registration of the Domain Name on February 22, 2021. Complainant is also well established and known. Indeed, the record shows that Complainant’s MAZZETTA mark and related services are widely known and recognized including in the United States. Therefore, Respondent knew or should have known Complainant and its MAZZETTA mark at the time of registration of the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. / Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007.
Further, the evidence demonstrates that Respondent was using the Domain Name in connection with deceptive and fraudulent activities. Complainant has provided evidence indicating that Respondent is using the Domain Name to engage in deceptive emails activities, including impersonating Complainant to divert funds. Specifically, Respondent created several email addresses on the Domain Name to impersonate Complainant’s officers.
Complainant has also provided evidence that by using the above noted email addresses, impersonating Complainant’s executives, Respondent sent fraudulent email messages to Complainant’s supplier. In two representative fraudulent email messages, Respondent deceptively presented itself as Complainant’s executive, to the extent of using the executive’s official contact information in the signature line of the messages. The header information in the email messages also shows that the emails were sent from the Domain Name. Complainant submits that these fraudulent messages were used as part of a larger scheme to divert funds and which resulted in a large fraudulent payment. On May 17, 2021, Complainant’s counsel submitted an abuse complaint to Weebly, the reseller of the Domain Name, advising Weebly of Respondent’s fraudulent email activities in connection with the registration and use of the Domain Name. Thereafter, Weebly suspended the Domain Name.
Therefore, Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s MAZZETTA 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.
At the time of the Decision, the Domain Name resolves to an error page. Here, the present circumstances, including the distinctiveness and reputation of the MAZZETTA marks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. See section 3.3 of the WIPO Overview 3.0.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Kimberley Chen Nobles
Sole Panelist
Date: November 3, 2021
1 Respondent appears to have used the name of a third party when registering the Domain Name. In light of the potential identity theft, the Panel has redacted 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 Domain Name, which includes the name of 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 Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.