The Complainants are SF Investments Inc., Smithfield Package Meats Corp., United States of America (“United States”), represented by Jeffrey Porter, United States.
The Respondent is WhoIs Privacy Protection Service, Inc. / Edward Carberry, [Organization Redacted], Canada 1.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 10, 2021, 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 October 12, 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 the Respondent of the Complaint, and the proceedings commenced on October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 13, 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 BackgroundThe Complainant SF Investments, Inc. is the proprietor of the following United States trademarks (the Complainants’ Trademarks”):
- United States trademark registration no. 2624764 for SMITHFIELD (word mark), registered September 24, 2002.
- United States trademark registration no. 2989997 for SMITHFIELD (figurative mark), registered August 30, 2005.
- United States trademark registration no. 6370768 for SMITHFIELD (word mark), registered June 1, 2021
- United States trademark registration no. 6133004 for SMITHFIELD BY LUTER (figurative mark), registered August 25, 2020.
- United States trademark registration no. 4778928 for SMITHFIELD PRIME (word mark), registered July 21, 2015.
- Canadian trademark registration no. 1618105 for SMITHFIELD (figurative mark), registered May 21, 2014.
The Complainants are part of the same company group and the Complainant Smithfield Packaged Meats Corp. holds licensing rights with respect to the trademarks mentioned above.
The Domain Name was registered on September 24, 2021. At the time of filing the Complaint, the Domain Name resolved to a website impersonating the Complainant, as further explained in Section 5 below.
5. Parties’ Contentions A. ComplainantThe Complainants assert, substantially, the following:
The Domain Name is confusingly similar to the Complainants’ SMITHFIELD trademark.
To the Complainants’ knowledge, the Respondent has no legitimate interest in the Domain Name and does not own any registered or unregistered rights in the SMITHFIELD name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. In fact, the Respondent is misusing the Domain Name to deceive consumers into believing that the website pertains to the Complainants. The website to which the Domain Name resolves shows that the Respondent attempts to impersonate the Complainant Smithfield Packaged Meats Corp. The “Contact Us” page on the website lists a business address for one of the Complainants’ locations in Ohio, United States, but provides an invalid phone number that directs to an unknown individual. The illegal registration and use of the Domain Name is an immediate threat to the Complainants and the legitimate business of the Complainant Smithfield Packaged Meats Corp. and other affiliated Smithfield companies’, and poses a potential commercial threat to the general public.
The bad faith of the Respondent is plain and obvious by the fact that the Domain Name uses the Complainants’ SMITHFIELD trademark as the dominant element and is nearly an exact copy of the corporate legal name of the Complainant Smithfield Packaged Meats Corp. Further, the website associated with the Domain Name is attempting to pass itself of as a legitimate website for the Complainant Smithfield Packaged Meats Corp., pretending to be the Complainant Smithfield Packaged Meats Corp and referencing other brands owned or licensed by the Complainants, including Eckrich, Nathan’s Famous and Farmland, along with many other brands not associated with the Complainants or their affiliated companies.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsThe burden for the Complainants under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no right or legitimate interest in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
It is clearly established that the Complainant SF Investments, Inc. is the proprietor of trademark registrations which consists of or includes the element SMITHFIELD which all were registered prior to the registration date of the Domain Name. It is further established that the Complainant Smithfield Packaged Meats Corp. holds licensing rights in relation to such SMITHFIELD trademark registrations.
The Domain Name incorporates the Complainants’ SMITHFIELD trademark in its entirety while adding “packagedmeatcorp”, making the Domain Name nearly identical to the Complainant Smithfield Packaged Meats Corp.’s corporate legal name. Further, it is well-established that generic Top-Level Domain (“gTLD”) suffixes, such as “.com”, are disregarded in the assessment of similarity between a disputed domain name and a complainant’s mark, see section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). Considering the foregoing, the Panel finds that the Domain Name is confusingly similar to the Complainants’ SMITHFIELD trademarks.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the present case, there is no indication that the Respondent holds any rights to a sign that corresponds to the Domain Name. Further, there is no indication that the Respondent has been authorized by any of the Complainants to use the SMITHFIELD trademark in a domain name or in any other way. Instead, there are clear indications that the Respondent has intentionally attempted to create a likelihood of confusion between the Domain Name and the Complainants’ SMITHFIELD trademark without the Complainants’ authorization. As mentioned above in section 6A, the Domain Name incorporates the Complainants’ SMITHFIELD trademark in its entirety and is nearly identical to the Complainant Smithfield Packaged Meats Corp.’s corporate legal name, thus carrying a risk of implied affiliation, which is reinforced by the impersonating content at the Domain Name’s website, none of which can constitute fair use.
Considering the foregoing, the Panel finds that the second element has been satisfied.
C. Registered and Used in Bad FaithAs has been described above, the Domain Name incorporates the Complainants’ SMITHFIELD trademark in its entirety while adding “packagedmeatcorp”, making the Domain Name nearly identical to the Complainant Smithfield Packaged Meats Corp.’s corporate legal name. It must also be noted that the Complainant SF Investments Inc. is the proprietor of a trademark registration that is valid in the Respondent’s country Canada (see Section 4 above). Further, the website to which the Domain Name resolves makes reference to one of the Complainants’ locations in Ohio, United States, and to brands i.e. owned or licensed by the Complainants. It is clear that the Respondent has registered and is using the Domain Name in order to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ SMITHFIELD trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Considering the foregoing, the Panel finds that the Domain Name was registered and is being used in bad faith.
7. DecisionFor 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
Jonas Gulliksson
Sole Panelist
Date: November 27, 2021
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s Organization 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 Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.