WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ducoco Alimentos S/A v. Domain Privacy LTD
Case No. D2012-1949
1. The Parties
The Complainant is Ducoco Alimentos S/A of Linhares, Espírito Santo, Brazil, represented by McKee, Voorhees & Sease P.L.C., United States of America.
The Respondent is Domain Privacy LTD of Marblehead, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ducoco.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 1, 2012. 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 a Brazilian company, founded in 1982, that specializes in the creation of a wide variety of coconut-derived food products including “fruit jellies”, piña colada mixes, coconut milk, and powdered coconut. The Complainant’s DUCOCO brand was launched in 1985, and the Complainant provided evidence of numerous trademark registrations for the term dating from as early as 1987. The Complainant operates a website at “www.ducocoalimentos.com.br”, which provides information about the company and its various dietary products.
The disputed domain name was registered on March 6, 2006, and has been used in connection with a series of pay-per-click (PPC) landing pages. Although many of the links on the site concern topics unrelated to the Complainant’s activities (e.g. – resume building services, Squishables toys, Google gaming apps, used cars, etc.), numerous links concerning the food industry are also present, including: “Food & Recipes,” “Receitas Bolo” (“cake recipes” in Portuguese), “Online Cooking Lessons,” “CocoaVia Flavanols,” and “Jimmy John’s Menu Options.”
5. Parties’ Contentions
The Complainant asserts that all of the necessary elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is both identical and confusingly similar to the DUCOCO trademark, as it contains the entirety of the mark in full.
The Complainant further contends that it has not authorized the Respondent to use the DUCOCO mark in any fashion, that the Respondent has no connection to the Complainant, and that the Respondent is not using the disputed domain name in connection with any bona fide commercial, noncommercial or fair use. The Complainant asserts that the use of the domain name in connection with PPC advertising does not constitute a legitimate interest in the domain name.
Finally, the Complainant alleges that the Respondent registered the disputed domain name with full knowledge of its DUCOCO mark and business activities. The Complainant asserts that the use of the domain name in connection with PPC advertising is evidence of the Respondent’s bad faith registration and use of the domain name under paragraph 4(b)(iv) of the Policy. The Complainant further notes the Respondent’s prior UDRP case history, during which it has acted as a respondent in roughly 80 matters.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The textual string of the disputed domain name in this matter is “ducoco”, which is identical to the Complainant’s registered trademark. The Complainant has demonstrated to the Panel’s satisfaction that it has secured numerous registrations for the mark in jurisdictions around the world, and has used said mark for a period of time substantially preceding the Respondent’s registration of the disputed domain name.
Additionally, it is well established that a generic top-level domain (gTLD) suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain name <ducoco.com> is identical to the Complainant’s DUCOCO mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is the consensus view among WIPO UDRP panelists, however, that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent is deemed not to have rights or legitimate interests in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use the DUCOCO mark in any fashion and that there is no connection between the parties. There is no evidence on the present record, on the website active at the disputed domain name, or in the publicly-available WhoIs records to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the domain name. Additionally, as discussed below, the website is used display PPC links through which the Respondent appears to generate revenue. Thus, the Respondent is clearly not making a noncommercial or fair use of the domain name.
The Respondent’s website does not display any comments or text beyond a mere presentation of PPC links, and the format, content and background of the page changes when refreshed. Many of the links shown on these various pages are unrelated to the Complainant’s business activities but, as indicated above, a number of them are connected to the food service industry. The links which appear unrelated to the Complainant’s activities do not correspond to any generic or descriptive meaning of the text of the disputed domain name, which indicates that the Respondent has not been using the domain name in connection with a generic-registration scheme. See Caisse Nationale des Allocations Familiales v. Domain Discreet Privacy Service / Medya Grup, Ozaltin Haydar, WIPO Case No. D2012-0877.
As a number of the links shown on the Respondent’s website do directly relate to goods and services in the same categories as those for which the Complainant’s DUCOCO mark is registered, it thus appears that the Respondent has traded upon the goodwill associated with the Complainant’s mark to earn PPC revenue. Such use of the disputed domain name to generate revenue via sponsored links does not constitute a bona fide offering of goods or services. See Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 and Lego Juris A/S v. Young entrepreneur success, Trian Tego Utomo MSA, WIPO Case No. D2010-0354.
The Respondent has not replied to the Complaint, and as such has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Complainant has demonstrated that its DUCOCO mark has been used in commerce in connection with its various coconut-derived products, and that it has enjoyed protection as a registered mark since at least 1987, roughly twenty years prior to the Respondent’s registration of the disputed domain name. The domain name contains the entirety of the Complainant’s trademark, and Respondent has used the domain name solely to display PPC links. Many of these links advertise products in the same business industry as the Complainant and thus, from all of the facts and circumstances in the case, it appears to the Panel that the Respondent was, or should reasonably have been, aware of the Complainant and its DUCOCO mark when it selected the disputed domain name.
Furthermore, by fully incorporating the DUCOCO mark in the disputed domain name and using the domain name in connection with PPC landing pages the Respondent was, in all likelihood, trying to divert Internet traffic intended for the Complainants’ website to its own for commercial gain by creating a likelihood of confusion with the Complainants’ mark. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 and F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.
The Panel therefore concludes that the requirements of paragraph 4(a)(iii) of the Policy have also been met.
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 <ducoco.com> be transferred to the Complainant.
Dated: November 13, 2012