WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JBS S.A. v. Francinei Evangelista da Silva
Case No. D2017-0415
1. The Parties
The Complainant is JBS S.A. of Vila Jaguará, Brazil, represented by Müller Mazzonetto, Brazil.
The Respondent is Francinei Evangelista da Silva of Alterosa, Brazil, self-represented.
2. The Domain Name and Registrar
The disputed domain name <jbsfoodsinternational.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2017, 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 and informing the registration agreement was in English.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. The Response, in Portuguese, was filed with the Center on March 27, 2017.
On April 4, 2017, the Complainant submitted an unsolicited Supplemental Filing. On April 5, 2017 the Respondent submitted an unsolicited Supplemental Filing.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 13, 2017. 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 that is one of the global leaders in the food industry and other segments. The Complainant has hundreds of production units and businesses for food, leather, biodiesel, collagen, metal packaging and cleaning products.
The Complainant is the owner of several trademarks composed by the term "JBS" around the world, and in particular in Brazil, since July 25, 2008. "JBS" is also the main and distinctive element of the Complainant's trade name since 2006.
The Complainant also owns and operates other domain names incorporating its JBS mark, such as <jbs.com.br>, registered in 2004.
The disputed domain name was registered by the Respondent on June 9, 2016.
The Panel accessed the disputed domain name on April 26, 2017, which resolved to a website that offers information about healthy food.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is identical with the Complainant's trademarks and likely to cause confusion or association with the Complainant. JBS is a distinctive sign widely used by the Complainant to identify its activities. The Complainant is the owner of several trademark registrations for JBS around the world, and in particular in Brazil, country where both parties are located. JBS is also the main and distinctive element of the Complainant's trade name since March 2006. Throughout the years, the Complainant has invested efforts and financial resources to propagate and advertise the trademark JBS, which is nowadays a famous and reputed trademark, at least in the Brazilian market. The possibility of confusion and undue association between the Complainant and the Respondent is irrefutable, especially considering that the disputed domain name is composed by the term "JBS" in association with the term "foods", which is exactly the Complainant's main field of activity. Actually, the Respondent's infringement becomes even more evident since the Complainant uses the term "JBS" in association with "foods" to designate one of its business units.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted any authorization for the Respondent to use or register a domain name containing the mark JBS. Furthermore, the Respondent holds no trademark application or registration for such mark, and has been using the disputed domain name exclusively with the purposes to take advantage of the Complainant. The Complainant received email messages from the Respondent showing his clear intention to sell the disputed domain name to the Complainant.
(iii) The disputed domain name was registered and is being used in bad faith. The Respondent sent email messages to the Complainant offering to negotiate the disputed domain name. The Respondent has used the disputed domain name and his Facebook page to provide information on food products - which is precisely the segment of the Complainant -, as well as to advertise the Complainant's main competitor in Brazil: BRF/Sadia. The Complainant's cease and desist letter was never answered by the Respondent, resulting merely on the temporary unavailability of the Respondent's website and on the removal of the posts and advertisements that referred to BRF/Sadia. The disputed domain name was registered with the purpose of creating a bad faith association with the Complainant's trademark JBS; and ultimately to sell it to the Complainant, a typical case of cybersquatting. Finally, the Respondent has provided a false or inconsistent address to prevent anyone to reach him, which is also an indication of bad faith on the part of Respondent. Hence, the only and necessary conclusion for this case is that the disputed domain name must be transferred to the Complainant.
The Respondent makes the following contentions:
(i) The similarity between the JBS brand and the disputed domain name derives from the fact that a trademark consisting of an acronym is weak, with a very limited scope of protection. The "JBS" acronym on the Respondent's disputed domain name is the abbreviation of "Jantar Bem Saudável" ("Very Healthy Dining" in English).
(ii) The website linked to the disputed domain name was created on June 9, 2016, but the Respondent already had a Facebook page since January 2015, in which he used to present information for a healthy life. The good acceptance of this page led the Respondent to create a website to address the same topics and register the disputed domain name. The registration of the disputed domain name was made only after checking the availability of the respective expression ("jbs food international") in the Brazilian Patent and Trademark Office's ("INPI") database.
(iii) The images attached to the Complaint are false and will serve as a basis for future criminal proceedings against the Complainant. The Respondent also does not recognize the email messages submitted by the Complainant. The temporary unavailability of the website published on the disputed domain name was due to maintenance and, in the case of the unavailability on December 27, 2016, to a hacker invasion. The allegations that the Respondent would have provided a false address deliberately do not proceed. The telephone number informed is correct. In fact, the Complainant deliberately used a fake address for sending its cease and desist letter. The Respondent submits as evidence an audio file which demonstrates that it was JBS who has contacted him offering to buy the disputed domain name, and, therefore, that have acted in bad faith.
6. Supplemental Fillings
In addition to the contentions above, both parties submitted unsolicited supplemental fillings. Therefore, the Panel shall initially determine whether these unsolicited fillings should be considered.
The Policy, the Rules and the Supplemental Rules do not expressly authorize the filing of additional submissions by either party without the Panel's request, and unsolicited supplemental filings tend to be accepted only where there is exceptional basis for their filing and admission after the primary single round of pleadings.
In the present case, the supplemental fillings present no compelling new evidence but rather consist merely of additional arguments that could have been advanced at first instance. Accordingly, the Supplemental Fillings will not be considered by the Panel in reaching its decision. In any event, had these been considered they would not have affected the outcome of the case.
7. Language of Proceedings
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. The language of the registration agreement for the disputed domain name is English.
Although the Response was submitted in Portuguese, the Respondent could apparently understand the Complaint as filed in English and did not formally request Portuguese to be the language of the proceedings. Likewise, the Complainant is from Brazil, where the official language is Portuguese, indicating it can also understand the Respondent's response.
Therefore, while the Panel determines that English shall be the language of this administrative proceeding, the Response in Portuguese is admitted.
8. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
The Panel has no doubt that "JBS" is a term directly connected with the Complainant's mark in Brazil, used to identify its meat processing activities and products.
Annex 4 to the Complaint shows several registrations of JBS trademarks obtained by the Complainant, including in Brazil, since 2008.
The disputed domain name encompasses the Complainant's trademark JBS together with the suffixes "foods" and "international", as well as with the generic Top-Level Domain ("gTLD") ".com".
Previous UDRP panels have consistently found that the addition of dictionary words describing a complainant's activity (such as "foods" and "international" for one of the leading exporters of processed meat in the world) does not distinguish a domain name from a mark, so as to avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that a gTLD suffix such as ".com" is typically irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
The Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, therefore, the burden of production shifts to the Respondent to provide evidence of such rights or legitimate interests.
The Respondent states that "JBS" is the acronym for "Jantar Bem Saudável" ("Very Healthy Dinner") and that he uses the disputed domain name to provide information about healthy living. The Respondent alleges that he created a Facebook page using the same name and with the same purpose in January, 2015.
However, the Panel is not convinced that the Respondent's use of the disputed domain name amounts to any rights or legitimate interests in it.
The Panel notes that JBS is a famous brand in Brazil, directly connected with the Complainant's activities in the food industry, and that the Respondent, being a Brazilian citizen, could not plausibly ignore it. The Panel further notes that the Complainant made a public announcement, in May, 2016 (less than a month before the registration of the disputed domain name), of its corporate reorganization and the future creation of a new holding company, "JBS Foods International" .
As already stated in previous UDRP decisions, rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant. (see, The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; and Drexel University v. David Brouda, WIPO Case D2001-0067).
The Panel finds, in the balance of probabilities and also taking into account the findings under the third element below, that the website under the disputed domain name is merely a pretext and that it was created with the sole purpose of attempting to circumvent the Policy. (See Tinder, Incorporated v. Ghassan Hedhli, Betsy Adams, Alison Britsson, Peter North, Alonzo Fredy, WIPO Case No. D2017-0154).
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent, the trademark JBS was already registered and widely used – and recognized – in connection with the Complainant's activities.
While the Panel accepts that the letters JBS do not necessarily refer only to the Complainant, the Panel notes that, in the present case, they are being used by the Respondent in the disputed domain name together with the English terms "foods" and "international", which are closely associated to the Complainant's activities in the food industry and as one of the main exporters of processed meat in the world. In 2016, when the disputed domain name was registered, the Complainant's mark JBS was already one of the leading brands in the "international foods" industry worldwide, and specially recognized in Brazil. The term "JBS Foods" even describes one of the Complainant's main business units. As referred above, the Panel further notes that the Complainant issued a public announcement, in May, 2016 (less than a month before the registration of the disputed domain name), of its corporate reorganization and the future creation of a new holding company, "JBS Foods International". Finally, a Google search using the terms "jbs", "foods" and "international" indicates only references to the Complainant's mark on the initial result pages.
Therefore, the Panel concludes that it is not likely that the Respondent was not aware of the Complainant's trademark or that the adoption of the expression "jbsfoodsinternational" was a mere coincidence.
There is a controversy between the parties concerning the authenticity of a series of email messages attached to the Complaint, which the Complainant claims to have come from the Respondent – offering the disputed domain name for sale – and which he denies. The same with some pictures that according to the Complainant would be evidence that the Respondent had advertised competing products on the website at the disputed domain name, which he also denies.
However, given the overall circumstances of this case, and independently of such possible additional evidence, the facts already described are enough to convince the Panel that the Respondent targeted the Complainant's brand and activities when registering the disputed domain name, as an attempt to attract the Complainant's interest in the disputed domain name, and at the same time to circumvent the Policy.
Finally, the Panel also finds that, by using the disputed domain name, the Respondent creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website.
The Respondent has attached an audio file with a telephone conversation with a Complainant's representative, where this person inquired about his interest in selling the disputed domain name. There is no information on the date of this call. The Respondent claims this contact is evidence that the Complainant is acting in bad faith. However, the Panel finds that there is no bad faith in trying to acquire a domain name that reproduces a complainant's own trademark.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
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 <jbsfoodsinternational.com> be transferred to the Complainant.
Date: May 1, 2017