WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Minerva S.A. v. Oneandone Private Registration, 1&1 Internet Inc. / Maria Nobree
Case No. D2018-0765
1. The Parties
The Complainant is Minerva S.A. of Barretos, Brazil, represented by Opice Blum, Brazil.
The Respondent is Oneandone Private Registration, 1&1 Internet Inc. of Chesterbrook, Pennsylvania, United States of America / Maria Nobree of Ternopil, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <minerrvafoods.com> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2018, 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 April 11, 2018 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 May 16, 2018.
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 April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on May 17, 2018. 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 the owner of the trade mark MINERVA filed January 21, 2004 and registered on December 5, 2017 in Brazil for food products including meat.
The Domain Name registered on December 4, 2017 has been used for a fraudulent email scam using the name of one of the Complainant’s employees.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the trade mark MINERVA filed January 21, 2004 and registered on December 5, 2017 in Brazil for food products including meat. Its trade mark rights extend back to the time of filing of its registration and first use in 2004.
The Domain Name registered December 4, 2017 contains a sign confusingly similar to the Complainant’s MINERVA mark, adding an additional “r” and making the sign “minerrvafoods” which is the Complainant’s corporate name with that simple typo. The additional letter “r” and the generic Top-Level Domain (“gTLD”) does not distinguish the Domain Name from the Complainant’s mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no authorisation from the Complainant to use the Complainant’s mark. The Domain Name has been used for an email scam using the name of one of the Complainant’s employees and this cannot be a bona fide offering of goods and services or legitimate noncommercial fair use being registration and use in bad faith.
Typosquatting in itself is registration and use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of a sign confusingly similar to the Complainant’s MINERVA trade mark (registered in Brazil for, inter alia, meat on December 5, 2017 with rights going back to date of filing in 2004), the additional letter “r”, the dictionary word “foods” and the gTLD “.com”. Adding an additional letter, the word “foods” and a gTLD does not distinguish the Domain Name from the Complainant’s MINERVA mark which is the distinctive component of the Domain Name. The Domain Name appears to be a typosquatting registration designed to be mistaken for the Complainant’s corporate name Minerva Foods and the Complainant’s MINERVA mark.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has been used in a fraudulent email scheme using the name of one of the Complainant’s employees. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use.
As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
The addition in the Domain Name of the letter “r” to the Complainant’s MINERVA trade mark constitutes typosquatting designed to confuse Internet users. This amounts to bad faith registration and use under the Policy.
Impersonating the Complainant by use of the Complainant’s mark and the name of one of its employees in a fraudulent email scam is disruptive and also evinces bad faith registration and use.
Further, such use in relation to an email scam is confusing in that recipients of the emails may reasonably believe those emails are connected to or approved by the Complainant. This mimicking by the Respondent of the Complainant shows that the Respondent was aware of the Complainant and its business and rights at the time Domain Name was registered and constitutes passing off. Accordingly, the Panel holds additionally that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy, paragraph 4(b)(iv).
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy. There is no need to consider any additional grounds of bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <minerrvafoods.com> be transferred to the Complainant.
Date: May 21, 2018