WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Minerva S.A. v. Oneandone Private Registration, 1&1 Internet Inc. / Frances Mak

Case No. D2018-2488

1. The Parties

The Complainant is Minerva S.A. of São Paulo, Brazil, represented by Opice Blum, Brazil.

The Respondent is Oneandone Private Registration, 1&1 Internet Inc. of Chesterbrook, Pennsylvania, United States of America (“Unites States”) / Frances Mak of New York, New York, United States.

2. The Domain Name and Registrar

The disputed domain name <milnarvafoods.com> (the “Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2018. On November 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 12, 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 November 14, 2018.

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 November 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2018.

The Center appointed Michael D. Cover as the sole panelist in this matter on December 20, 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 registered proprietor of the trademark MINERVA under No. 826080120 in Class 29 in Brazil. This trademark was applied for in 2004 and is registered for a range of goods, which include meat, fish, game and other foodstuffs. The Complainant’s trademark MINERVA is used by the Complainant in relation to the selling of food, specifically meat and meat derivatives.

The Complainant also trades as “Minerva Foods”, as set out in Annex 6 to the Complaint.

The Disputed Domain Name was registered on August 13, 2018. Shortly after that, between August 20, 2018 and August 21, 2018, an email connected with the Disputed Domain Name was used to request payment from a contact of the Complainant.

5. Parties’ Contentions

A. Complainant

Confusingly Similar to a Trademark in which the Complainant has Rights

The Complainant sets out that the Disputed Domain Name is identical or confusingly similar to a trademark in which it has rights and notes that it is the proprietor of the registered trademark set out above and trades as “Minerva Foods”, also as set out above. The Complainant submits that these combined words produce what it calls a distinct identifier of the Complainant’s practice and goods.

The Complainant goes on to set out that the Disputed Domain Name is clearly similar to “MINERVA” and the second element of the Disputed Domain Name, “foods”, contains the “practice” area of the Complainant and, hence, the Disputed Domain Name may confuse third parties, including the Complainant’s consumers. The Complainant also draws the Panel’s attention to the unrequested communication and what it calls the “fake invoices”, as set out above and in Annex 6 to the Complaint.

The Complainant submits that the Disputed Domain Name contains the Complainant’s trademark MINERVA in its entirety, subject to the typographical error already noted. The Complainant goes on to submit that numerous UDRP Panels have recognized that the incorporation of a trademark in its entirety can be sufficient to establish that a disputed domain name is at least confusingly similar to a registered trademark.

The Complainant states that typo-squatted domain names are in fact intended to be confusing, so that Internet users, who unwillingly make common type errors, will enter the typo-squatted domain name instead of the correctly-spelled trademark.

Rights or Legitimate Interests

The Complainant states that it has not licensed, permitted or authorized the Respondent to use either its trademark MINERVA or its corporate name. The Complainant goes on to state that it has found no evidence of rights or legitimate interests of the Respondent in the Disputed Domain Name. In particular, the Respondent is not commonly known by the Disputed Domain Name and has gone to the extent of requesting that its personal data be hidden.

With regard to the possible use of the Disputed Domain Name in connection with a bona fide offering of goods or services and making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers, the Complainant notes the instance set out in Annex 6. The fraudulent similarity between the Disputed Domain Name and the Complainant’s trademark MINERVA and corporate name Minerva Foods has allowed, says the Complainant, the Respondent to commit the fraudulent acts complained of that this does not constitute bona fide offering of services of fair use of the Disputed Domain Name.

The Complainant concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant sets out that the Disputed Domain Name was registered and has been used in bad faith.

The Complainant notes that the registration and use of the Complainant’s trademark MINERVA dates back to 2004, which is well before the registration of the Disputed Domain Name. The Complainant submits that the trademark MINERVA and its use in the food sector is well-known and that it is clearly possible that the Respondent registered the Disputed Domain Name knowing of the Complainant’s operation and trademark, which would all lead to the conclusion that the Disputed Domain Name was registered in bad faith.

With regard to use in bad faith, the Complainant points to what it calls the fraudulent use of the Disputed Domain Name documented in Annex 6 and the use of typo-squatting. The Complainant concludes that the Respondent has been using the Disputed Domain Name in bad faith.

Remedy Requested by the Complainant

The Complainant requests that the Panel decides that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established both registered and common law rights in its trademark MINERVA. The Complainant owns a registered trademark for MINERVA in Brazil, the application for which dates back to 2004, which is over 10 years before the registration of the Disputed Domain Name. The use of MINERVA over many years will have built up substantial goodwill and reputation in the business conducted under the trademark MINERVA and the resulting common law rights.

The Panel accepts that the Disputed Domain Name is confusingly similar to the trademark MINERVA, in which the Complainant has rights. The Disputed Domain Name reproduces the Complainant’s trademark MINERVA in its entirety, subject to two letters being added or changed, and this amounts to typo-squatting, as the Complainant submits. In addition, the term “foods” describes exactly the Complainant’s area of business or practice area as the Complainant calls it.

The Panel also accepts that the addition of a term, such as “foods” or “.com”, is not sufficient to avoid a finding that the Disputed Domain Name is confusingly similar to the trademark MINERVA.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MINERVA, in which it has rights, and that paragraph 4(a)(i) of the Policy has been met.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no suggestion or evidence that the Complainant has authorized or licensed the Respondent to use its MINERVA trademark; the original use of that trademark and the registered MINERVA trademark predates the registration of the Disputed Domain Name by a considerable number of years.

Further, it is a reasonable inference that the Respondent was aware of the Complainant’s MINERVA trademark when the Disputed Domain Name was registered. Such use as has taken place of the Disputed Domain Name, the Panel accepts, was not legitimate non-commercial or fair use of the Disputed Domain Name and had the effect and the intention, in which it could have succeeded, misleadingly to divert consumers and to tarnish the MINERVA trademark of the Complainant.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel notes the nature of the Disputed Domain Name and the use of an email connected with the Disputed Domain Name to seek payment from a contact of the Complainant cited by the Complainant.

The Panel finds, on the evidence and on the balance of probabilities, that the Respondent, by using the Disputed Domain Name in the way described in this Decision has intentionally attempted to create a confusion to the Complainant’s business partners and customers for commercial gain. The Panel also finds, on the evidence and on the balance of probabilities, that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business, including by typo‑squatting. The Panel has already found that it is a reasonable inference that the Respondent was aware of the Complainant’s MINERVA trademark when registering the Dispute Domain Name.

The Panel therefore finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met.

7. Decision

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 <milnarvafoods.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: December 27, 2018