WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agrosuper S.A. v. Registration Private, Domains By Proxy, LLC / Joong Supachuli
Case No. D2019-2794
1. The Parties
The Complainant is Agrosuper S.A., Chile, represented by Alessandri & Compañia Abogados, Chile.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Joong Supachuli, Thailand.
2. The Domain Name and Registrar
The disputed domain name <faenadoralo.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2019, 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 19, 2019 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 19, 2019.
The Center sent an email communication to the parties on November 19, 2019 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a request for Spanish to be the language of the proceeding on November 19, 2019. The Respondent did not submit any communication regarding the language of the proceeding.
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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 3, 2020. 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.
The Panel issued Procedural Order No. 1 on January 24, 2020, inviting the Parties to submit their arguments regarding the company “Faenadora Lo Miranda, Ltda”, and its relationship or connection with the Complainant. The Complainant submitted his arguments on January 27, 2020. No submission was received from the Respondent.
4. Factual Background
The Complainant is the head of a Chilean group of companies, founded in 1955, which operates internationally, with offices in various countries (Italy, United States, Japan, Mexico, China, and Brazil) and more than 14,000 employees. The Complainant’s group operates in the food industry, particularly in the production, distribution and commercialization of fresh and frozen pork, poultry (chicken and turkey), salmon, and processed products (jerky), under various trademarks that identify its products and services, as well as its factories and subsidiaries, among others, the trademarks AGROSUPER, SUPER CERDO and FAENADORA LO MIRANDA.
The Complainant holds trademark rights in the mark FAENADORA LO MIRANDA in Chile, namely, Chilean Trademark No. 1217006 FAENADORA LO MIRANDA, word, with no protection for the word “faenadora” alone, applied for on September 10, 2015 and registered on August 30, 2016, for services in class 40.
The Complainant’s group further owns various domain names, among others, <agrosuper.com> and <supercerdo.com> (both registered on October 4, 1999), as well as <supercerdo.cl> (registered by Agropecuaria e Inversiones Limitada, on August 23, 2005), which are linked to the Complainant’s corporate websites in connection with its products and services.
The disputed domain name was registered on January 15, 2015. At the date of this decision, the disputed domain name is inactive, resolving to a blank landing page lacking any content apart from a message indicating that the site is undergoing a major redo and inviting to send any enquiries per email (to [...]@faenadoralo.com). According to the evidence provided by the Complainant, the disputed domain name was linked to a website, in English language, which included in its heading, at the top before the text content of the site, the words “faenadora lo Miranda” surrounding an oval logo with the faces of a cow and a pig, in red, green and black colors. This website offered online sale of fresh, vacuum-wrapped or frozen meat products, in varying presentations. This site “about us” and “contact us” sections, as well as its copyright, indicated that the website belonged to “Faenadora Lo Miranda, Ltda.”, providing the name and photograph of a contact person (its director of communications), a contact form, telephone, fax, email and address (located in Lo Miranda, Rancagua, Chile).
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The trademark FAENADORA LO MIRANDA identifies one of the Complainant’s slaughter factory located in Lo Miranda, which is a town in the O’Higgins area, Chile, where the Complainant’s group started its business.
The disputed domain name is confusingly similar to the trademark FAENADORA LO MIRANDA. The disputed domain name incorporates the first two words of the Complainants’ trademark, without adding any other element, being the Complainant’s mark recognizable in the disputed domain name. The mark FAENADORA LO MIRANDA was coined by the Complainant being highly distinctive, and the use of the disputed domain linked to a website related to the Complainant’s same industry, contributes to the likelihood of confusion and association.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee or has been authorized to use the Complainant’s trademark, not having any relationship with the Complainant. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the terms “faenadoralo” or “faenadora lo Miranda”, not having any trademark rights in these terms. Further, the Respondent uses the disputed domain name in connection to a website in the same Complainant’s business, leading Internet users to confusion for a commercial gain.
The Respondent has registered and is using the disputed domain name in bad faith. The use of the disputed domain name evokes the Complainant’s trademark, due to the lack of any distinctive element in the disputed domain name (apart from the main distinctive first two elements of the Complainant’s mark), and its link to a website in the same Complainants’ business, which includes the Complainant’s mark. The website linked to the disputed domain name refers to identical business as the Complainant’s corporate sites (under the domain name <supercerdo.cl>). This use evidences the disputed domain name was registered and is being used targeting the Complainant’s mark with the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion and damaging the reputation of the Complainant and its trademarks, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) WIPO Overview 3.0.
A. Language of the proceeding
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.
The Complaint was submitted in Spanish, requesting Spanish to be the language of the proceeding, noting that the website provides contact information in Chile. However, the Panel notes the Respondent has not answered, and that the language of the registration agreement is English. The Panel further notes the Respondent is located, according the Registrar verification, in a non-Spanish speaking country (Thailand), and the website linked to the disputed domain name was in English language.
Due to the circumstances of the case, the Panel considers more appropriate for English to be the language of the proceeding and to render this decision in English, albeit the Panel has chosen not to request any translation of the Complainant’s submissions, in order to ensure this proceeding takes place with due expedition.
B. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7, WIPO Overview 3.0.
Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements.
In the present case it is relevant to indicate that the fact that the disputed domain name was registered before the Complainant acquired trademark rights does not preclude the Panel’s finding of identity or confusing similarity under the first element, although only in exceptional cases would the Complainant be able to prove the Respondent’s bad faith. See section 1.1.3, WIPO Overview 3.0.
The Complainant has rights in the registered trademark FAENADORA LO MIRANDA. The disputed domain name incorporates the first two elements of this mark, the word “faenadora”, and the word “lo”, not adding any further element. The Complainant’s trademark FAENADORA LO MIRANDA was registered with a disclaimer for the word “faenadora” (not protected alone but in conjunction with the other terms included in the mark). Given the analysis and conclusion set out in the following sections, the Panel does not consider it necessary to pronounce on this first element.
C. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged that the Respondent has no license or authorization to use the Complainant’s trademark and is not commonly known by the disputed domain name not having any trademark rights on the terms “faenadora lo” or “faenadora Lo Miranda”. This effectively shifts the burden to the Respondent of producing rights or legitimate interests in the disputed domain name. However, the Respondent has not replied to the Complainant’s contentions.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
As the evidence provided by the Complainant shows and the Panel has verified through the Internet archive WayBack Machine, the disputed domain name has been continually used, linked to a website offering online selling of various meat products, before the notice of the dispute, at least since July 29, 2016 until September 5, 2019. The said website indicated, in its contact details, an address located in Lo Miranda, Chile, and, as its owner, the company Faenadora Lo Miranda, Ltda., not containing any reference to the Respondent or to his/her relationship with the said company (Faenadora Lo Miranda, Ltda.) or to his/her relationship or lack of relationship or with Complainant and its group.
The term “faenadora” is a Spanish word included in the dictionary, equivalent to “slaughter factory”, and the word “lo” is a Spanish article or pronoun equivalent to “the” or “it”, which may refer to “Lo Miranda”, the location where the Respondent’s business is allegedly located. However, these circumstances do not by themselves automatically confer rights or legitimate interests on the Respondent in respect to the disputed domain name, unless the disputed domain name is been genuinely used or demonstrably intended for use in connection with its dictionary meaning. See section 2.10, WIPO Overview 3.0.
The Respondent’s website included a company name of the website’s owner (Faenadora Lo Miranda, Ltda.) and the words “faenadora lo Miranda” in capital letters in its heading with a specific graphic representation and a logo, as an indication of the origin of the site. Further, this site is aimed to products and services that may target the Complainant’s trademark in its same business. These circumstances lead the Panel to consider that the fact that the terms “faenadora” and “lo” are included in the dictionary are not sufficient to confer rights or legitimate interests on the Respondent.
Furthermore, through various searches over the Internet, the Panel has found various references to the company Faenadora Lo Miranda, Ltda., related to a slaughter factory, which appears to be located in the same address and have the same contact details indicated in the Respondent’s website. The Panel has found as well various references to a Complainant’s slaughter factory, which seems to be located in the same address indicated in the Respondent’s website, and that could lead towards considering that there is or there has been some kind of relationship or connection between the Complainant and Faenadora Lo Miranda, Ltda. The Panel issued Procedural Order No. 1 to request further information to the Parties in this sense. However, the Complainant’s response provided no explanation on the existence of Faenadora Lo Miranda, Ltda, or its possible relationship or connection with the Complainant.
The Panel further considers noteworthy the Respondent chose not to reply to the Complaint nor to the Panel Order No. 1, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain name.
In the absence of a response, all the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and, there is not sufficient evidence in the file to consider that the Respondent has rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name “has been registered and is being used in bad faith”.
In the absence of any evidence that may support the Respondent’s knowledge about the existence of the mark FAENADORA LO MIRANDA before the time this mark was applied for and registered by the Complainant, this Panel cannot consider the Respondent knew or should have known about the Complainant’s trademark at the time of the disputed domain name’s registration. The disputed domain name was registered more than one year before the registration and more than eight months before the application of the Complainant’s trademark, not having provided the Complainant any evidence of circumstances sustaining that the Respondent knew or should have known about the existence of this trademark at the time of the disputed domain name’s registration.
The Panel notes the extensive presence of the Complainant and its trademarks AGROSUPER and SUPER CERDO, as well as the current presence of the trademark FAENADORA LO MIRANDA, over the Internet. However, the Panel considers such current presence and use of the mark FAENADORA LO MIRANDA is not sufficient to determine whether this mark was used and notorious before its registration, or whether the Respondent likely knew about the existence of this mark at the time of the registration of the disputed domain name. The Complainant has not provided sufficient evidence of the alleged reputation of its trademark FAENADORA LO MIRANDA at the time of the registration of the disputed domain name.
The Complainant’s allegations of the Respondent’s bad faith are based in the use in the Respondent’s website of the same term as the Complainant’s mark (“faenadora lo Miranda”), in connection to the same Complainant’s business in the meat industry.
However, the Panel notes that the disputed domain name was registered and has been continually used in connection to the same business in the meat industry, for more than four years, since a date prior to the registration of the Complainant’s trademark. The Panel further notes that the website at the disputed domain name shows that the website has been operated by a company named Faenadora Lo Miranda, Ltda, and that there is no explanation on the relationship (or lack thereof) that this Company may have with the Parties. This lack of information persisted after the Panel explicitly asked for it on Procedural Order No. 1.
It is further important to remind the relatively limited scope of the Policy, which was conceived to solve cybersquatting scenarios where the disputed domain name is registered and is being used in bad faith targeting a trademark and not all disputes related to domain names.
Accordingly, the Panel concludes that the Complainant has not met its burden of establishing the third element of the Policy. However, the Panel wishes to clarify that this decision should not been understood as an approval to the Respondent’s registration and use of the disputed domain name, and does not preclude the Complainant from going to a competent court.
For the foregoing reasons, the Complaint is denied.
Reyes Campello Estebaranz
Date: February 7, 2020