WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frigorifico Canelones S.A. v. Frigorifi Cocanelones
Case No. D2020-1122
1. The Parties
The Complainant is Frigorifico Canelones S.A., Uruguay, represented by Opice Blum, Brazil.
The Respondent is Frigorifi Cocanelones, Uruguay.
2. The Domain Name and Registrar
The disputed domain name <frigorificocanelones.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 2020, 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 May 14, 2020 in which it informed the Complainant that the registrant of record for the Disputed Domain Name is not the person/entity specified in the Complaint as the Respondent, and inviting the Complainant to cure this deficiency. The Complainant filed an amended Complaint on May 18, 2020.
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 May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2020.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 15, 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.
4. Factual Background
The Complainant is the owner of the trademark FRIGORIFICO CANELONES before the Uruguayan Patent and trademark Office (“UPTO”), Registration No. 406622 registered on December 12, 2009. The Complainant uses the trademark FRIGORIFICO CANELONES for food selling, specifically bovine meat and derivatives.
Moreover, the Complainant corporate name contains the FRIGORIFICO CANELONES trademark.
The Respondent registered the Disputed Domain Name <frigorificocanelones.com> on September 10, 2019. The Disputed Domain Name is currently inactive. However, the Complainant submitted evidence that the Disputed Domain Name resolved to a pay per click website. In addition, the Complainant states that the Respondent has sent emails using the Disputed Domain Name to the Complainant’s consumers, on behalf of someone, pretending to be the Complainant’s employee.
5. Parties’ Contentions
The Complainant contentions can be summarized as follows:
Identical or confusingly similar
The Complainant contends that the Dispute Domain Name is clearly identical to the Complainant FRIGORIFICO CANELONES trademark. Thus, it may confuse third parties, including the Complainant’s consumers.
The Complainant further states, that the Disputed Domain Name contains the Complainant area of practice, which is a clear reference to the Complainant’s trademark and practice.
Rights or legitimate interest
The Complainant contends that it has not licensed, permitted or authorized the Respondent to use its FRIGORIFICO CANELONES trademark or corporate name.
The Complainant further states that there is not a bona fide offering of goods and services. In addition, the Disputed Domain Name is being used in connection to fraudulent activity by sending unrequested communications to Internet users. This clearly demonstrates that the Respondent has no rights or legitimate interests in respect of the Disputes Domain Name.
Registration and use in bad faith
The Complainant contends that it has operated in the food sector since 1990, with the first trademark application before de UPTO in 1989. The Respondent registered the Disputed Domain Name on September 10, 2019, 10 years after the Complainant latest application for the trademark registration in Uruguay.
The Complainant states that as its trademark and corporate name are well known at least since 2009, it is possible to notice that the Respondent registered the Disputed Domain Name knowing the Complainant’s operation and trademarks.
In addition, the Complainant alleges the Respondent uses the Disputed Domain Name in bad faith, taking into account the fraudulent emails sent by the Respondent to the Complainant’s consumers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <frigorificocanelones.com> is identical to the Complainant’s trademark FRIGORIFICO CANELONES. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, there is no evidence that the Respondent is commonly known by the Disputed Domain Name. The fact that the Respondent is identified as “Frigorifi Cocanelones” in the WhoIs information does not suffice as proof of being commonly known by this name; respondents are expected to produce concrete credible evidence to support such claims. See section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name.
Moreover, the Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
In addition, the Panel notes that the nature of the Disputed Domain Name carries a high risk of implied affiliation with the Complainant’s trademark.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Panel believes that the Respondent was well aware of the Complainant’s prior rights and business, since the Disputed Domain Name was created on September 10, 2019, 10 years after the Complainant registered its trademarks in 2009. Thus, it is very likely that the Respondent was aware of the Complainant’s trademark and business when it acquired the Disputed Domain Name. In addition, the Complainant is located in Uruguay as well as the Respondent.
The Respondent has not denied these assertions because of its default. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights when registering the Disputed Domain Name.
In addition, the fact that the Respondent sent emails to the Complainant’s consumers with unrequested communications and fake invoices, clearly demonstrates use in bad faith.
Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the case at hand, in view of the Respondent’s registration of a domain name identical to the Complainant’s trademark (wholly incorporating the trademark into the Disputed Domain Name), used for fraudulent email scheme, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, constitutes bad faith. The fact that the Respondent is identified as “Frigorifi Cocanelones” in the WhoIs information is further evidence of the Respondent’s intention to pass itself off as the Complainant and thus constitutes bad faith.
Due to this conduct, it is obvious that the Respondent intentionally created likelihood confusion with the Complainant’s trademark, corporate name, and websites in order to attract Internet users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name.
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 <frigorificocanelones.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: July 29, 2020