WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JBS S.A. v. José Batista Sobrinho

Case No. D2020-3458

1. The Parties

The Complainant is JBS S.A., Brazil, represented internally.

The Respondent is José Batista Sobrinho, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <searaalimentosltda-br.com> (the “Disputed Domain Name”) is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 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 December 28, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant decided not to file an amended Complaint. However the Complainant sent an email stating it did not opposite to include the disclosed information, although this information was used fraudulently by malicious third parties as already informed on the initial Complaint.

The Center verified that the Complaint together with its further email 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 January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on February 17, 2021. 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

Founded in 1953 in Goiás, Brazil, the Complainant is a Brazilian group of companies that is one of the global leaders in the food industry and other industry segments, including leather, biodiesel, collagen, metal packaging and cleaning products. The Complainant operates internationally in over 15 countries with over 400 facilities and offices, and approximately 230,000 direct employees worldwide. One of the Complainant’s companies is Seara Alimentos Ltda, owner of the branded product “Seara”. The “Seara” products consist of prepared food, fresh meat and other food products.

The Complainant is the owner of multiple trademark registrations containing the word “Seara” alone or in combination with other design and word elements, in Brazil and internationally. For example, the Complainant owns the following trademarks, including, but not limited to: SEARA, Uruguay Trademark Registration No. 378382, in international class 29; and SEARA, Brazilian Trademark Registration No. M201200987, in international class 29 (hereinafter collectively referred to as the “SEARA Mark”). The Complainant also owns the domain name <seara.com.br>, which resolves to the Complainant’s official website at “www.seara.com.br”.

The Disputed Domain Name was created on October 22, 2019. The Disputed Domain Name initially resolved to the Complainant’s official website in an attempt to mislead customers and disrupt the Complainant’s business. In addition, the Disputed Domain Name was being used in connection with a phishing scheme. The Respondent configured the Disputed Domain Name for email functions and used the email address “[...]@searaalimentosltda-br.com”, to impersonate the Complainant and send emails to customers of the Complainant to encourage those customers to place orders so that the Respondent would receive payments for those orders. As of the writing of this decision, the Disputed Domain Name resolves to a landing page that states that it is dangerous and is highly risky to try to click and enter.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.

It is uncontroverted that the Complainant has established rights in the SEARA Mark based on its many years of use as well as its registered trademarks for the SEARA Mark in Brazil and other jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the SEARA Mark.

The Disputed Domain Name <searaalimentosltda-br.com> consists of the SEARA Mark in its entirety followed by the descriptive words “alimentos” and “ltda”, which together is the name of the Complainant’s company, joined by a hyphen to the abbreviation “br”, apparently to indicate Brazil, and then followed by the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s SEARA Mark.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.

Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its SEARA Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.

In addition, the Respondent is using the Disputed Domain Name for the purpose of trading on the Complainant’s SEARA name and Mark to deceive Internet users into thinking that they arrived at a site belonging to the Complainant. The Respondent also used the Disputed Domain Name as part of a fraudulent phishing scheme to encourage the Complainant’s customers to place orders by responding to the email address configured by the Respondent. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” See WIPO Overview 3.0, section 2.13.1.

Given the phishing scheme the Respondent operated by reconfiguring the Disputed Domain Name to impersonate the Complainant’s email address, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for commercial gain with the intent to mislead by defrauding the Complainant’s customers. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Disputed Domain Name was registered long after the Complainant first began using its SEARA Mark. The Panel finds it likely that the Respondent had the Complainant’s SEARA Mark in mind when registering the Disputed Domain Name, demonstrating bad faith.

In this case, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name. By sending fraudulent emails and impersonating the Complainant, it is evident that the Respondent had knowledge of the Complainant, its business, and its SEARA Mark when creating the Disputed Domain Name. In light of the circumstances in this case, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s SEARA Mark at the time the Disputed Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Second, by registering and using the Disputed Domain Name for commercial gain, the Respondent has exhibited bad faith. Specifically, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s fraudulent emails by creating a likelihood of confusion with the Complainant’s name and SEARA Mark as to the source, sponsorship, affiliation, or endorsement of those emails. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367 (finding paragraph 4(b)(iv) of the Policy applicable where the disputed domain name was not used in a typical website, but rather used in an email address to send scam emails). As demonstrated above, the Respondent is using the Disputed Domain Name to operate a phishing scheme aimed at defrauding the Complainant and its customers. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” See WIPO Overview 3.0, section 3.4.

Finally, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s SEARA Mark for commercial gain.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <searaalimentosltda-br.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: February 26, 2021