WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bebidas Fruki S.A. v. NitroTrade LLC

Case No. D2011-0913

1. The Parties

The Complainant is Bebidas Fruki S.A. of Lajeado, Brazil, represented by Silveiro Advogados, Brazil.

The Respondents are NitroTrade LLC, Miami, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <fruki.com> and <fruki.net> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 26, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On May 26, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Parties regarding the information disclosed by Godaddy.com, inc. in its Registrar verification. On June 3, 2011, the Complainant confirmed to the Center its understanding that NitroTrade LLC is the registrant for the disputed domain names and therefore the Respondent in this case. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2011. No official Response was filed; however, two communications were received by the Center from Respondent’s email address on June 1 and 6, 2011.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on July 12, 2011. 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 Bebidas Fruki S.A., the largest regional soda industry of the State of Rio Grande do Sul, Brazil, according to said Complainant. Since October 2, 1971, the Complainant has been producing and commercializing a line of sodas named “Fruki”.

The Complainant is the owner of the following Certificates of Registration, among others:

The Respondent is a company based in the United States of America, dedicated to advertise hotel reservations and travel services, including those associated to the State of Rio Grande do Sul.

The disputed domain names were registered as follows: <fruki.com> was registered on January 21, 2002 and <fruki.net> was registered on September 21, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

1. Identical or Confusingly Similar:

That the Complainant Bebidas Fruki S.A. is the largest regional soda industry of the State of Rio Grande do Sul, Brazil.

That since October 1971, Complainant has been producing and commercializing a line of sodas named “Fruki”. The Complainant’s products are also sold in Uruguay, China, Japan and the United States of America.

That the disputed domain names <fruki.com> and <fruki.net> totally reproduce the Complainant’s well known and registered trademark FRUKI.

That since 1996 the word “Fruki” has been part of the Complainant’s legal name.

That the Complainant’s trademark FRUKI is a neologism that lacks meaning in any language.

2. Rights or Legitimate Interests:

That the Respondent has no rights or legitimate interests concerning the disputed domain names <fruki.com> and <fruki.net>.

That the Respondent is not affiliated to the Complainant, who has never licensed or permitted the Respondent to use any of its trademarks.

That the Respondent is not commonly known as “Fruki”, nor has it operated a business under the name “Fruki”, and the Respondent does not have any registration for FRUKI as a trademark.

That the administrative and technical contact of the Respondent is Mr. Meyer, a Brazilian citizen who used to live in Lajeado, Brazil, the same city where the Complainant is headquartered. That the Respondent’s contact used to be an acquaintance of the Complainant’s CEO. That the Respondent was aware of the Complainant’s trademark rights.

That the disputed domain names were being used to re-direct and promote the Respondent’s website “www.hotelstore.net”, where travel and accommodation services are offered.

That later on the Respondent changed the DNSs of the disputed domain names, connecting them to the Complainant’s official website, after receiving the Cease and Desist letter from the Complainant. That the Registrar’s WhoIs database still indicates the Respondent NitroTrade LLC as the registrant of the disputed domain names.

C. Registered and Used in Bad Faith

That the Complainant’s trademark FRUKI was registered thirty years before the registration of the disputed domain names.

That the Respondent was completely aware of the Complainant’s trademark FRUKI rights when the Respondent registered the disputed domain names in 2001.

That after receiving the Complainant’s cease and desist letter, the Respondent’s technical and administrative contact sent an email to the Complainant, where he stated that he did not have interest in the disputed domain names and that he would transfer them to the Complainant. That two days after receiving the cease and desist letter and sending the abovementioned email, the Respondent sent to the Complainant an unsolicited offer to sell the disputed domain name.

That the disputed domain names were being used in order to re-direct users to the Respondent’s website. The disputed domain names are currently directed to the Complainant’s official website, however this re-directing was made after the reception of the Complainant’s cease and desist letter.

That it is clear that the Respondent has attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark FRUKI. That the brand “Fruki” constitutes a neologism which has been coined by the Complainant in order to designate its products and has no relationship with any other product/service apart from the beverages of the Complainant.

B. Respondent

The Respondent did not file an official Response; however, the Center received two communications from the Respondent’s email address on June 1 and 6, 2011.

On June 1, 2011 the administrarive contact for the disputed domain names sent an email to the Center stating that the disputed domain names were acquired more than 10 years ago and that they are not being used to compete with the “Fruki” brand. The Respondent argued that he had no interest to fight for the disputed domain names. The Respondent stated that he was a friend of the Complainant, that he would have given him the domain names for free and that he would still be willing to do that, at that time.

On June 6, 2011, the administrarive contact for the disputed domain names sent another email to the Center, asserting that he had no interest in the disputed domain names. The Respondent alleged that he obtained the disputed domain names in securing that they would never fall in the wrong hands. The Respondent argued that third parties have attempted to buy the domain names, but that his answer always was that said domain names belong to and are reserved for the Complainant. The Respondent mentions that he has attempted to call the Complainant without success to tell him that the domain names were registered by the Respondent to avoid others to buy them and ensure the Complainant would have them anytime he requested or needed them. Accordingly, the Respondent mentioned the following “[sic.] it seems that now is the time he wants them, I hereby authorize anyone who has the access and authority to transfer the domains fruki.com and fruki.net to Bebidas Fruki S.A.”

For the purpose of this decision, the Panel will treat the two above – mentioned email communications as emanating from the Respondent itself. Said communications were signed by the administrative contact of the Respondent and sent from the Respondent’s email address, and it is therefore reasonable for the Panel to make such inference.

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

(i) the domain names in question are 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 names, and

(iii) the domain names have been registered and are being used in bad faith.

In the administrative proceeding, the Complainant must prove that each of these elements are present.

A. Identical or Confusingly Similar

The Complainant holds various registrations for the trademark FRUKI. The domain names <fruki.com> and <fruki.net> are identical to said trademark, but for the addition of the gTLDs “.com” and “.net”, which are irrelevant. The disputed domain names incorporate the trademark FRUKI in its entirety. Furthermore, the word “Fruki” does not have a meaning in any language. It is an arbitrary term which has been coined by the Complainant, which makes the trademark FRUKI highly distinctive.

The addition of the generic top-level domain “.com” and “.net” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domains (gTLDs) “.com” and “.net”, because such gTLDs have no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).

Therefore this Panel finds that the domain names are identical to the Complainant’s trademark FRUKI. The first requirement of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The following are examples of circumstances where a Respondent may have rights or legitimate interests in a 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. (Policy, paragraph 4(c)).

The Respondent, in its June 1 and June 6, 2011 emails, acknowledges that it has no rights or legitimate interests regarding the disputed domain name, and states that said domain names belong to, and are reserved for the Complainant.

The Respondent has not submitted any evidence regarding a bona fide offering of goods or services in connection to the disputed domain names. The Respondent recognizes that it is the Complainant, and not the Respondent who has been commonly known as Fruki.

The Respondent has not proven to have made a legitimate noncommercial or fair use or the domain name. The Respondent has not claimed any rights to the domain names. In the words of the Respondent, it was simply keeping the domain names so that they would never fall in the wrong hands.

Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names <fruki.com> and <fruki.net>. The second requirement of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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.”

The Respondent has recognized that he knows the Complainant and the Complainant’s trademark FRUKI well, and that it knew them before registering the domain names. The Respondent argues that it was simply “holding” the disputed domain names for the Complainant, so that they did not fall into the wrong hands. In different occasions, the Respondent has stated that it is not interested in the disputed domain names, and that it was willing to transfer said domain names to the Complainant, although this has never happened.

In the Panel’s view, it cannot be said that the Respondent held these domain names in good faith during these years. The evidence filed by the Complainant, which was not contested by the Respondent, shows that the Respondent would offer to transfer the domain names to the Complainant on one day, and two days after request from the Complainant an offer to “buy the rights” of the domain names. This shows intent to sell the domain names for profit. If not, the Respondent would have simply transferred the domain names to the Complainant when the Respondent was asked to do so.

Following Compagnie Gervais Danone, Bonafont S.A. de C.V. v. PrivacyProtect.org, WIPO Case No. D2009-1659, the Panel finds that “fruki” is not a word that exists in the Portuguese language (or any other language). It is an arbitrary term coined by the Complainant. According to the documents contained in the docket, FRUKI is recognized among its consumers. The Respondent has admitted to have known the trademark FRUKI before registering the disputed domain names, and to be conscious of the prestige of said trademark. The Respondent recognizes that the Complainant is entitled to the disputed domain names. The Complainant has asked the Respondent to transfer said domain names to the Complainant. The Respondent has not done so, and in one occasion, the Respondent has asked the Complainant to post an offer to “buy the rights” of the domain names, when at other times the Respondent has offered to transfer the domain names for out-of-pocket reimbursements, or even for free. If the Respondent really wanted to transfer the domain names to the Complainant under these terms, the Respondent would have already done so. The Respondent’s conduct to the contrary leads the Panel to presume bad faith.

Moreover, during this proceeding, the Respondent has sent an e-mail authorizing “anyone who has the access and authority to transfer the domains fruki.com and fruki.net to Bebidas Fruki S.A.”

The Complainant argues that the disputed domain names were being used to re-direct users to the Respondent’s website, as a means to divert traffic for profit. This allegation has not been proven by the Complainant, since the Complainant argues that this traffic re-directing happened before the reception of the Complainant’s Cease and Desist letter by Respondent, in April, 2011. The documents submitted by Complainant as Doc. 10 of the Complaint are printouts of the Respondent’s website that do not show any re-direction from the disputed domain names. More importantly, the printouts are from May 2011, when according to the Complainant, the Respondent had changed the re-direction of the disputed domain names to Complainant’s site. This evidence is not consistent and thus was not given any validity.

This Panel finds that the Respondent knew of the existence of the trademark FRUKI at the time of registration of the disputed domain names, and that based on the Respondent’s conduct, it can be inferred that the Respondent registered and has held said domain names in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <fruki.com> and <fruki.net> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Dated: July 26, 2011