WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc., / GREYHAT SERVICES

Case No. D2016-0385

1. The Parties

The Complainant is Minerva S.A. of São Paulo, Brazil, represented by Salusse Marangoni Advogados, Brazil.

The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama and GREYHAT SERVICES of Owerri, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <minevafoods.com> (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2016. On February 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 29, 2016, 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 March 7, 2016 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 March 7, 2016.

The Center verified that the Complaint together with the amended Complaint (both hereinafter referred to as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2016.

The Center appointed Isabel Davies as the sole panelist in this matter on April 19, 2016. 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 has been using the MINERVA trademark since 1992.

The Complainant is the owner of registered trademarks in Brazil (registration No. 901436941) and Switzerland (registration No. 628254), registered in 2013 and 2012, respectively, and owns several domain names incorporating the registered trademarks MINERVA and MINERVA FOODS including <minervafoods.com> registered on June 20, 2012 and <minervafoods.com.br> registered on June 19, 2012.

The Respondent registered the Disputed Domain Name on December 28, 2015.

5. Parties’ Contentions

A Complainant

The Disputed Domain Name is identical or confusingly similar to the trademark MINERVA, owned by the Complainant (Policy, paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant states that MINERVA S.A. was acquired in 1992 by the Vilela de Queiroz family which started commercializing the raising of cattle and related activities in 1957 in Brazil.

Currently, it states, it operates seventeen slaughtering and boning plants, eleven of which are located in Brazil, three in Paraguay, two in Uruguay and one in Colombia. The Complainant’s slaughtering capacity is of 17,330 heads of cattle per day, and boning capacity is of 20,300 heads per day, employing more than 14,000 people around the world. It is today the second largest Brazilian exporter of beef.

Additionally, the Complainant states, it has a protein processing plant (beef, pork and poultry), named Minerva Fine Foods which operates thirteen distribution centers, eleven of which are located in Brazil and two in Paraguay. In addition, the Complainant has international trading offices in Algeria, China, Chile, Colombia, United States, Italy, Iran, Lebanon and Russia.

The Complainant has won several awards including the “Chico Mendes Award” which the Complainant has been awarded four times in a row in 2014, highlighting its Sustainable Livestock Program and it is considered one of the leading companies in the industry in South America, exporting to more than 100 countries in five continents.

The Complainant states that it is the owner of trademark registrations for MINERVA in Brazil and Switzerland and has several domain names incorporating MINERVA and MINERVA FOODS including the domain names <minervafoods.com> registered on June 20, 2012 and <minervafoods.com.br> registered on June 19, 2012.

The Complainant contends that the Disputed Domain Name is confusingly similar to the MINERVA trademarks referred to above, over which the Complainant has prior rights. The Disputed Domain Name includes the Complainant’s trademark, trade name and domain name registrations for <minervafoods.com> and <minervafoods.com.br> registered prior to the Disputed Domain Name, with the omission of the letter “r”.

This, it contends, is therefore a case of typosquatting consisting of bad faith domain name registration and use due a difference in the spelling of the original trademark.

The Complainant states that, rather than there merely being a possibility of confusion, it has already been proved (by the Complainant’s customers which have been misled by the Respondent) that Internet users will identify the Disputed Domain Name with the Complainant’s trademarks and domain names, believing that the Disputed Domain Name identifies the Complainant.

Respondent lacks rights and legitimate interests in the Disputed Domain Name (Policy, paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

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

The Respondent is not entitled to any trademark, trade name or any other right in the name “Minerva”.

The Respondent has not been authorized by the Complainant to use the MINERVA trademark and there is no business relationship between the Complainant and the Respondent.

It is not included in its name, nor is it its name, surname or nickname. It is not known by this name, nor has it sought an authorization or license to use the MINERVA trademark, and does not own any trademark be it a registration or application in connection with MINERVA or any other application or registration in Brazil.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

The Disputed Domain Name was registered and used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant contends that the registration of the Disputed Domain Name was made with full knowledge of the MINERVA trademark and the Disputed Domain Name was intentionally registered with the purpose of profiting from the fame and renown of the MINERVA trademark and trade name, creating a likelihood of confusion amongst Internet users by indicating that the Disputed Domain Name belongs to the Complainant.

It states that knowledge of the Complainant’s rights may be presumed because it is a registered trademark. In addition to that and in view of the use of the Complainant’s trademark and impersonation of the Complainant perpetrated by the Respondent (who used the Complainant’s employees’ names and email addresses) there can be no doubt of the Respondent’s knowledge of the Complainant’s mark. It states that bad faith is demonstrated when the Respondent registered the Disputed Domain Name with the purpose of using it for unlawful purposes, profiting from the attempts to solicit business from third parties, creating a likelihood of confusion and taking undue advantage of the Complainant’s reputation and goodwill.

Accordingly, the Complainant submits, the Disputed Domain Name was registered in bad faith.

The Complainant states that the Respondent made use of the Disputed Domain Name by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant.

The Complainant included in its Complaint evidence that the Respondent impersonated the Complainant naming himself the “China Representative Office” of the Complainant, sending emails, purportedly signed by the Complainant’s employees, with quotations for the sale of products of the type sold by the Complainant mentioning telephone numbers and the location of the Complainant in an attempt to trap targeted customers of the Complainant in its fraudulent scheme.

The fraudulent scheme attempted to mislead the Complainant’s customers into transmitting payments to the Respondent’s bank account.

The sole difference was that the emails were being sent through the Disputed Domain Name which is same as the Complainant’s MINERVA trademark and <minervafoods.com> domain name apart from the omission of the letter “r”.

The Complainant submits that, having the Disputed Domain Name currently parked, also makes a finding of bad faith use appropriate in the light of the Respondent’s conduct.

The Complainant submits that the use of a privacy protection service, in addition to the Respondent’s fraudulent conduct in trying to mislead the Complainant’s customers, must also be considered as an indication of its bad faith and attempt to conceal its true identity.

The Complainant submits that all of these lead to the conclusion that the Disputed Domain Name was used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a response.

In the absence of a response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

A Identical or confusingly similar

The Panel accepts that the Complainant is a major international company well-known for commercializing the raising of cattle and related activities since 1957 under the MINERVA trademark.

The Panel also accepts that the Complainant is the owner of trademark registrations for MINERVA in Brazil and Switzerland and has several domain names incorporating MINERVA and MINERVA FOODS including the domain names <minervafoods.com> registered on June 20, 2012 and <minervafoods.com.br> registered on June 19, 2012.

The Panel finds that the Disputed Domain Name includes the Complainant’s trademark, trade name and domain name registrations for <minervafoods.com> and <minervafoods.com.br> registered prior to the Disputed Domain Name, with the omission of the letter “r”. This is therefore a case of typosquatting in the light of the difference in the spelling of the Disputed Domain Name compared to the Complainant’s trademarks.

The Panel accepts that the Complainant has shown evidence of its customers having been misled by the Respondent and accepts that Internet users will identify the Disputed Domain Name with the Complainant’s trademarks and domain names, believing that both registrations identify the same company.

Past decisions under the UDRP have dealt with similar circumstances, stating:

“In this Panel’s view the suppression of the letter “H” in the disputed domain name is not sufficient enough to distinguish the disputed domain name from the Complainant’s mark. Quite on the contrary, considering the possible spelling with similar pronunciations of the name Theresa, Thereza, Teresa, Teresa, etc., the disputed domain name can be considered highly similar to Complainant’s prior domain name, corporate name and trademark” (mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO Case No. D2013-0904).

The Panel finds that the Disputed Domain Name is confusingly similar to the MINERVA trademarks referred to above, over which the Complainant has prior rights.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent is not entitled to any trademark, trade name or any other right in the name “Minerva”, that the Respondent has not been authorized by the Complainant to use the MINERVA trademark and that there is no business relationship between the Complainant and the Respondent.

The Panel accepts that the term “minerva” is not included in its name, nor is it its name, surname or nickname. It is not known by this name, nor has it sought an authorization or license to use the MINERVA trademark, and does not own any trademark registration or application for or including MINERVA in Brazil.

In a previous UDRP decision it was stated that:

“According to the emails attached to the Complaint (Annexes 3 and 3 bis) the Respondent has indeed used the disputed domain name in a manner to solicit and attempt to engage in business transactions with third parties creating a likelihood of confusion with the Complainant and attempting to unduly profit from the Complainant’s reputation and goodwill. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use of the disputed domain name” (Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133).

Absent any reply from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts that the registration of the Disputed Domain Name was made with knowledge of the MINERVA trademark and the Disputed Domain Name was intentionally registered with the purpose of profiting from the renown of the MINERVA trademark and trade name, creating a likelihood of confusion amongst Internet users and indicating that the Disputed Domain Name is associated with the Complainant.

This knowledge may be presumed because MINERVA is a registered trademark. In addition, in view of the use of the Complainant’s trademark and impersonation of the Complainant carried out by the Respondent using the Complainant’s employees’ names and email addresses corresponding to the Disputed Domain Name, the Panel finds that it is inconceivable that the Respondent did not have knowledge of the Complainant’s mark.

The Panel finds that the Respondent registered the Disputed Domain Name to use it for unlawful purposes, attempting to solicit business from third parties, creating confusion and taking advantage of the Complainant’s reputation and goodwill.

The Panel finds that the Disputed Domain Name was registered in bad faith.

The Panel accepts that the Respondent made use of the Disputed Domain Name by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant. The Panel accepts that the Respondent impersonated the Complainant naming itself the “China Representative Office” of the Complainant, sending emails, purportedly signed by the Complainant’s employees, with quotations for the sale of products of the type sold by the Complainant mentioning telephone numbers and the location of the Complainant. The Panel accepts that this was a clear attempt to target the Complainant’s customers using a fraudulent scheme and that this scheme attempted to mislead the Complainant’s customers so that they transmitted payments to the Respondent’s bank account.

The Panel accepts that use of the Disputed Domain Name <minevafoods.com>, which is same as the Complainant’s MINERVA trademark and <minervafoods.com> domain name (apart from the omission of the letter “r”), constitutes use in bad faith.

It has been established previously that:

“Distilled to their essence, the cases suggest that a domain name that essentially copies or trades on another’s mark will be ordered transferred to the complaining party unless the registrant can provide a credible reason for having adopted the name. As noted by the one panel, bad faith will be found where a domain name is so obviously connected with complainant or its product that its use by anyone other than complainant suggests ‘opportunistic bad faith’” (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163); and

“In this case, the use of the disputed domain name in connection with fraudulent emails sent to third parties in an attempt to solicit and attempt to engage in business transactions mimicking the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s mark” (Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133).

The Panel accepts that the use of a privacy protection service is also an indication of bad faith attempt to conceal the Respondent’s true identity.

The Panel finds that the Disputed Domain Name was registered and is being used in bad faith.

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 <minevafoods.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: May 5, 2016