WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Minerva S.A. v. Whoisguard, Inc., Whoisguard Protected / Arthur Lewis

Case No. D2018-2009

1. The Parties

The Complainant is Minerva S.A. of Barretos, São Paulo, Brazil, represented by Opice Blum, Brazil.

The Respondent is Whoisguard, Inc., Whoisguard Protected of Panama / Arthur Lewis of Atlanta, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <minervafoods-br.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On September 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2018, 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 September 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication to the Complainant on September 7, 2018 requesting a clarification of the Complaint. The Complainant filed an amended Complaint on September 10, 2018.

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 September 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2018.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 12, 2018. 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 a Brazilian company, in the business of industrializing meat and meat derivatives.

The Complainant is the holder of the following trademark registration:

The disputed domain name <minervafoods-br.com> was registered on July 22, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

That MINERVA is a well-known trademark since 2004 in the food industry, specifically in relation to meat and meat derivatives.

That the disputed domain name <minervafoods-br.com> comprises the trademark MINERVA, which has been duly registered before the Brazilian Patent and Trademark Office, as well as the corporate name “Minerva Foods”.

That its corporate name is protected under Article 8 of the Paris Convention for the Protection of Industrial Property, even if it is not registered as a trademark.

That the addition of a descriptive word such as “food” does nothing to eliminate the likelihood of confusion between the disputed domain name and the Complainant's mark, and that it exacerbates the risk of confusion, considering that said term refers to the Complainant’s activity.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name

That the Complainant has not authorized the Respondent to use the trademark MINERVA, or the corporate name “Minerva Foods”,

That the Complainant has not found any evidence showing that the Respondent has any rights to, or legitimate interests in the disputed domain name.

(iii) The disputed domain name has been registered and is being used in bad faith

That the Respondent was necessarily aware of the existence of the Complainant and its trademark MINERVA at the time when the disputed domain name was registered, because the Complainant holds a trademark registration for MINERVA, and because said trademark has become well-known in the food industry in which the Complainant specializes.

That the disputed domain name has been used to commit fraud. The Complainant submitted a printout of an email sent from an address incorporating the disputed domain name <minervafoods-br.com>, to an actual employee of the Complainant, stating the following:

“How are you doing today ? I’m currently held up in a meeting and there’s an urgent transaction requested by our CEO to be executed today. Let me know if you are available to process payments today so i can forward the details to you ASAP.
Thanks”

B. Respondent

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

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) The disputed domain name has been registered and used in bad faith

In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see Boris Johnson v. Belize Domain WhoIs Service Lt, WIPO Case No. D2010-1954).

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s trademark MINERVA because it incorporates said trademark in its entirety.

The addition of the term “foods-br” to the disputed domain name does not prevent a finding of confusing similarity.

The addition of the generic Top-Level Domain “.com” is immaterial for the purpose of assessing confusing similarity (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

The first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The disputed domain name clearly targets the Complainant and its business.

There is no evidence contained in the case file showing that the Respondent has been commonly known as <minervafoods-br.com>.

The association of the disputed domain name with the dispatch of fraudulent emails cannot be considered to constitute a bona fide use, or a legitimate noncommercial, or fair use of said disputed domain name. The disputed domain name impersonates the Complainant, with the intent to mislead the recipients of the abovementioned emails, for commercial gain.

The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has 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) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The incorporation of the terms “foods-br” in the disputed domain name directly and specifically targets the Complainant, which operates its business in the food industry, namely in connection to the commercialization of meat and meat derivatives in Brazil (see Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755; Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477; and Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203).

Internet users (and in this case, even the employees of the Complainant) may be led to believe that the source of the disputed domain name is the Complainant (see Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203).

The fact that the Respondent chose to register a domain name that not only incorporates the trademark MINERVA of the Complainant in its entirety, but that also refers to the industry and country in which the Complainant conducts its business, shows that said disputed domain name was registered in bad faith.

According to the evidence submitted by the Complainant, which has not been rebutted by the Respondent, the disputed domain name has been used as an email address from which a message was sent by somebody who impersonated an employee of the Complainant, requesting an actual employee of the Complainant to make an urgent payment, allegedly ordered by the CEO of the Complainant’s company, to an account that would be supplied by the impersonator.

Impersonation constitutes bad faith use under the Policy (see SVB Financial Group v. WhoisGuard Protected, WhoisGuard, Inc. / Citizen Global Cargo, WIPO Case No. D2018-0398; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285).

The third element of the Policy has been met.

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

Kiyoshi Tsuru
Sole Panelist
Date: October 29, 2018