WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agrosuper S.A. v. C/O Register.com, Inc / Randy Ocala, WhoisGuard Protected, WhoisGuard, Inc. / Emmanuel Kang / 1&1 IONOS SE / Johan Garcia
Case No. D2019-2795
1. The Parties
The Complainant is Agrosuper S.A., Chile, represented by Alessandri & Compañia Abogados, Chile.
The Respondents are C/O Register.com, Inc., Panama / Randy Ocala, Denmark / WhoisGuard Protected, WhoisGuard, Inc., Panama / Emmanuel Kang, Cameroon / 1&1 IONOS SE / Johan Garcia, Chile.
2. The Domain Names and Registrars
The disputed domain names <pdel-sur-limitada.com> (“the first disputed domain name”), <pdellsurlimitada.com> (“the second disputed domain name”), and <pdelsurlimitada.com> (“the third disputed domain name”) are registered with NameCheap, Inc., Register.com, and 1&1 IONOS SE (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 14, 2019, the Center transmitted by email to each of the Registrars a request for registrar verification in connection with the first and second disputed domain names. On November 14, 2019, the Registrars transmitted by email to the Center their verification responses 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 Complainant on November 25, 2019 providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 26, 2019.
The Center sent an email communication to the parties on November 25, 2019 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreements for the disputed domain names is English. The Complainant submitted a request for Spanish to be the language of the proceeding on November 26, 2019. The Respondent did not submit any communication regarding the language of the proceeding.
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 December 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 8, 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.
The Panel noted that the second disputed domain name <pdellsurlimitada.com> redirects to the domain name <pdelsurlimitada.com>. In view of this circumstance, the Panel issued a Panel Order on January 23, 2020, inviting the Parties to provide any relevant information with reference to this circumstance not later than January 27, 2020. On January 23 and 24, 2020, the Complainant forwarded various communications to the Center requesting the addition of the third disputed domain name to the proceeding. The Panel instructed the Center to obtain a registrar’s verification for the third disputed domain name. On January 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that the registrant of the third disputed domain name is Johan Garcia and providing the contact details. On January 30, 2020, the Panel issued a Panel Order notifying the Parties the contact details of the registrant of the third disputed domain name and granting the Parties six calendar days to submit their arguments regarding the addition of the third disputed domain name, the due date for the arguments being February 4, 2020. On January 30, 2020, the Complainant forwarded a communication to the Center providing arguments regarding the common control of the disputed domain names and the third disputed domain name. The Respondent did not submit any Response.
The Complaint has been filed against C/O Register.com, Inc., Randy Ocala, WhoisGuard Protected, WhoisGuard, Inc. Emmanuel Kang, 1&1 IONOS SE, and Johan Garcia. The Panel will indistinctively refer all of them as the Respondent in the below decision.
4. Factual Background
The Complainant is the head of a Chilean group of companies, founded in 1955, which operates internationally with offices in various countries (Italy, United States, Japan, Mexico, China, and Brazil) and more than 14,000 employees. The Complainant’s group operates in the food industry, particularly in the production, distribution and commercialization of fresh and frozen pork, poultry (chicken and turkey), salmon, and processed products (jerky), under various trademarks that identify its products and services, as well as its factories and subsidiaries, among others, the trademarks AGROSUPER, SUPER CERDO and PROCESADORA DE ALIMENTOS DEL SUR LIMITADA.
The Complainant holds trademark rights in the mark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA in Chile, namely, Chilean Trademark No. 1248018 PROCESADORA DE ALIMENTOS DEL SUR LIMITADA, word, applied for on September 10, 2015 and registered on May 24, 2017, for services in class 40.
The Complainant’s group further owns various domain names, among others, <agrosuper.cl> (registered by Agricola Super Limitada, on April 24, 1998) and <supercerdo.cl> (registered by Agropecuaria e Inversiones Limitada, on August 23, 2005), which are linked to the Complainant’s corporate websites in connection with its products and services.
The first disputed domain name <pdel-sur-limitada.com> was registered on January 7, 2017, and the second disputed domain name <pdellsurlimitada.com> was registered on April 7, 2017. Each disputed domain name is linked to a website, in English language, including in its heading, at the top before the content of the site, the words “procesadora de alimentos del sur limitada”, all in capital letters, and a logo representing a pig face. Both websites’ “about” or “about us” sections, as well as their copyrights, indicate these sites belong to the company “Procesadora de Alimentos del sur Limitada”, indicating it is a family owned and operated company, which is one of the leading companies of fresh pork meat in Chile and exports internationally. The copyright of the site linked to the first disputed domain name is dated 2014, and the copyright of the site linked to the second disputed domain name is, as submitted in the annexes to the Complaint, dated 2017. Each websites’ contact sections provide the name of a contact person (the head of the sales department and the export manager, respectively), a contact form, and different telephones, faxes, emails and addresses. The addresses provided by both sites are very close in the same street (Camino Quinta Tilcoco) in Rengo, Chile. At the time of this decision, the second disputed domain name (<pdellsurlimitada.com>) redirects to the third disputed domain name <pdelsurlimitada.com>, which was registered on January 15, 2020 (after the notification of the Complaint) and it resolves to a website with almost the same content that the one at the second disputed domain name at the time of submission of the Complaint.
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
The Complainant’s group started its business in Lo Miranda, and, nowadays, the Complainant’s Lo Miranda food plant operates in Rancagua, a town in the O’Higgins area, to the South of Chile. The trademark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA identifies one of the Complainant’s slaughter factories, located in San Vicente, in the south of Chile.
The disputed domain names are confusingly similar to the trademark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA. The disputed domain names incorporate most of the Complainant’s trademark without any additional element able to avoid the confusing similarity, sharing the same global physiognomy and phonetic cadence and being the Complainant’s mark recognizable in the disputed domain names. The mark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA was coined by the Complainant, being highly distinctive, and the use of the disputed domain names, linked to websites related to the Complainant’s same industry, contributes to the likelihood of confusion and association.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no license or authorization to use the Complainant’s trademark, not having any relationship with the Complainant. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the terms corresponding to the disputed domain names (“p del sur limitada”, with or without hyphens, or “p dell sur limitada”) or by the terms “procesadora de alimentos del sur limitada”, not having any trademark rights in these terms. Further, the Respondent uses the disputed domain names in connection to websites in the same Complainant’s business, leading Internet users to confusion for a commercial gain.
The Respondent has registered and is using the disputed domain names in bad faith. The disputed domain names resolved to websites that evoke and use the Complainant’s trademark as their indication of origin in the same Complainants’ business. The websites linked to the disputed domain names include the Complainant’s trademark and refer to identical business as the Complainant’s corporate sites (“supercerdo.cl” and “agrosuper.cl”). These circumstances evidence the disputed domain names were registered and are being used targeting the Complainant’s trademark with the intention to attract Internet users for commercial gain by creating a likelihood of confusion and damaging the reputation of the Complainant and its trademark, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position.
The Complainant requests the transfer of the disputed domain names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) WIPO Overview 3.0.
A. Language of the Proceeding
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.
The Complaint was submitted in Spanish, requesting Spanish to be the language of the proceeding, noting that the websites linked to the disputed domain names provide contact information in Chile. However, the Panel notes the Respondent has not answered and the language of the registration agreements for all three disputed domain names is English. The Panel further notes the Respondent is located, according to the Registrars verifications for the disputed domain names <pdel-sur-limitada.com> and <pdellsurlimitada.com>, in non-Spanish speaking countries (Denmark and Cameroon), and the websites linked to the disputed domain names are in English language.
Due to these circumstances, the Panel considers more appropriate for English to be the language of the proceeding and to render this decision in English, albeit the Panel has chosen not to request any translation of the Complainant’s submissions, in order to ensure this proceeding takes place with due expedition.
B. Consolidation of the Proceeding against Multiple Respondents
The Complaint has been filed against multiple registrants and has been requested the consolidation of the proceeding against all of them.
The circumstances of this case lead to consider the three disputed domain names and/or their corresponding websites are subject to common control. Particularly, the disputed domain names’ common naming patterns, both using almost identical terms (with or without hyphens), and the common content of the websites corresponding to the disputed domain names, displaying the same name, purportedly of a company (Procesadora de Alimentos del Sur Limitada) which also corresponds to the Complainant’s trademark and located in almost identical addresses (in the same street and town). Further, the second disputed domain name <pdellsurlimitada.com> redirects to the third disputed domain name and both are linked to websites sharing almost the same content.
The Panel, under its general powers articulated in paragraphs 10 of the Policy, considers the consolidation fair and equitable to the Parties, justified by the procedural efficiency as well as in order to avoid additional unnecessary costs to the Complainant.
C. Addition of a Domain Name to the Proceeding
The Panel’s decision to accept the addition of the third disputed domain name to this proceeding is based on consideration of the following:
- The addition of domain names after the filing of a Complaint has been allowed in the past in other UDRP proceedings, see section 4.12.2, WIPO Overview 3.0;
- Paragraphs 10(a), 10(b), and 10(e) of the Rules, titled “General Powers of the Panel” explicitly provide the following:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”;
- In the proceeding at issue, the factual background is very similar being all three disputed domain names under a common control as discussed above. The disputed domain names are linked to similar websites under the control of the same individual or company and the second and third disputed domain names are connected to websites with almost the same content. Further, all three disputed domain names are very similar, following the same pattern with almost identical terms (“p del sur limitada” or “p dell sur limitada”). The disputed domain names only differ in the use or not of hyphens to separate their terms, and the inclusion of a double letter “l” in the term “del” (“dell” instead of “del”) in the second disputed domain name;
- The second disputed domain name redirects to the third disputed domain name, which evidences their common control and purpose; and
- It is expedient to hear and determine the Complaint regarding the three disputed domain names together in order to avoid the potentially varying decisions resulting from separate proceedings and to incur in supplemental unnecessary costs for the Complainant.
D. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7, WIPO Overview 3.0.
Further, the generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements.
In the present case it is relevant to indicate that the fact that a disputed domain name was registered before the Complainant acquired trademark rights does not preclude the Panel’s finding of identity or confusing similarity under the first element, although only in exceptional cases would the Complainant be able to prove the Respondent’s bad faith. See section 1.1.3, WIPO Overview 3.0.
The Complainant has rights in the registered trademark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA. The disputed domain names incorporate the first letter “p” of the first word of this mark (“procesadora”), and the words “del” or “dell”, “sur” and “limitada” (with or without separation by hyphens), not adding any further element. The main elements of the Complainant’s trademark are recognizable in the disputed domain names, being the terms included in the disputed domain names an abbreviation of the Complainant’s mark, and the gTLD “.com” adds no distinctive meaning, being a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. The Panel further notes that the trademark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA had been displayed in the website at the disputed domain names, which confirms the confusing similarity, as it appears prima facie that the respondent seeks to target the Complainant’s trademark through the disputed domain names (see section 1.15, WIPO Overview 3.0). Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
E. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged the Respondent has no license or authorization to use the Complainant’s trademark and is not commonly known by the disputed domain names not having any trademark rights on the terms “p del sur limitada”, “p dell sur limitada” or “procesadora de alimentos del sur limitada”. This effectively shifts the burden to the Respondent of producing rights or legitimate interests in the disputed domain names. However, the Respondent has not replied to the Complainant’s contentions.
The Panel may draw inferences from the absence of Response, but will weigh all available evidence irrespective of whether a Response was filed. See section 2.1., WIPO Overview 3.0.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
“(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.”
The Panel has verified the disputed domain names are linked to websites offering online selling of meat products, indicating in their contact details very similar addresses (located in the same street and town) and the same company (Procesadora de Alimentos del Sur Limitada) as their common owner. Further, the websites linked to the disputed domain names do not contain any reference to the Respondent and/or to the Respondent’s lack of relationship with the Complainant and/or its group.
The terms included in the disputed domain names “del sur limitada” are Spanish words included in the dictionary equivalent to “from the south limited”. However, this circumstance do not by itself confer rights or legitimate interests on the Respondent in respect to the disputed domain names, unless the disputed domain names are been genuinely used or demonstrably intended for use in connection with its dictionary meaning and not to trade off the Complainant’s trademark rights. See section 2.10, WIPO Overview 3.0.
The Respondent’s websites include the complete Complainant’s trademark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA in capital letters in the sites’ heading, as indication of their origin, and refer to the company “Procesadora de Alimentos del Sur Limitada” as the owner of the business and the sites. Further, the websites target the Complainant’s trademark in the same business. These circumstances lead the Panel to consider that the fact that the terms “del sur limitada” are included in the dictionary is not sufficient to confer rights or legitimate interests on the Respondent.
It is further to be noted that the disputed domain names were registered before the Complainant’s trademark registration, but after the Complainant started using this mark and applied for its registration. The Panel, in use of the general powers articulated in the Policy, has consulted the Complainant’s corporate website (under <agrosuper.cl>), and has corroborated through various searches over the Internet that the use of the Complainant’s trademark started years before the registration of the disputed domain names.
The Panel further considers noteworthy the Respondent chose not to reply to the Complaint and to the Panel Orders regarding the additional disputed domain name, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and, there is not sufficient evidence in the file to consider that the Respondent has rights or legitimate interests in the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
F. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name “has been registered and is being used in bad faith.”
At the time of registration of the disputed domain names, this Panel considers unlikely that the Respondent did not know about the Complainant and its use of the mark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA, and did not have it in mind. Several factors in this case lead to this conclusion.
Particularly, the Panel notes the presence of the trademark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA over the Internet, as well as its use and promotion in Chile, where the Respondent’s business is located according to the information provided in the websites linked to the disputed domain names. The disputed domain names were registered only months before the Complainant obtained the registration of its trademark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA (on May 24, 2017), and more than two years after the Complainant applied for the registration of this mark (on September 10, 2015). The Complainant started using this mark to identify one of its factories and subsidiaries years before the time of the registration of the disputed domain names. The Panel, in use of the general powers articulated in the Policy, has consulted the Complainant’s corporate website under <agrosuper.cl> and has corroborated its information through various searches over the Internet, with results including several references to the use of PROCESADORA DE ALIMENTOS DEL SUR LIMITADA by the Complainant.
Further, the websites at the disputed domain names refer to the same business as the Complainant, being competitors in the same industry, and both are purportedly located in the same area (in the south of Chile). These circumstances contribute to the likelihood of confusion or implied affiliation, and increases the probability the Respondent knew about the existence of the Complainant’s mark at the time of the registration of the disputed domain names. The disputed domain names are used in connection to websites that refer and allegedly commercialize meat products (the Complainant’s same products), and indicate addresses in the same area where the Complainant’s factory identified by the mark PROCESADORA DE ALIMENTOS DEL SUR LIMITADA operates, which increases the intrinsic risk of confusion and association. Furthermore, said websites do not include any clear reference to their ownership or that of the disputed domain names, not indicating any reference to the Respondent and/or to the Respondent’s lack of relationship with the Complainant and/or its group.
The Panel further notes that the contact details of the WhoIs were private and the Respondent’s attitude choosing not to reply to the Complaint are further evidence of bad faith.
It is further noteworthy that the additional disputed domain name was registered after the notification of the Complaint, being almost identical to the other disputed domain names and being linked to the same website as the second disputed domain name <pdellsurlimitada.com>, which now redirects to the third disputed domain name. These circumstances evidence the intention to elude the decision in this proceeding and the bad faith of the Respondent.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names 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 web site 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 web site or location or of a product or service on your web site or location.”
Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain names were registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business, as per paragraph 4(b)(iv) of the Policy.
All the above-mentioned lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element of the Policy.
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 names, <pdel-sur-limitada.com>, <pdellsurlimitada.com>, and <pdelsurlimitada.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: February 7, 2020
