BRF S.A, f/k/a BRF - Brasil Foods S.A. v. (Redacted)
Claim Number: FA1410001583509
Complainant is BRF S.A, f/k/a BRF - Brasil Foods S.A. (“Complainant”), represented by Gary H. Fechter of McCarter & English, LLP, New York, USA. Respondent’s personal information is redacted from this Decision.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brasinfood.com>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2014; the National Arbitration Forum received payment on October 6, 2014.
On October 7, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <brasinfood.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brasinfood.com. Also on October 8, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Brasil Foods S.A., is one of the largest global players in the food industry. Complainant holds numerous trademarks relating to the acronym BRF, which stands for Brasil Foods. For example, Complainant holds valid trademark registrations for the BRF BRASIL FOODS mark with Brazil’s National Institute of Industrial Property. See Reg. No. 830,261,427 registered Feb. 22, 2012. The <brasinfood.com> domain name is confusingly similar to the BRF BRASIL FOODS mark.
Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has no affiliation or relationship with Respondent. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial use. Respondent is using the disputed domain name to pass itself off as Complainant. The disputed domain name redirects Internet users to Complainant’s own website at <brf-global.com>, which Complainant has not authorized.
Respondent has engaged in bad faith use and registration. Respondent is using the disputed domain name to redirect users to Complainant’s own website. Respondent benefits from the e-mail accounts connected to the disputed domain name. For example, Respondent, acting with apparent authority from Complainant, has forged and distributed fictitious partnership agreements to third parties. Respondent’s attempt to pass itself off as Complainant evinces Policy ¶ 4(a)(iii) bad faith. In addition, Respondent must have had knowledge of Complainant given the circumstances.
B. Respondent
The Panel notes that Respondent has failed to submit a formal response in this case. However, the Panel has received an e-mail from the listed Respondent stating that he has no knowledge of the <brasinfood.com> domain name or Complainant. Respondent asserts that he should not be regarded as the respondent in this matter as he is the victim of identity theft/fraud.
The <brasinfood.com> domain name was registered July 21, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Redaction of Respondent’s Identity
In this proceeding, the party named in the Complaint as Respondent urges that he has no personal involvement in this case and no knowledge of the <brasinfood.com> domain name and requests that he not be involved in the proceeding as Respondent. Respondent has expressed that request on two occasions, first in response to the service of documents on him and secondly in an email to the Forum. The basis of Respondent’s request is that this past July and August he incurred several fraudulent charges on his American Express card, that two of the parties apparently involved in the fraud were also engaged in registering domain names and that, in effect, someone has registered the disputed domain name with the name of Respondent being given as the registrant without his knowledge or approval. Respondent has notified American Express of the improper and unauthorized use of his credit card, which adds to the view that Respondent was not the party who was instrumental in registering the domain name in his name. The Panel adds that having regard to the material submitted by Respondent it has no reason to doubt the truth of his statements and, in so far as the Panel is able to assess it, he has in fact been the victim of a fraud and not the perpetrator of any wrong-doing in the course of the registration of the domain name with his, Respondent’s, name as registrant. It is on that basis that the Respondent contends that this proceeding should not be pursued against him as Respondent, as he is innocent of any wrong-doing and has been the victim of identity theft. The Panel thus finds that on the evidence available to it, the Respondent has been the victim of identity theft and innocent of any suggestion that he registered or used the disputed domain name either improperly or at all. However, despite this, he is still Respondent in this proceeding as he is, within the meaning of paragraph 1 of the Rules, “the holder of a domain name registration against which a complaint is initiated.” Even if he is an innocent party, the domain name is registered in his name and he is therefore the Respondent in this proceeding.
This puts Respondent is in an invidious position in the light of this recital of the facts and a position that the Panel would like to rectify if possible. It would therefore be desirable, if it can be done and if the evidence supports such a conclusion, to sheet home responsibility to those actually, rather than nominally, to blame for the registration of the domain name and to effect a transfer of the domain name if a case is made out on the evidence on all of those matters. At the same time, it seems to the Panel to be desirable to cease the association presently on the record between Respondent and the events associated with the fraud. The Panel has concluded that those objectives can be achieved if a case is made out for redacting the name and personal information of Respondent from the decision it will make, so as to prevent the further victimization of the nominal Respondent and the continued association of Respondent with the serious allegations made in the Complaint. Fortunately, the Policy has made provision for that contingency in Policy ¶ 4(j), which provides that “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” As the names and other details of the parties are portions of the decision, it is necessary to consider whether the Panel should exercise its undoubted discretion to redact those portions of the decision that would identify the nominal Respondent. Consequently, the Panel will determine whether the circumstances of the present case, including and particularly the claim by Respondent of identity theft, warrant the redaction of his personal information from the Panel’s decision.
This issue has been the subject of at least three UDRP decisions and the approach taken by panelists on those occasions is helpful in assessing the way in which the Panel on this occasion should exercise its discretion.
In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), in similar circumstances, the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents. A similar approach was taken in Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007) where the panelist ruled as follows: “Consequently, the Panel determines that the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s information from the Panel’s decision.”
The Panel concludes that in all the circumstances it should exercise its discretion in the same way, so as to redact the personal details of Respondent and in the manner adopted in Nat’l Westminster Bank plc v. [Redacted] , supra. It will therefore be seen that part of the order made by the Panel will be to redact the personal details of the nominal Respondent.
Finally, it might also be said, as it was in Nat’l Westminster Bank plc v. [Redacted] , supra, that “Respondent’s lack of interest in keeping the registration of the disputed domain name along with her claim of identity theft qualifies as an authorization to transfer the domain name <randstadinc.net> to Complainant.”. However, the Panel found that the appropriate course to follow was not to treat the case as one of a transfer by consent but to carry out the traditional UDRP analysis and to”carry it out in respect to the actual Registrant of the domain name (hereinafter “Registrant”)”, meaning the person who perpetrated the fraud and who was responsible for the wrongful conduct complained of by Complainant, rather than the nominal or formal Respondent who remains blameless. The Panel as presently constituted will follow the same course as Nat’l Westminster Bank plc v. [Redacted], supra, in the interests of consistency, to enable the substance of the complaint to be analysed and to apply the substance and the spirit of the Policy. The Panel will therefore proceed with the traditional UDRP analysis.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant, Brasil Foods S.A., is one of the largest global players in the food industry. Complainant claims to hold numerous trademarks relating to the acronym BRF, which stands for Brasil Foods. For example, Complainant points to valid trademark registrations for the BRF BRASIL FOODS mark with Brazil’s National Institute of Industrial Property. See Reg. No. 830,261,427 registered Feb. 22, 2012. The Panel agrees that Complainant’s registration of the BRF BRASIL FOODS mark with Brazil’s National Institute of Industrial Property evinces Policy ¶ 4(a)(i) rights in the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BRF BRASIL FOODS trademark. Complainant argues the <brasinfood.com> domain name is confusingly similar to the BRF BRASIL FOODS mark. Complainant notes that the disputed domain name removes the prefix “BRF,” and substitutes a letter “n” for the “l” in BRASIL-portion of the mark, and eliminates the “s” from the FOODS-portion. Previous panels have determined that minor misspellings of a mark do not diminish the confusingly similar nature between the mark and the disputed domain name. See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”); Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Further, the Panel agrees that the elimination of the “BRF” prefix does little to distinguish the name from the mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The Panel also notes that the disputed domain name removes the spacing in the mark, and adds the generic top-level domain (“gTLD”) “.com,” but finds that such alterations are irrelevant in the confusing similarity analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel determines the <brasinfood.com> domain name is confusingly similar to the BRF BRASIL FOODS mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) the actual Registrant of the domain name has taken Complainant’s BRF BRASIL FOODS trademark and use it in its domain name, omitting the letters BRF and making only minor spelling alterations;
(b) the actual Registrant then used the disputed domain name to redirect Internet users to Complainant’s own website at <brf-global.com>, which Complainant has not authorized;
(c) the actual Registrant has engaged in these activities without the consent or approval of Complainant and as an apparently deliberate fraud;
(d) The evidence shows that Complainant has no affiliation or relationship with Respondent or Registrant. The Panel has already noted that the WHOIS information identifies Respondent as the registrant of record, but it is known that this has come about due to the identity fraud perpetrated by or on behalf of the actual Registrant. Respondent has of course not provided evidence that it is commonly known by the <brasinfood.com> domain name, as that is the opposite of Respondent’s position. Moreover, there is no evidence to show that the actual Registrant is commonly known by the disputed domain name. The Panel therefore concludes that neither of Respondent or Registrant is so known. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Accordingly, the Panel finds Policy ¶ 4(c)(ii) has been satisfied by Complainant;
(e) Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial use. It is clear from the evidence that someone, not Respondent himself, but probably Registrant, is using the disputed domain name to pass itself off as Complainant, as the disputed domain name redirects Internet users to Complainant’s own website at <brf-global.com>. See Compl., at Attached Ex. E. As Complainant has not authorized such use, Complainant maintains that the above conduct is not protected by the Policy. Prior panels agree with that view. In MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007), the panel wrote, “The Respondent’s adoption of the disputed domain name was clearly calculated to attract Internet users seeking the Complainant’s website. The Respondent was not authorized to use the Complainant’s mark in this way, and such conduct is inherently misleading. As such, it cannot give rise to a right or legitimate interest in the disputed domain name.” See also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Accordingly, the Panel agrees that the use of the <brasinfood.com> domain name by Registrant to direct users Complainant’s own website amounts to neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively and therefore does not establish a right or legitimate interest in the domain name in Respondent. Indeed, in the light of the foregoing facts, Respondent would not so contend himself. As was noted in Nat’l Westminster Bank plc v. [Redacted], FA 1028337, supra, “The lack of rights or legitimate interest of Respondent in regard to the disputed domain name applies to the Registrant for obvious reasons: Someone who dares to use a third party’s credit card without authorization cannot have any right or legitimate interest in what was bought with said fraudulent action.”
All of these matters go to make out the prima facie case against Respondent. Respondent has made his position clear and he does not seek to rebut the prima facie case against him. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Registrant attempted to attract, for commercial gain, Internet users to its illegitimate business by creating a likelihood of confusion with Complainant. Specifically, Complainant claims that the disputed domain name is used to redirect users to Complainant’s own website. See Compl., at Attached Ex. E. Prior panels have found evidence of bad faith where the domain name has been used to redirect to the complainant’s own website. See Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that respondent acted in bad faith by using the disputed domain name to redirect Internet traffic to Complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”). Accordingly, the Panel finds that the actual Registrant registered and used the domain name in bad faith by connecting the disputed domain name to Complainant’s own website without Complainant’s authorization.
Secondly, Complainant urges that Registrant’s bad faith is further demonstrated by its use of the e-mail accounts connected to the disputed domain name in an effort to forge fictitious partnership agreements to third parties under the apparent authority of Complainant. See Compl., at Attached Exs. F, H, I. Prior panels have found evidence of bad faith under Policy ¶ 4(a)(iii) where the respondent relies on the disputed domain name in furtherance of fraud or illegal activity. For example, the panel in National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014), wrote, “We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.” The Panel agrees that Respondent’s attempt to perpetrate fraud under the apparent authority of Complainant evinces Policy ¶ 4(a)(iii) bad faith.
Thirdly, Complainant argues that Registrant must have had knowledge of Complainant given the circumstances. In light of Registrant’s attempts to appear affiliated with Complainant, through both the use of Complainant’s website as the disputed landing page as well as presentments made via the connected e-mail accounts, the Panel agrees that Registrant knew of Complainant at the time the disputed domain name was registered. See Compl., at Attached Exs. E-F, H-I. Accordingly, the Panel finds additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Registrant’s registration of the disputed domain name using the BRF BRASIL FOODS mark and in view of the conduct that Registrant has engaged in when using the domain name, the domain name was registered and used in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
The Administrative Panel determines that in the exceptional circumstances of the case certain portions of the decision be redacted, namely those portions identifying the name and domicile of Respondent. Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brasinfood.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 7, 2014
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