BRF S.A., f/k/a BRF - Brasil Foods S.A. v. Salvatore Demarco
Claim Number: FA1410001587763
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 is Salvatore Demarco (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brfsa-br.com>, registered with Melbourne IT Ltd.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 30, 2014; the National Arbitration Forum received payment October 30, 2014.
On November 4, 2014, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <brfsa-br.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd verified that Respondent is bound by the Melbourne IT Ltd registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@brfsa-br.com. Also on November 5, 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 December 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
Complainant, BRF S.A, f/k/a BRF - Brasil Foods S.A., has been using the BRF BRASIL FOODS and BRF marks in commerce since 2009 in connection with the sale of meats, processed foods, milk, pasta, pizza, and frozen vegetables. Complainant has valid registration with multiple trademark agencies for the acronym BRF, which stands for Brasil Foods, including registration with Peru’s National Institute for the Defense of Competition and Intellectual Property Protection (“INDECOPI”) (Reg. No. 525,597, registered Sept. 4, 2013) and the Swiss Federal Institute of Intellectual Property (“SFIIP”) (Reg. No. 643,713, registered May 21, 2013). The <brfsa-br.com> domain name is confusing similar to the BRF mark as the name incorporates Complainant’s BRF S.A. trade name, and adds “br,” the common abbreviation for Brazil, which is where Complainant is based.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as seen by the WHOIS listing “Salvatore Demarco” as registrant. Respondent has not used the disputed domain name in connection with a legitimate commercial use or a genuine noncommercial or fair use. Instead, the disputed domain name resolves to an error page stating: “page can’t be displayed.” See Compl., at Attached Ex. 5. Further, Respondent is using the e-mail string associated with the <brfsa-br.com> domain name to pass itself off as Complainant.
Respondent engaged in bad faith use and registration. Respondent is attempting to intentionally attract, for commercial gain, Internet users to Respondent’s illegitimate business by creating a likelihood of confusion with Complainant. Respondent is exploiting the e-mail accounts associated with the disputed domain name. Specifically, Respondent masqueraded as Complainant’s Global Chief Executive Officer, forging and distributing fictitious invoices and contract agreements to third parties. Given Respondent’s impersonation of Complainant’s executive, the Panel infers that Respondent had actual knowledge of Complainant and its rights in the BRF mark at the time of domain name registration.
Respondent’s Contentions:
Respondent did not submit a response.
The Panel notes that Respondent registered the disputed domain name August 12, 2014.
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
The domain name is confusingly similar to the Complainant’s protected mark.
Respondent registered and used the dispute domain name in bad faith.
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 Complainant to 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.
Given Respondent's failure to submit a 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant, BRF S.A, f/k/a BRF - Brasil Foods S.A., has been using the BRF BRASIL FOODS and BRF marks in commerce since 2009 in connection with the sale of meats, processed foods, milk, pasta, pizza, and frozen vegetables. Complainant claims rights in the BRF mark through registrations with multiple trademark agencies. The Panel notes Complainant’s registrations with Peru’s National Institute for the Defense of Competition and Intellectual Property Protection (“INDECOPI”) (Reg. No. 525,597, registered Sept. 4, 2013) and the Swiss Federal Institute of Intellectual Property (“SFIIP”) (Reg. No. 643,713, registered May 21, 2013). The Panel agrees that Complainant demonstrated Policy ¶ 4(a)(i) rights in the BRF mark through registration of the mark with several trademark authorities throughout the world. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <brfsa-br.com> domain name is confusing similar to the BRF mark. Complainant claims the domain name incorporates Complainant’s “BRF S.A.” trade name, while adding “br,” a common abbreviation for Brazil, which only heightens confusion as Complainant is based in Brazil. The Panel also notes that the disputed domain name differs from the mark by the inclusion of a hyphen and generic top-level domain (“gTLD”) “.com,” but determines that such alterations serve no distinguishing value in the confusing similarity analysis. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the additions of a hyphen between terms of a registered mark and a gTLD did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). The Panel determines that the inclusions of “sa” and “br” after the BRF mark serve to increase confusing similarity as the “sa” portion is descriptive of Complainant’s trade name and “br” relates to Complainant’s country of origin. Accordingly, the Panel finds the <brfsa-br.com> domain name confusing similar to the BRF mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant asserts that Respondent is not commonly known by the disputed domain name as seen by the WHOIS listing “Salvatore Demarco,” named as registrant. The Panel agrees that no evidentiary basis exists in the record to find that Respondent is commonly known by the <brfsa-br.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Complainant argues that Respondent has not used the disputed domain name in connection with a legitimate commercial use or a genuine noncommercial or fair use. Instead, Complainant claims the disputed domain name resolves to an error page stating: “page can’t be displayed.” See Compl., at Attached Ex. 5. The Panel finds that Respondent’s passive holding or inactive use of the disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
In addition, Complainant asserts that Respondent is using the e-mail string associated with the <brfsa-br.com> domain name to pass itself off as Complainant. Complainant explains that Respondent attempted to impersonate Complainant’s Global Chief Executive Officer, and under that guise forged and distributed fictitious invoices and contract agreements to third parties suggesting authority from Complainant. The Panel notes that Complainant included copies of e-mail communications and inquiries regarding Respondent’s ruse. See Compl., at Attached Exs. 6-9. The Panel finds that Respondent’s efforts to impersonate Complainant’s Global CEO and make false representations demonstrate a lack of Policy ¶ 4(a)(ii) rights or legitimate interests in the disputed domain name. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (finding that the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent is attempting to intentionally attract, for commercial gain, Internet users to Respondent’s illegitimate business by creating a likelihood of confusion with Complainant. The Panel recalls that the disputed domain name does not resolve to an active website, but that Respondent relies on the e-mail string related to the subject domain name to conduct, or attempt to conduct, illicit business transactions. The Panel accepts that Respondent instigated a scheme to profit from the likelihood of Internet user confusion, and agrees that such conduct supports findings of Policy ¶ 4(b)(iv) bad faith. See e.g., H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant argues that Respondent is exploiting the e-mail accounts associated with the disputed domain name; specifically, Respondent has masqueraded as Complainant’s Global Chief Executive Officer, forging and distributing fictitious invoices and contract agreements to third parties. See Compl., at Attached Exs. 6-9. Prior panels have found evidence of bad faith where the respondent engaged in fraudulent behavior under the apparent authority of Complainant and reliant on the confusingly similar e-mail string associated with the domain name. See National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014), (“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.”). See also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel agrees that Respondent’s attempt to perpetrate illicit business transactions under the guise of Complainant and the <brfsa-br.com> e-mail string is demonstrative of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Given Respondent’s impersonation of Complainant’s executive, Complainant argues that Respondent must have had actual knowledge of Complainant and its rights in the BRF mark at the time of domain name registration. Based on presentments made through the affiliated e-mail accounts, the Panel agrees that Respondent knew of Complainant at the time the disputed domain name was registered. See Compl., at Attached Ex. 6-9. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). As such, the Panel finds evidence of Policy ¶ 4(a)(iii) bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION:
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brfsa-br.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 16, 2014
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