BRF S.A, f/k/a BRF - Brasil Foods S.A. v. Jean Douieb
Claim Number: FA1408001574617
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 Jean Douieb (“Respondent”), Paris, France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brasilfood-sa.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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2014; the National Arbitration Forum received payment on August 12, 2014.
On Aug 12, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <brasilfood-sa.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 August 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 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@brasilfood-sa.com. Also on August 13, 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 September 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, BRF S.A, f/k/a BRF - Brasil Foods S.A., has been using the BRF BRASIL FOODS mark in commerce since 2009 in connection with the sale of meats, processed foods, milk, pasta, pizza, and frozen vegetables. Complainant has a valid registration with the multiple trademark agencies for the BRF BRASIL FOODS mark. The disputed domain name is confusingly similar to the mark in which Complainant has rights.
Respondent is using the disputed domain name in attempt to pass itself off as Complainant.
Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products and services sold by Respondent. Respondent had constructive knowledge of the mark in which Complainant has rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, BRF S.A, f/k/a BRF - Brasil Foods S.A., has been using the BRF BRASIL FOODS mark in commerce since 2009 in connection with the sale of meats, processed foods, milk, pasta, pizza, and frozen vegetables. Complainant has a valid registration with the multiple trademark agencies for the BRF BRASIL FOODS mark.
Respondent, Jean Douieb, registered the disputed domain name <brasilfood-sa.com> on February 5, 2014. Respondent is using the disputed domain name in attempt to pass itself off as Complainant.
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 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.”).
Complainant has rights in the BRF BRASIL FOODS mark under Policy ¶ 4(a)(i)) through registration with multiple trademark agencies. 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)). Although Respondent resides in France, Complainant does not have to register the mark in the country where Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <brasilfood-sa.com> domain name is confusingly similar to Complainant’s BRF BRASIL FOODS mark under Policy ¶ 4(a)(i). The <brasilfood-sa.com> domain name encompasses part of the BRF BRASIL FOODS mark, with the removal of the letters “BRF” and the letter “s” in FOODS, the addition of a hyphen, the addition of the descriptive letters “sa”, the removal of the spaces in the trademark, and the addition of the generic top-level domain (“gTLD”) “.com”. These changes do not distinguish the disputed domain name from Complainant’s trademark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
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).
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information identifies “Jean Douib” as the registrant of the domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent is using the disputed domain name in attempt to pass itself off as Complainant. The disputed domain name resolves to a page that falsely represents Denison Enterprise as an association between a company called JBS AVES LTDA and Complainant. The landing page features a lengthy description of Denison Enterprise, indicating that it operates in the same field as Complainant, namely, the sale of food products. The landing page also displays Complainant’s BRF trademarked logo. The Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products and services sold by Respondent. Complainant contends that Respondent has relied on consumer confusion as to Complainant’s affiliation with the disputed domain name to forge and distribute fictitious partnership agreements to third parties. Complainant also contends that Respondent uses the disputed domain name to offer to sell counterfeit Complainant food products. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Respondent also had actual knowledge of Complainant’s BRF BRASIL FOODS mark when Respondent registered the <brasilfood-sa.com> domain name. Therefore, Respondent registered the domain name in bad faith under Policy 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brasilfood-sa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 19, 2014
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