DECISION

 

Viandes Seficlo Inc. v. Max Powell

Claim Number: FA2408002111140

PARTIES

Complainant is Viandes Seficlo Inc. ("Complainant"), represented by Philippe L. Labelle, Quebec. Respondent is Max Powell ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <viandesseficlo.com> ("Domain Name"), registered with NameSilo, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 14, 2024; Forum received payment on August 14, 2024.

 

On August 14, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <viandesseficlo.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2024 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@viandesseficlo.com. Also on August 16, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 26, 2024, Complainant filed an unsolicited additional submission in this matter with Forum, indicating that Respondent's address is a fake address. The Panel discusses that submission later in the decision.

 

On September 6, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

On September 10, 2024 the Panel issued a Panel Order under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").  This order sought additional submissions from Complainant regarding the use of and reputation in the SEFICLO mark at the time of registration.  On September 16, 2024, Complainant provided additional material including affidavits in response to the Panel Order.  Under the terms of the Panel Order Respondent had until September 26, 2024 to respond to Complainant's additional submission.  No response was received.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: ADDITIONAL SUBMISSIONS

The Panel must consider whether to accept the unsolicited additional submission filed by the Complainant on August 26, 2024.  While noting the existence of Supplemental Rule 7, the Panel retains the discretion to decide whether to accept additional submissions.  See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant).  If an additional submission simply reargues the same points, there is no reason to accept it; on the other hand, if the additional submission addresses arguments in the Response that Complainant could not have anticipated or provides information unavailable at the time the Complaint was submitted, the Panel may allow the additional submission.

 

In the present case the unsolicited additional submission filed by the Complainant on August 26, 2024 contains material that could have been filed in the Complainant and is not necessary to decide the proceeding. The Panel has exercised its discretion not to have regard to this submission. Separate to the above conclusion, the Panel will have regard to the material filed by the Complainant in response to the Panel Order.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts that since 1981, it has operated a meat processing business in Quebec. Complainant has rights in the SEFICLO mark through Complainant's common law rights acquired over 40 years of use of the SEFICLO mark.  Respondent's <viandesseficlo.com> domain name is identical or confusingly similar to the SEFICLO mark because Respondent has incorporated the entire mark and added the descriptive term "viandes" (meaning "meats" in French) and the ".com" generic top-level domain ("gTLD"). Notably the Domain Name is essentially identical to the Complainant's business name.

 

Respondent lacks rights or legitimate interests in the <viandesseficlo.com> domain name since Respondent is not licensed or authorized to use Complainant's SEFICLO mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant, through emails in furtherance of a phishing scheme.

 

Respondent registered and uses the <viandesseficlo.com> domain name in bad faith by passing off as Complainant through emails for phishing. Respondent also had actual knowledge of Complainant's rights in the SEFICLO mark as it passes off as the Complainant in its illegal phishing e-mails.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

C. Additional Submissions

Complainant's Additional Submission contains a series of affidavits from individuals based in Canada and the United States involved in the purchase of pork products setting out the Complainant's use of and reputation in the SEFICLO mark at the time of registration (the Panel notes that much of this evidence refers to "Viandes Seficlo"; however whether the mark is SEFICLO accompanied by the descriptive term VIANDES or the mark is VIANDES SEFICLO is not determinative given the nature of the Domain Name).  Specifically, the evidence indicates that the Complainant has been offering meat products under the SEFICLO or VIANDES SEFICLO mark for over 30 years and has obtained industry recognition as a quality supplier of pork products. 

 

FINDINGS

Complainant holds trademark rights for the SEFICLO mark.  The Domain Name is confusingly similar to Complainant's SEFICLO mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

As Complainant does not have any registered trademark rights (noting the application filed by the Complainant to register a trademark in Canada on August 19, 2024 is presently awaiting evaluation) it is necessary to consider whether Complainant holds common law rights in the SEFICLO mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark.  See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017).  To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning.  See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of "long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark's having acquired secondary meaning."). 

 

Complainant has operated a meat processing business under the coined SEFICLO mark since 1981 and since that time has sold pork meat products under the SEFICLO or VIANDES SEFICLO mark to a variety of customers across the United States and Canada. The evidence submitted by the Complainant indicates a reasonable level of reputation in the SEFICLO or VIANDES SEFICLO mark among significant customers in the industry. 

 

The Panel is satisfied from Complainant's evidence (including evidence of length of use and third-party recognition) that Complainant's use of the SEFICLO mark for its meat processing business is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the SEFICLO mark for the purposes of Policy ¶ 4(a)(i). In support of the above conclusion the Panel notes that section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that "The fact that a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) may support the complainant's assertion that its mark has achieved significance as a source identifier."  Such a situation has emphatically occurred in the present case where Respondent seeks to take advantage of people's familiarity with Complainant and its mark by posing as Complainant.

 

The Panel finds that the <viandesseficlo.com> domain name is confusingly similar to Complainant's SEFICLO mark as it incorporates the entire SEFICLO mark while adding the generic or descriptive term "viandes" and the ".com" gTLD.  Domain names which incorporate an entire mark are usually considered confusingly similar, while adding generic words, a letter and a gTLD is generally insufficient to create a distinction between a complainant's mark and a disputed domain name under Policy ¶ 4(a)(i).  See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."); see also Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional "s"); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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 holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the SEFICLO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Max Powell" as registrant of record.   Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name appears to resolve to a website falsely purporting to be an official website of the Complainant, including reproducing its business address. Complainant alleges, and provides evidence supporting its allegations, that Respondent uses an email address associated with Domain Name to attempt to pass itself off as Complainant in furtherance of a phishing scam (requesting payment of false invoices for goods not supplied). Use of a disputed domain name to pass off as a complainant through emails is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent's attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum March 7, 2018) ("Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).");

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds that, at the time Respondent registered the Domain Name, August 4, 2023, Respondent had actual knowledge of Complainant's SEFICLO mark. The Respondent uses the Domain Name to pass itself off as Complainant for financial gain or to disrupt Complainant's business. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses an email address associated with the Domain Name to attempt to pass itself off as an employee of Complainant's business to disrupt the Complainant's business or for financial gain. Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b) (iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the <abbuie.com> domain name to impersonate Complainant's CEO. Such use is undeniably disruptive to Complainant's business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)"); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

The Panel finds Complainant has satisfied 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 <viandesseficlo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: September 27, 2024