Complainant is Minerva S.A. of Sao Paulo, Brazil, represented by Opice Blum, Brazil.
Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland.
The disputed domain name <milnervafoods.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2018. On September 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 2, 2018.
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 Respondent of the Complaint, and the proceedings commenced on October 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on October 30, 2018. 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.
According to the Complaint, Complainant is active in the food industry and in particular it sells and exports meat and meat derivatives. Complainant’s operations in the food sector have continued since 2004. Complainant operates also the website “www.minervafoods.com”.
Complainant holds a trademark registration for the MINERVA mark, namely the Brazilian trademark registration No. 826080120, filed on January 21, 2004, and registered on December 5, 2017, for goods in International class 29.
The Domain Name was registered on July 13, 2018, and was used for sending fraudulent emails.
As per the Complaint, Complainant became aware of the Domain Name when a third party reported that it received unrequested communication from an email address that included the Domain Name, similar to the real email address of an employee of Complainant, by someone purporting to be such employee.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant has demonstrated rights through registration and use on the MINERVA mark.
The Panel finds that the Domain Name <milnervafoods.com> is confusingly similar with the MINERVA trademark of Complainant.
The Domain Name essentially incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the letter “l” in the “minerva” portion of the Domain Name is disregarded, as it is not readily noticeable (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; Minerva S.A. v. TT Host, WIPO Case No. D2016-0384; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO Case No. D2013-0904; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382). Furthermore, such replacement is an obvious or intentional misspelling of Complainant’s trademark MINERVA which further supports the finding of confusing similarity to such trademark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).
The word “foods” which is added in the Domain Name does not avoid a finding of confusing similarity as it is a non-distinctive term (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin1 , WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
Complainant demonstrated that Respondent used the Domain Name for the purpose of initiating a fraudulent scheme, namely to send fraudulent emails to a customer of Complainant impersonating a current employee of Complainant for the only purpose of a scam. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on Respondent (L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017‑0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133; Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062; Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation” are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per the Complaint, Complainant’s MINERVA trademark is well known for food products and in particular meat and meat derivatives(Minerva S.A. v. TT Host, WIPO Case No. D2016-0384). Because the MINERVA mark had been widely used and registered at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of MINERVA mark on the Internet, namely at the website “www.minervafoods.com” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional letter “l” on the “Minerva” part of the Domain Name and the term “foods” that corresponds to the nature of Complainant’s business. The use of the word “foods” in the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry.
Lastly, it is apparent that Respondent was aware of Complainant and Complainant’s mark MINERVA when registering the Domain Name. As Complainant demonstrated, Respondent used the Domain Name, a few days after the day it was registered, to create an email address and send a fraudulent email to one of Complainant’s customers (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, supra).
As regards bad faith use, Complainant demonstrated that the Domain Name was used to create an email address similar to a real email address of an employee of Complainant and send email, impersonating a current employee of Complainant, to a third party inviting it, inter alia, to submit information. As Complainant demonstrated, Respondent has used technological tools in order to modify Complainant’s employees emails from the correct one “@minervafoods.com” to the fraudulent one “@milnervafoods.com”. The email was sent on July 16, 2018, namely a few days after the date that the Domain Name was registered. The purpose of this email was to trick its recipient into believing that they were dealing with Complainant and, thus, providing the requested information. Use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4). This pattern can be used in support of bad faith registration and use (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213; Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461; Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc. / GREYHAT SERVICES, WIPO Case No. D2016-0385; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021;Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., supra; Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484; La Française des Jeux v. MichaelE Wilkins, WIPO Case No. D2009-0898; and WIPO Overview 3.0, sections 3.3 and 3.4).
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <milnervafoods.com> be transferred to Complainant.
Marina Perraki
Sole Panelist
Date: November 13, 2018