WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Empresas Carozzi S.A. v. Perfect Privacy, LLC / Carolina Macedo

Case No. D2017-1549

1. The Parties

The Complainant is Empresas Carozzi S.A. of Las Condes, Chile, represented by Dellafiori Abogados, Chile.

The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, the United States of America / Carolina Macedo, Sao Paulo, Brazil, self-represented.

2. The Domain Name and Registrar

The disputed domain name <crueldadencarozzi.com> is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the "Center") on August 9, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 16, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 19, 2017.

The Center sent an email communication to the Parties on August 16, 2017 regarding the language of the proceedings, as the Complaint had been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a translation of the Complaint into English on August 19, 2017, and also requested Spanish to be the language of the proceedings. The Respondent submitted a request for English to be the language of the proceedings on August 21, 2017.

The Center verified that the Complaint together with the amendment to the Complaint and the amended Complaint (hereinafter referred altogether as the "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 the Respondent of the Complaint, and the proceedings commenced on August 23, 2017. In accordance with the Rules, paragraph 5, the due date for submitting the Response was September 12, 2017. The Response was filed with the Center on September 12, 2017 and the Respondent requested within the Response an extension of the Response due date to October 12, 2017. The Center granted a four-day-extension according to paragraph 5(b) of the Rules and informed the Parties the new deadline for a Response was September 23, 2017. The Respondent did not submit any further Response.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 9, 2017. 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.

4. Factual Background

The Complainant is a Chilean company, whose main activity is the production and distribution of food products such as chocolates, pasta, sauces, sodas, desserts, and fruit pulps.

The Complainant holds, among others, the following trademark registrations:

The disputed domain name, <crueldadencarozzi.com>, was registered by the Respondent on July 13, 2017.

The Respondent's website is associated with a movement that stands against the inhumane treatment of caged birds. The Respondent's website displays the statements "LA CRUELDAD DE LAS GALLINAS EN CAROZZI [stylized]" ("The cruelty to chicken in CAROZZI") and "¡FIRMA LA PETICIÓN!" ("Sign the petition!") in a prominent manner, alongside images of caged birds. The website contains a list of recommendations like signing a petition, protesting against the mistreatment of birds, spreading the message contained in the website, and suggesting new courses of action.

5. Parties' Contentions

A. Complainant

The Complainant argues the following:

I. Identical or Confusingly Similar

That it owns the domain name <carozzi.cl>, and is the owner of several other domain names.

That it has used the trademark CAROZZI for many years.

That the disputed domain name incorporates a well-known, famous and notorious brand, and that therefore the extra words added to the disputed domain name are insufficient to overcome the confusing similarity between the disputed domain name and the Complainant's trademarks.

That the incorporation of the words "crueldad en" (which translate into "cruelty in") into the disputed domain name results in a pejorative term. That this accusation is false and ignominious, and that it affects the image of the Complainant.

That the confusing similarity between the Complainant's brands and the disputed domain name is increased by the presence of the trademark CAROZZI on the website to which the disputed domain name resolves.

II. Rights or Legitimate Interests

That the Respondent does not have the right to be the owner of the disputed domain name, because the Respondent has not been authorized to use the Complainant's trademark CAROZZI.

That the use of the disputed domain name discredits the trademark CAROZZI because the Respondent has not supported the accusations being made on the website to which the disputed domain name resolves.

That, to express a certain idea or case, freedom of expression does not need to be carried out by means of a domain name that is confusingly similar to the trademark of a third party.

That even though freedom of expression allows for the exercise of criticism, it does not give a person the right to express demeaning ideas, much less without an authorization to use the trademark of a third party. The Complainant argues that such conduct is carried out in abuse of the right of freedom of expression (the Complainant cites British Nuclear Fuels plc v. Greenpeace International, WIPO Case No. D2001-1318 to support its allegations).

III. Registered and Used in Bad Faith

That the disputed domain name was registered as a protest against a supposed mistreatment towards animals.

That on July 14, 2017, the Respondent sent the Complainant a threat through an email communication.

That the Respondent threatened the Complainant to force it to take certain measures before August 1, 2017. That the Respondent warned the Complainant that she would launch a media campaign to collect signatures for the Respondent's cause.

That the Respondent has displayed similar campaigns against various companies such as Unilever, Bimbo, Barilla, McDonald's, and Alsea.

That by incorporating the trademark CAROZZI in the disputed domain name and on the website to which it resolves, the Respondent is seeking to disturb the activity of the Complainant, and to defame it on the press.

That if the Respondent had simply wanted to criticize the Complainant, it could have registered a domain name that was not identical or similar to the trademark CAROZZI.

That the registration and subsequent use of a domain name that is coincidental to the trademark of a complainant, with the purpose of damaging the complainant's image, has been considered by different experts as an act of bad faith (the Complainant cites Sociedad General de Aguas Barcelona, SA v. Luis Toribio Troyano, WIPO Case No. D2003-0438 and The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/ A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166).

That the use of a domain name with the intention of damaging the image of a third party, proves bad faith on the side of the Respondent.

That the choice of registering the disputed domain name was not a simple coincidence. The Complainant asserts that the Respondent was fully aware of the Complainant at the time of registration of said disputed domain name, and that her intention was to disturb the Complainant's activities.

B. Respondent

In her Response, the Respondent states the following:

I. Identical or Confusingly Similar

That the Complainant has no rights over the name "crueldadencarozzi", which is different to the trademark CAROZZI.

That the Respondent has no intention to create any sort of confusion amongst visitors.

That the website to which the disputed domain name resolves clearly states that said website belongs to Forum Animal and that the purpose of said site is to inform the public about an animal welfare campaign directed at the Complainant.

II. Rights or Legitimate Interests

That the content of the website to which the disputed domain name resolves (and domain name itself) focuses on helping animals by asking the Complainant to implement an animal welfare policy in its supply chain.

That by naming the campaign's website "crueldadencarozzi", the term "crueldad" (translated into English as "cruelty") was incorporated to illustrate the cruel conditions to which animals are subject in Chile, where the Complainant uses the eggs needed for food products.

That the Respondent, other leading animal protection non-governmental organizations andanimal welfareexpertsagree that confining animals in cages (where animals can barely move and cannot perform any of its natural behaviors) are acts of cruelty against animals.

That trying to stop the Respondent from using the term "crueldad" (cruelty) to describe the above-referred practice, would violate her right of freedom of expression.

That nowadays there is virtually no production of eggs without the use of cages in Chile.

That the disputed domain name, the website to which it resolves, and its contents, seek to request the Complainant, a large food manufacturer in Chile that uses eggs in its products, to implement an animal welfare policy to prevent animal cruelty and assure that only cage-free eggs are used in its products (in order to improve the well-being of animals).

That there is no intention to affect the Complainant's brands. That the sole purpose of the disputed domain name and the website to which it resolves is to create a better society, with better informed consumers and more responsible supply chains, in which all animals are treated with respect.

That contrary to the Complainant's assertions, its sustainability report submitted as evidence in this proceeding does not make any specific mention to animal welfare in the production of eggs involved in its supply chain.

That Forum Animal, the organization to which the Respondent belongs, cannot be considered as a commercial competitor of the Complainant.

That the website to which the disputed domain name resolves is not being used as a fundraising device or any means used for commercial purposes, which is why it is clear that the Respondent has no intention to benefit from CAROZZI.

That other companies which have been the object of protests and campaigns run by the Respondent have not deemed the Respondent's campaigns to be illegitimate.

That Grupo Alsea has publicly acknowledged that battery cages for laying hens are not adequate, and thus haveannounced their implementation of cage-free policies.

That all the information contained on the website to which the disputed domain name resolvesis true. That the Complainant simply states that said information has not been duly supported, but has not submitted any evidence to prove its falsehood.

That the Complainant's website states that its products contain eggs. That ninety percent of the eggs produced in Latin America come from battery cages.

That in Chile, the place where the Complainant produces its egg-containing products, there is virtually no production of cage-free eggs, or that said production is statistically insignificant.

That it is legitimate for an animal protection group to create a public campaign asking a major food company to work with its suppliers to implement a cage-free egg policy to improve animal welfare.

III. Registered and Used in Bad Faith

That the UDRP cases cited by the Complainant to support its bad faith arguments do not have similar circumstances to those of the present case. The Respondent citesNeste Oil Oyj v. Föreningen Greenpeace-Norden, WIPO Case No. D2012-0891 in which Greenpeace was allowed to keep the domain name <nestespoil.com>.

That the Respondent is not selling anything on the website to which the disputed domain name resolves and that said site does not display anything that could be considered to be a commercial use.

That it seems very unlikely that the Complainant would like to have a domain name that links the idea of cruelty to its business, which is why it is evident that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or a competitor.

That the disputed domain name was not registered to prevent the Complainant from reflecting its mark in a domain name and that, therefore, the Respondent has not engaged in a pattern of such conduct.

That Forum Animal, the organization to which the Respondent belongs is not a private company and does not have any competitors, which is why the disputed domain name was not registered primarily to disrupt the Complainant's business.

That any Internet user would easily identify that the disputed domain name relates to a campaign website directed to the Complainant, intended for the implementation of better practices with animals.

That it is very clear that the above-referenced campaign was created by Forum Animal, because said information is clearly stated at the website.

That the above evidences that the disputed domain name was not registered by the Respondent in an attempt to attract for commercial gain Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Language of the Proceedings

The Complainant has requested Spanish to be the language of the proceedings.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel. In this case, the language of the registration agreement is English.

The Panel notes that both the Complainant and the Respondent submitted their respective communications to the Center in English.

According to paragraph 11 of the Rules, and considering that both the Complainant and the Respondent can communicate and argue their respective cases in English, it is equitable to continue this proceeding in English.

B. Identical or Confusingly Similar

The disputed domain name, <crueldadencarozzi.com>, is confusingly similar to the Complainant's trademark CAROZZI, as it comprises said trademark in its entirety.

The addition of the words "crueldad en" which translate to English as "cruelty in", does not eliminate the similarities existing between the disputed domain name and the Complainant's trademarks.

However, the confusing similarity of a domain name to a trademark for purposes of the Policy, does not automatically entail that the domain name causes confusion among Internet users. The similarity is limited to the textual components of the disputed domain name and their likeness to the Complainant's trademarks (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

In accordance to the Policy, as interpreted by previous panels, the incorporation of a trademark in its entirety in a domain name is sufficient to establish that it is identical or confusingly similar to the Complainant's registered mark for purposes of the Policy. The addition of other terms in the disputed domain name, even derogatory ones, do not affect the fact that the domain name is identical or confusingly similar to the Complainant's trademark (see Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769; Societé Air France v. Virtual Dates, Inc, WIPO Case No. D2005-0168; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).

Under the aforementioned precedents, the first element of the Policy is fulfilled.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where the Respondent may have rights to or legitimate interests in the disputed domain name:

(i) Before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if she has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has argued that it has not licensed, or in any way authorized the Respondent to use of the trademark CAROZZI in any manner. The Complainant asserts that the Respondent is trying to discredit the Complainant, and that the Respondent's freedom of expression does not need to be exercised by means of a domain name that is confusingly similar to the Complainant's trademarks.

The evidence submitted by the Parties shows that the Respondent's website is associated with a movement that stands against the inhumane treatment of caged birds. The Respondent's website displays the statements "LA CRUELDAD DE LAS GALLINAS EN CAROZZI [stylized]" ("The cruelty to chicken in CAROZZI") and "¡FIRMA LA PETICIÓN!" ("Sign the petition!") in a prominent manner, alongside images of caged birds. The website contains a list of recommendations like signing a petition, protesting against the mistreatment of birds, spreading the message contained in the website, and suggesting new courses of action. Furthermore, the website to which the disputed domain name resolves clearly attributes the content of it to "Forum Animal".

The Respondent has claimed that the disputed domain name was registered and has been used with the purpose of protesting the cruelty involved in the caging of egg-laying chicken in Latin America.

The Complainant claims that the content of the website to which the disputed domain name resolves is false and that it is tarnishing its reputation. However, no evidence has been submitted by any of the Parties, which could shed light over the truthfulness of the claims contained in the Respondent's website, or the relationship between the Complainant or its products, and the actual mistreatment of chicken.

Nonetheless, the Panel notes that the scope of the Policy is limited to cybersquatting practices. The analysis of the truthfulness of any claims posted on a website exceeds the scope of said Policy. Precedents issued under the Policy are limited to determining whether a disputed domain name (and the website to which it resolves) is genuinely used for free speech purposes such as commentary and criticism, rather than serving as a pretext for taking a commercial advantage attributable to a respondent, at the expense of a complainant (see MUFG Union Bank, N.A. v. William Bookout, WIPO Case No. D2014-1821).

This Panel has not found in the evidence comprised in the case file, any false, misleading, or biased content as to the source of the Respondent's website, or any suggestion of a purported affiliation to, or sponsorship from the Complainant. The Respondent's website under the disputed domain name is not designed in a way that may mislead Internet users into believing that it is the official website of the Complainant.

The Complainant did not submit evidence proving the actual tarnishment of the trademark CAROZZI. The Respondent's site does not associate the trademark CAROZZI with unwholesome concepts such as drugs, violence or any controversial activity (see Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415). Conversely, the content of the Respondent's website clearly states its critical, noncommercial purpose, and does not create the impression of it being related to the Complainant.

The evidence submitted by the Parties supports a finding of the disputed domain name being used by the Respondent as a means for criticism or protest. This type of use falls within the scope of paragraph 4(c)(iii) of the Policy, and is therefore catalogued as a legitimate noncommercial use of the disputed domain name (see, inter alia, Towers on the Park Condominium v. Paul Adao, WIPO Case No. D2012-1054; MUFG Union Bank, supra; and Veritas Investments, Inc. v. Private Registrant/Jamie Campbell, WIPO Case No. D2014-0010).

While the actions taken by the Respondent may be qualified as excessive or disproportionately aggressive, the analysis of this issue escapes the scope of the Policy. As other UDRP panels have stated, the goals of the Policy are limited to the analysis of the possible abusive registration and use of a domain name. The nature of the Policy does not extend to issuing a determination on whether a complainant should be entitled to obtain relief against critical accusations of misconduct, even when the grounds for said accusations have not been proven.

The Policy is limited to finding whether a respondent is exercising their legitimate free speech rights, as part of a noncommercial use of a domain name, without an intent for commercial gain to misleadingly divert consumers.

It is not clear to this Panel whether the only or most efficient way for the Respondent to express her message regarding the need to treat animals in a better way is by registering a domain name like <crueldadencarozzi.com>, or whether this exercise of her free speech rights is balanced, reasonable, or proportional.

Be that as it may, given the limited nature of the Policy, and considering the evidence submitted by the Complainant, the Panel finds that the Complainant has not established that the Respondent lacks rights or legitimate interests in relation to the disputed domain name.

D. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.

The Complainant has not submitted evidence showing that the Respondent registered the disputed domain name in bad faith. In fact, both the Complainant and the Respondent agree in that the disputed domain name is an instrument of protest.

Previous decisions issued under the Policy establish that the registration and use of a single domain name for a genuine, noncommercial criticism site, if the site is used in a legitimate exercise of free speech, should not be deemed to have been made in bad faith (see, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).

The Complainant has failed to establish that the use of the disputed domain name falls within any of the conducts set forth in paragraph 4(b) of the Policy, or that said use should be deemed as otherwise having taken place in bad faith.

This decision is rendered under the Policy. If the Complainant wishes to address issues that go beyond the scope of the Policy, it is free to take such matter to competent jurisdictional instances as they may deem appropriate.

The third element of the Policy has not been satisfied.

7. Decision

For the foregoing reasons, the Complaint is denied.

Kiyoshi Tsuru
Sole Panelist
Date: October 29, 2017