BRF S.A, f/k/a BRF - Brasil Foods S.A. v. blanca roman
Claim Number: FA1408001573514
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 blanca roman (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brf-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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2014, which was withdrawn without prejudice August 8, 2014. However, Complainant submitted a new Complaint on August 11, and the National Arbitration Forum received payment on August 11, 2014.
On August 13, 2014, Register.Com, Inc. confirmed by email to the National Arbitration Forum that the <brf-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 email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brf-sa.com. Also on August 13, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 is a large food company based in Brazil, formed in 2009 through a merger with Sadia S.A. Complainant changed its name from BRF – Brasil Foods S.A. to BRF S.A. in 2013. Complainant states that it has used BRF as a trademark continuously since 2009, and holds numerous trademark registrations or applications for BRF in Brazil and many other countries, including the United States. Among these is a Brazilian trademark registration for a composite mark of which the letters “BRF” are the dominant aspect.
Complainant contends that the disputed domain name <brf-sa.com> is confusingly similar to its BRF mark and nearly identical to its trade name BRF S.A. Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name. In support thereof, Complainant states that its rights in the BRF mark and corresponding trade name arose long before the disputed domain name was registered in 2013; that Respondent is not affiliated with Complainant, and Complainant has never authorized Respondent to use its mark or trade name; and that Respondent has used the disputed domain name to host a website through which it attempts to pass itself off as Complainant.
Complainant states further that until recently the disputed domain name resolved to a website associated with Planet Source Enterprise that displayed the BRF mark and used text from Complainant’s own website to promote Respondent’s products and services, and that Aziz Fahim, a person associated with Planet Source Enterprise, has used an email address incorporating the disputed domain name to send fake invoices and purchase orders to customers of Complainant under the guise of an affiliation with Complainant. When Complainant challenged this conduct, Mr. Fahim requested that Complainant pay him a “commission” for these customers. As a result of these misrepresentations, Complainant alleges that third parties have entered into agreements with Respondent under the mistaken belief that they were contracting with Complainant. Complainant has submitted copies of email correspondence to substantiate these allegations. Complainant contends that these allegations demonstrate that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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 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.”).
The disputed domain name incorporates Complainant’s claimed mark (which corresponds to the dominant textual aspect of its registered composite mark), adding only a hyphen, the generic term “sa” (corresponding to the suffix in Complainant’s trade name, which indicates its corporate status), and the “.com” top-level domain. These additions do not substantially diminish the similarity with Complainant’s mark. See, e.g., Sopra Group v. Boris Gazoil, D2014-0900 (WIPO July 10, 2014) (finding <sopragroup-sa.com> confusingly similar to SOPRA GROUP); Daimler AG v. webritmo c/o Carlos Cavaleiro, FA 1309424 (Nat. Arb. Forum Apr. 12, 2010) (finding <mercedes-sa.com> confusingly similar to MERCEDES). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark and is nearly identical to Complainant’s trade name, and it apparently has been used solely for the purpose of creating and profiting from confusion with Complainant. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s opportunistic registration of the disputed domain name and its use of the domain name in connection with an apparent scheme to mislead Complainant’s customers and potential customers fall squarely within these provisions of the Policy. See, e.g., ADP, Inc. v. Joe Collins / iba, FA 1551312 (Nat. Arb. Forum June 18, 2014). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brf-sa.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 9, 2014
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