SF Investments, Inc. v Robert L Nora, Nora

WIPO Case No. D2023-0064

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SF Investments, Inc. v. Robert L Nora, Nora

Case No. D2023-0064

1. The Parties

Complainant is SF Investments, Inc., United States of America (“United States”), represented internally.

Respondent is Robert L Nora, Nora, United States.

2. The Domain Name and Registrar

The disputed domain name <smithfieldsfdbrands.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2023. On January 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2023, 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 (Contact Privacy Inc. Customer 0164406996) and contact information in the Complaint. The Center sent an email communication to Complainant on January 9, 2023 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 13, 2023, updating the registrant identity as disclosed by the Registrar. Complainant filed a further amendment on January 18, 2023 to request the remedy of transfer in place of cancellation.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 19, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2023. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on February 9, 2023.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on February 15, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant is a subsidiary of Smithfield Foods, Inc., which is part of a global meat company operating in the United States, China, and Europe. Complainant owns several registrations for its SMITHFIELD trademark, including for example United States Trademark Registration No. 2624764, registered September 24, 2002, in International Class 29, with a first use in commerce date of 1936.

The disputed domain name was registered on May 15, 2022, and does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

Complainant alleges that Respondent is using the disputed domain name to commit fraud and theft from unsuspecting third-parties who are led to believe they are communicating with Smithfield Foods, Inc. Complainant avers that fraudulent purchase orders and credit applications were submitted to a third-party paper supplier under the names of Smithfield Foods’ senior officers, using the disputed domain name and another nearly identical domain name <smithfieldsfdbrand.com>.[1] The fraud allegedly resulted in the supply of two truckloads of toilet paper products worth USD 50,000 without payment to the supplier.

Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s SMITHFIELD trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.

On the foregoing basis, Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

[1] Complainant also filed against another respondent a separate UDRP proceeding respecting the <smithfieldsfdbrand.com> domain

6. Discussion and Findings

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted
and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i)        the disputed 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 disputed domain name; and

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

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Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The
Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; WIPO Overview of WIPO Panel Views
on Selected UDRP Questions, Third Edition (”WIPO Overview 3.0”), section 4.3. In the absence of a
Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. See, e.g.,
ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael

Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The Panel agrees with Complainant’s allegation that the disputed domain name is confusingly similar to
Complainant’s SMITHFIELD mark.

UDRP panels commonly disregard Top-Level Domains (“TLDs”) in determining whether a disputed domain name is identical or confusingly similar to a complainant’s marks. WIPO Overview 3.0, section 1.11.1.

Omitting the “.com” TLD from the disputed domain name, the Panel notes that Complainant’s entire
SMITHFIELD mark is included in the disputed domain name, adding only the letters “sfd” and the word
“brands”. The Panel finds that these minor modifications to Complainant’s mark does not prevent a finding
of confusing similarity. See WIPO Overview 3.0, section 1.7 (where a domain name incorporates the entirety
of a trademark, the domain name will normally be considered by UDRP panels to be confusingly similar).

The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark and concludes that the first element of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of production passes to the respondent. See, e.g., WIPO Overview 3.0, section 2.1. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id.

Complainant alleges that Respondent has no legitimate rights or interests in the disputed domain name. rights to use Complainant’s trademark in the disputed domain name.

Complainant also avers that Respondent has used the disputed domain name to impersonate Smithfield

Foods, Inc., Complainant’s parent company, in the fraudulent scheme described above.

The record contains no evidence to support Complainant’s averment that Respondent “impersonated”
Smithfield Foods. The evidence submitted pertains to the use of another domain name,
<smithfieldsfdbrand.com>, which, as noted, is subject to a separate UDRP proceeding by Complainant
against a different respondent.

Complainant also alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Since the record shows that the disputed domain name does not resolve to an

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active webpage, the Panel agrees, and further finds that Respondent is not making a bona fide use of the
disputed domain name.

Although Complainant does not address the question, the Panel also infers that Respondent is not commonly known by the disputed domain name.

In light of the evidence, the Panel holds that Respondent is not making a legitimate or fair use of the
disputed domain name and that a prima facie case is established. Omitting to submit a response,
Respondent has neither contested nor rebutted that prima facie case.

The Panel holds, therefore, that Respondent has no rights or legitimate interests in the disputed domain name and that the second element of Policy paragraph 4(a) is established.

C. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.

UDRP panels may draw inferences about bad faith in light of the circumstances, including passive holding,
failure to respond to a complaint and other circumstances. E.g., Telstra Corporation Limited v. Nuclear
Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.2.1.

Respondent registered the disputed domain name incorporating Complainant’s inherently distinctive mark, which has been in use in the United States for more than 70 years. The Panel also notes that the disputed domain name is similar to the name of Complainant’s parent company Smithfield Foods, Inc. Under the

circumstances, it appears that Respondent was aware of Complainant’s SMITHFIELD mark and sought to exploit it through registration of the confusingly similar disputed domain name. The Panel holds therefore that Respondent registered the disputed domain name in bad faith. E.g., WIPO Overview 3.0, sections 3.2.1
and 3.3. Panel also finds that Respondent’s passive holding of the disputed domain name and its failure to

respond to these proceedings evidence Respondent’s use of the disputed domain name in bad faith. Id.

Accordingly, the Panel concludes that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <smithfieldsfdbrands.com> be transferred to Complainant.

/Jeffrey D. Steinhardt/
Jeffrey D. Steinhardt
Sole Panelist
Date: February 28, 2023

name. SF Investments, Inc. v. Mike John, SS inc, WIPO Case No. D2023-0028.