Shamrock Food Company v Nuru Solla, Groll enterprise

WIPO Case No. D2025-0754

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Shamrock Food Company v. Nuru Solla, Groll enterprise

Case No. D2025-0754

1. The Parties

The Complainant is Shamrock Food Company, United States of America (“United States” or “US”), represented by Polsinelli PC, United States.

The Respondent is Nuru Solla, Groll Enterprise, The Gambia.

2. The Domain Name and Registrar

The disputed domain name <shamrockfoodscorp.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2025. On February 24, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2025, 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 (“Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf”) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2025, 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 amended Complaint on March 3, 2025.

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 the Respondent of the
Complaint, and the proceedings commenced on March 7, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was March 27, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 31, 2025.

page 2

The Center appointed Shwetasree Majumder as the sole panelist in this matter on April 9, 2025. 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 was founded in 1922. It manufactures and distributes food and food-related products, including dairy, to its vendors. The Complainant uses the SHAMROCK FOODS trademark (and variations thereof) in connection with its goods and services in the United States and in other countries. Details of a few of Complainant’s trademark registrations are as below:

- ‘SHAMROCK FOODS COMPANY’ – US Registration No. 1618160, registered on October 16, 1990 in

class 42

- ‘ ’ – US Registration No. 1629594, registered on December 25, 1990, in class 42

- ‘RESTAURANT 360 BY SHAMROCK FOODS’ – US Registration No. 5623945, registered on

December 4, 2018, in class 35

- ‘MENU STUDIO BY SHAMROCK FOODS’ – US Registration No. 6897058, registered on November 08, 2022, in class 43

The Complainant owns several other iterations of the ‘SHAMROCK’s’ trademarks, whose registration certificates are annexed as Annexure 5 with the Complaint.

Prior to filing the Complaint, the Complainant filed a takedown request with the Registrar, who has taken down the Respondent’s website hosted on the disputed domain name. However, the disputed domain name continues to vest with the Respondent.

The disputed domain name <shamrockfoodscorp.com> was registered on February 2, 2025. Presently, the disputed domain name does not resolve into an active website. The Respondent has used the disputed domain name as part of its email address to contact vendors into believing that Respondent is purportedly requesting products and services on behalf of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the trademark of the Complainant. The Complainant further contends that the Respondent registered the disputed domain name on a false association with the Complainant and impersonated Complainant’s domain name <shamrockfoods.com>. The Complainant contends that the Respondent has engaged in phishing attempts and other fraudulent activity. The Complainant submits that the Respondent has been sending emails while impersonating as the Complainant to innocent third parties. The Complainant submits that the Respondent sent emails that incorporate the disputed domain name in Respondent’s email address (XXXXX @shamrockfoodscorp.com) to contact vendors for disingenuous reasons and to scam them into believing Respondent is purportedly requesting products and services on behalf of the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent’s primary interest in the domain is for the purposes of phishing and spoofing. Further the Complainant submits that the Respondent is not using the disputed

page 3

their reliance on TVS Motor Co. Ltd. v. VistaPrint Techs. Ltd. , WIPO Case No. DCO2014-0007. Further the	domain name for any bona fide offering of goods or services. In this regard, the Complainant has placed disputed domain name, nor was the Respondent commonly known by the disputed domain name.
The Complainant contends that the Respondent has registered the disputed domain name in bad faith. The Complainant asserts that the Respondent was well aware of Complainant’s trademarks while registering the disputed domain name. The Complainant asserts that sending fraudulent and impersonating emails to
customers, service providers, or suppliers constitutes use of the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms ‘corp’ may bear on assessment of the second and third elements, the domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied with the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record; the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

page 4

Policy or otherwise.

Panels have held that the use of a domain name for illegitimate activity such as phishing, impersonation of the Complainant can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The association with and by impersonating the Complainant.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent was well aware of Complainant’s trademarks while registering the disputed domain name. Respondent’s conduct of sending fraudulent and impersonating emails to vendors, service providers, or suppliers amounts to use of the disputed domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegitimate activity such as phishing, impersonation of the Complainant constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under

the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 <shamrockfoodscorp.com> be transferred to the Complainant.

/Shwetasree Majumder/
Shwetasree Majumder
Sole Panelist
Date: April 23, 2025