The Complainant is Safra IP Holding CO of Luxembourg, Luxembourg, represented by Silveiro Advogados, Brazil.
The Respondent is Rob Monster, DigitalTown, Inc of Bellevue, Washington, United States of America (“United States” or “US”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Epik, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In reply to a request for clarification sent by the Center, the Complainant filed an amended Complaint on August 9, 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 the Respondent of the Complaint, and the proceedings commenced on August 10, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 12, 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. 4. Factual Background
The Complainant is an international network of companies controlled by the Safra family, comprising banking and financial institutions, industrial operations, real estate and agribusiness. It is present in 22 countries, on three continents, with more than 6,000 employees.
The Complainant offers services such as loans and financing to cash management, credit cards, foreign trade, insurance, surety and investments, both for companies and individuals.
The Complainant in its Complaint provides evidence of several registered trademarks around the world for SAFRA, for example US trademark registration No. 1806382 registered on November 23, 1993, Brazilian trademark registration No. 818192879 registered on February 25, 1997, and WIPO trademark registration No. 704454.
According to the Registrar, the Domain Name was registered by the Respondent on September 20, 2017. The Registrar has indicated that the Domain Name is set to expire on September 20, 2018, but also confirmed that a lock applies through the remaining of the UDRP proceeding. At the time of filing the Complaint, and also at the time of drafting the decision, the Domain Name resolved to the Registrar’s parking page where the Domain Name is offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant provides evidence of trademark registrations for SAFRA and domain name registrations. The Complainant argues that the Domain Name reproduces the Complainant’s registered trademark SAFRA, and the suffix “.shop” only increases the similarity.
The Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s trademark. The Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent has not been commonly known by the Domain Name. There is no connection between the Domain Name and the name or business of the Respondent.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant and its trademark when the Respondent registered the Domain Name, as the Respondent is a “self-proclaimed expert in the ʻconsumer internetʼ area”. The Respondent has been at the other end of several UDRP complaints. The Respondent has most probably investigated the potential of the Domain Name and monitored use. Bad faith may also be inferred from the fact that the Domain Name is offered for sale for USD 7,500. The Respondent is also engaged in a clear pattern of conduct within the meaning of Policy, taking into account his history of past convictions under the UDRP. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark SAFRA.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the “.shop”, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired common law rights.
As a reply to the Complainant’s cease and desist letter, the Respondent stated that the Domain Name SAFRA is a generic, common family name, providing a printout from the United States Patent and Trademark Office showing the existence of a number of trademarks including the term “safra”. This may hint at that the Respondent would like to argue he has a legitimate interest. However, the statement is not backed by further explanations or evidence indicating a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the SAFRA mark, making moreover the Complainant in the Complaint the unrebutted assertion that all the trademarks listed by the Respondent are related to the Complainant’s family and companies. Moreover, the Panel notes that previous UDRP panels have found that domain names identical to a complainant’s trademark (as it is the case here) carry a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is more likely than not that the Respondent knew of the Complainant and its business when it registered the Domain Name, taking into account the Respondent’s former involvement in UDRP proceedings, and general knowledge of the domain name industry. This is also evidenced by the Respondent’s reply to the Complainant’s cease and desist letter.
Bad faith may also be inferred from the fact that the Domain Name is offered for sale for USD 7,500.
Moreover, the Panel finds that the Respondent is engaged in a clear pattern of conduct within the meaning of Policy. In this regard, see Jones Lang LaSalle IP, Inc. v. Rob Monster, DigitalTown, Inc.,WIPO Case No. D2018-1299; or Dürr Aktiengesellschaft v. Rob Monster, Digital Town, Inc.,WIPO Case No. D2018-0757.
For the reasons set out above, the Panel concludes that the Domain Name was registered and used in bad faith, within the meaning of paragraph 4(a)(iii). 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 Domain Name be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: September 13, 2018
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