Complainant is Luis Stuhlberger of Sao Paulo, Brazil, represented by Opice Blum, Brazil.
Respondent is Laura Yun, Antarchile S.A. of Los Condes, Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 31, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on September 5, 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 18, 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
Complainant is a hedge fund manager based in Brazil. Complainant annexes to the Complaint a list of 445 investment funds that he has managed. His primary firm is Verde Asset Management S.A.
Complainant alleges – and the record evidence confirms – that he is a well-known hedge fund manager in Brazil. Several articles from major financial press outlets have corroborated the claim that Complainant is one of the leading hedge fund managers in Brazil. For instance, in a November 27, 2015, New York Times article entitled “Brazil Hedge Fund Star Looks Elsewhere for His Next Big Bet”, the writer states: “Given his record, when Mr. Stuhlberger talks, Brazil watchers pay attention.” This article also states that Complainant’s “flagship fund, Verde, known for its big-picture calls on economic trends, has returned an average of 29 percent a year, after fees, since it was founded in 1997.”
The Domain Name was registered on December 24, 2016. At some point the Domain Name resolved to a website featuring a purported investment fund with which Complainant has no involvement and of which Complainant has no knowledge. In addition, in May 2018 Complainant’s secretary received a number of emails from someone using the Domain Name for multiple email addresses. The emails purportedly came from individuals named Don Woo and Tom Price, and these supposed individuals claimed that they had entered into transactions with Complainant’s business.
Complainant brought this apparent Internet scam to the attention of the Brazilian police and, in July 2018, to the attention of the Registrar, whereupon the Registrar suspended the Domain Name. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has common law trademark rights in his name, LUIS STUHLBERGER. Although Complainant conducts business through the investment firms he owns and/or manages, Complainant himself is very well known within the hedge fund world, particularly in Brazil. Complainant argues that his name being associated with an investment fund “immediately increases people’s trust and interest in” the fund. Complainant also notes that he is personally regulated by Brazilian, United States, and Cayman authorities for his investment advisory activities. The foregoing facts, Complainant asserts, “reinforce the value of my name in the financial industry and with investors from all around the world.”
The Panel agrees with this argument. When a firm with its own brand name (here, Verde Asset Management S.A.) is so closely associated in the public mind with the firm’s founder and head, and when that firm operates in an area of commerce where the unique qualities of the founder and head constitute perhaps the chief stock in trade of the firm (here, Brazilian investment insight and advice), the name of such founder and head may well constitute an unregistered trademark in its own right. In this vein, the Panel notes that the unsolicited financial media coverage submitted in the record of this case generally discusses Complainant more than it discusses any of his actual firms.
The Panel also observes that Respondent herself evidently recognizes the trademark value of Complainant’s personal name, since the Domain Name in question resolved for a time to a website purportedly related to investment opportunities. It is clear that Respondent was seeking to exploit the reputation of Complainant’s name as a mark in commerce.
The Domain Name is identical to the unregistered LUIS STUHLBERGER mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate or defend her bona fides vis-à-vis the Domain Name. Moreover, the only evidence of record supports Complainant’s allegation that Respondent had some type of fraudulent design in view.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates here its discussion above in the “identical and confusingly similar” and “rights or legitimate interests” sections as a basis for finding bad faith. The undisputed record here indicates without much doubt that Respondent registered and began to use the Domain Name because of its association with Complainant and for fraudulent purposes. At a minimum, Respondent’s creation of a website purporting to offer investment services under Complainant’s well-known name (and mark) constitutes bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy 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 Complainant.
Robert A. Badgley
Sole Panelist
Date: October 29, 2018
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