Complainant is Safra IP Holding CO of Luxembourg, Luxembourg, represented by Silveiro Advogados, Brazil.
Respondent is Juarez Momm of Sao Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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.
The Center verified that 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 December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2019.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 17, 2019. 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 company under the law of Luxembourg, which belongs to the SAFRA Group of Companies offering financial products and services worldwide.
Complainant has documented that it, or another entity within the SAFRA Group of Companies respectively, is the owner of a variety of trademarks relating to the name “Safra”, including the following:
- Word mark SAFRA, World Intellectual Property Organization (WIPO), Registration No. 704454, Registration Date: October 28, 1998, Status: Active;
- Word mark SAFRA, Instituto Nacional Propriedade Industrial (INPI) Brazil, Registration No. 818192879, Application Date: January 10, 1995, Status:
Complainant, moreover, owns a number of domain names relating to its SAFRA trademark, including the domain names and which Complainant uses to run a website at “www.” in order to promote its financial products and services on the Brazilian market.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of Brazil and registered the disputed domain name on February 26, 2018. As of the time of the rendering of this decision, the disputed domain name does not resolve to any content on the Internet. Complainant, however, has evidenced that at some point before the filing of its Complaint, the disputed domain name resolved to a website at “www.” which reproduced essential elements of Complainant’s official website such as the SAFRA brand, colors, fonts, and other design elements including pictures and which redirected Internet users to a sign-on page apparently in order to capture usernames, passwords and security keys to be sent to a false online address, thus constituting a typical kind of phishing activity. Complainant has also indicated that Respondent’s registered address in Sao Paulo, Brazil, is not existing and that the fraudulent website under the disputed domain name had been first taken down and later reactivated, which is why Complainant – after its request directed to the Registrar to cancel the disputed domain name was unsuccessful - filed this Complaint.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that its SAFRA trademark goes back to the renowned Safra family who founded its first bank already in the mid-19th century. Nowadays, the SAFRA Group of Companies is an international network still controlled by the Safra family, comprising of banking and financial institutions, industrial operations, real estate and agribusiness in 22 countries on three continents with more than 6,000 employees worldwide.
Complainant submits that the disputed domain name is at least confusingly similar to Complainant’s SAFRA trademark since it incorporates the latter together with the term “empresas” meaning “companies” in English. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not licensed or otherwise permitted Respondent to use any of its SAFRA trademarks, (2) Respondent is not commonly known as “Safra”, has never operated a business under “Safra” and does not have any trademark registrations for this name, and (3) Respondent has not any connection or relationship with Complainant, but on the contrary has used the disputed domain name in an attempt to create the impression that it is in fact belonging to Complainant in order to fraudulently obtain confidential Internet users information. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since the website to which the disputed domain name temporarily resolved constituted a faithful reproduction of Complainant’s official website and, thus, obviously served as a tool for committing phishing activities (in relation to which investigations are still ongoing). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the SAFRA trademark in which Complainant has rights.
The disputed domain name incorporates the SAFRA trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). The fact that the disputed domain name, moreover, includes the term “empresas” is not in contrast to such finding. It is a consensus view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic or otherwise) would not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). Here, the term “empresas” means “companies” in English and there is no doubt that Complainant’s SAFRA trademark is easily recognizable within the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant’s SAFRA trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Safra”. Finally, Respondent has neither used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent obviously used the disputed domain name to run a website that pretended to be an official Internet presence of Complainant and the SAFRA group of companies in a manner likely to confuse Internet users and, thus, allowing Respondent to capture sensitive Internet users’ data such as user names, passwords, and security keys to enable phishing activities.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Redirecting the disputed domain name, which is confusingly similar to Complainant’s SAFRA trademark, to a website that clearly reproduces Complainant’s official website in a fraudulent manner to allow phishing activities is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s SAFRA trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided false WhoIs contact information since the Written Notice sent to Respondent via courier on December 20, 2018, could not be delivered. This fact at least throws a light on Respondent’s behavior, which supports the conclusion of bad faith registration and use of the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by 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 disputed domain name be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: January 23, 2019
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