Complainant is J. Safra IP Limited, United Kingdom, represented by Kasznar Leonardos Advogados, Brazil.
Respondent is Cingucap Gestao e Adm de Recursos Ltda, Brazil, represented by Mansur Murad Advogados, Brazil. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 22, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 30, 2020, the Center received an email communication from a third party. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on February 12, 2020. 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 February 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2020. The Response was filed with the Center on March 5, 2020. In response to a request for clarification by the Center, Respondent filed a Power of Attorney on March 17, 2020. The Center appointed Robert A. Badgley as the sole panelist in this matter on April 15, 2020. 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 the intellectual property affiliate of the so-called SAFRA Family of companies in the banking and financial services sector. Complainant holds various Brazilian registered trademarks, such as SAFRABANK (Reg. No. 818473266 registered October 21, 1997), J. SAFRA (Reg. No. 821110403 registered May 7, 2002), and GRUPO SAFRA (Reg. No. 908483511 registered April 18, 2017). Respondent is also a Brazilian banking concern. Respondent uses ASA as its main trademark for identifying and distinguishing its banking services within Brazil. Respondent’s controlling shareholder is Alberto J. Safra (“AJ Safra”). Respondent asserts that AJ Safra is also a shareholder of Complainant. The Domain Names were registered on December 30, 2019 ( Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent denies that the Domain Names are confusingly similar to Complainant’s marks, and contends that AJ Safra has every right to register the Domain Names, since they include his personal name. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names: (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 rights in the mark SAFRABANK, J SAFRA, and GRUPO SAFRA through registration and use demonstrated in the record. The Panel also finds that the Domain Names are confusingly similar to these marks. Respondent, through counsel, concedes that the Domain Names are “similar,” but argues that Complainant has a duty under the Policy “to prove that such similarity could promote confusion.” Respondent is wrong. Under the Policy, confusing similarity is not the same standard as proving that the similarity promotes confusion, a standard that seems more akin to traditional trademark law and the “likelihood of confusion” analysis. Under the Policy, it usually suffices under the “confusing similarity” standard that Complainant’s trademark is recognizable within the Domain Name. The Panel finds that at least one of Complainant’s registered trademarks is recognizable within each of the three Domain Names at issue. Specifically, SAFRABANK is included within Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests For each of the Domain Names, 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. It is common ground here that AJ Safra (and by imputation his company, Respondent) is well aware that Complainant operates a bank in Brazil and uses the name Safra in its trademarks. It is also common ground that Respondent is a competitor of Complainant. Although neither Party goes into the matter, it appears rather clear that there has been some sort of intra-familial falling out and that at least one of the apparently estranged antagonists is engaging in spiteful conduct. Absent any attempt by Respondent to explain its motivations here (apart from asserting, too broadly, one’s right to register a domain name reflecting one’s own personal name), the Panel is left concluding that a family feud and attendant spiteful conduct lies beneath these Domain Name registrations. The Panel need not make a determination on this issue, given its conclusion below on the issue of bad faith registration and use. C. Registered and Used in Bad Faith For each of the Domain Names, 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. Although it is a close call, the Panel cannot conclude on the limited record here that Respondent registered and used the Domain Names in bad faith. As suggested above, it appears that there is some type of intra-familial fallout here, especially given that AJ Safra has an ownership interest in both disputing Parties here. Complainant did not come forward with any explanation about the apparent family feud. Respondent likewise was fairly minimalist in its discussion of the family feud. Ultimately, this omission left a hole in the story, which the Panel cannot fill with speculation and guesswork. The Panel notes further that AJ Safra’s first name Alberto appears in each of the Domain Names, whereas none of Complainant’s registered trademarks includes the word “Alberto.” This makes the question about AJ Safra’s asserted right to use his own name in a Domain Name somewhat more difficult than if, for example, the Domain Names in dispute did not include “Alberto.” At bottom, the Panel believes that this case is not a good candidate for disposition under the UDRP, which is intended chiefly to address clear cases of cybersquatting. The record here, because of the Parties’ apparent reluctance to discuss the apparent family dispute underlying this overall dispute, does not yield a fair conclusion that this is a clear case of cybersquatting. Complainant has not established Policy paragraph 4(a)(iii). 7. Decision For the foregoing reasons, the Complaint is denied. Robert A. Badgley
Sole Panelist
Date: April 29, 2020
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