The Complainant is Pere Ventura Vendrell, Spain, represented by Currell Suñol, SLP, Spain.
The Respondent is Abhen Sheik, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2020, 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. 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 the Respondent of the Complaint, and the proceedings commenced on December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2021. The Center appointed Mihaela Maravela as the sole panelist in this matter on February 4, 2021. 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 a producer of wines and sparkling wines under the trademark PERE VENTURA. The Complainant is the exclusive owner of the following registered trademarks consisting of the words “pere ventura”: - the International word trademark PERE VENTURA No. 1129210 registered as of August 21, 2012; - the European Union word trademark PERE VENTURA No. 000035600 registered as of November 24, 1997. The disputed domain name was registered on August 17, 2020. At the time of the Decision, the disputed domain name directs to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is identical to the Complainant’s earlier trademark, that has a reputation for wines worldwide. The addition of the Top-Level Domain “.org” is to be disregarded when considering whether the disputed domain name is identical to the trademark. With respect to the second element, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never licensed, authorized or otherwise permitted the Respondent to use his trademark in any form, including as a domain name. Also, the Complainant argues that the Respondent does not own any trademark applications or registrations for the disputed domain name and that the Respondent is not known under the name PERE VENTURA. The fact that the Respondent is not using the disputed domain name to set up a website demonstrates that there is no evidence to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Moreover, the disputed domain name is suspended for being used for phishing activities which cannot confer rights or legitimate interests in the disputed domain name. In what concerns the third element, the Complainant contends that the disputed domain name is being used to impersonate its company and for phishing emails to be sent to its clients to claim payments. The Complainant’s clients have received emails from certain email addresses associated with the disputed domain name, where it was claimed that the Complainant has updated its bank account and that payments should be made to a new bank account. The email addresses that were used impersonate employees and a department (export) of the Complainant. The Complainant further shows that following its complaint, the Registrar suspended the disputed domain name upon investigation of the alleged phishing activities. For all these reasons, the Complainant argues the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the PERE VENTURA trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here the disputed domain name consists of the Complainant’s PERE VENTURA trademark. It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.org”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0. This Panel concludes that the disputed domain name is identical to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In the present case, the Complainant has established a prima facie case that it holds rights over the trademark PERE VENTURA and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain name for scamming activities and such activity cannot confer rights or legitimate interests on the Respondent. Section 2.13 of the WIPO Overview 3.0. For a similar finding, see LIDL Stiftung & Co. KG v. Whois Agent, Whois Privacy Protection Service, Inc. / Jean-pierre CHAVE,WIPO Case No. D2018-2149. By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives credence to the Complainant’s assertion that no license or authorization was ever given for the use of the trademark PERE VENTURA in the disputed domain name. With the evidence on file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. According to the unrebutted assertions of the Complainant, its PERE VENTURA trademark has been used in commerce well before the registration of the disputed domain name in August 2020. The disputed domain name consists of the Complainant’s trademark in addition to the relevant gTLD. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark PERE VENTURA, with an intention to create a likelihood of confusion between the disputed domain name and the Complainant and its trademark PERE VENTURA. The Complainant argues that, shortly after the disputed domain name was registered, the Respondent used the disputed domain name for sending emails to the Complainant’s clients claiming that the Complainant has upgraded its bank account and that payments should be made to a new bank account. The email addresses that were used impersonate employees and a department (export) of the Complainant. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0). See for similar findings, e.g. Lidl Stiftung & Co. KG v. Privacy Protect, LLC (PrivacyProtect.org) / Nat Medy,WIPO Case No. D2018-0176. In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled. 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, Mihaela Maravela
Sole Panelist
Date: February 18, 2021
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