The Complainants are Kasznar, Leonardos Advogados and Kasznar Leonardos Barbosa Colonna Rosman Vianna Agentes da Propriedade Industrial Ltda, Brazil, represented internally.
The Respondent is Jose Claudio de Amorim, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainants on June 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 21, 2021. 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 June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2021. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on August 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 Complainants are Kasznar, Leonardos Advogados and Kasznar Leonardos Barbosa Colonna Rosman Vianna Agentes da Propriedade Industrial Ltda., two companies forming a recognized Brazilian law firm acting in the management of intellectual assets since 1919. The Complainants have nowadays 18 partners and over 80 associate attorneys and employees in the cities of Rio de Janeiro and São Paulo, including several correspondents in Brazil and abroad. The Complainants are known in the law market by their trademark and trade name KASZNAR LEONARDOS and own some Brazilian registrations, including the following: - registrations No. 907737919 and 907737757, both for KASZNAR LEONARDOS, filed on May 23, 2014 and registered on November 16, 2016. The Complainants also own domain names comprising the term “kasznar leonardos”, such as The disputed domain name The Complainants argue that the disputed domain name appears to be indicative of a typosquatting, since its relevant part is “kasznar leonardo”, almost identical to the Complainants’ trademark, trade name and domain names and the only difference is the lack of the letter “s” at the end, which adds no distinctive meaning to the disputed domain name. According to the Complainants, their trademark KASZNAR LEONARDOS is not generic and/or descriptive in which the Respondent might have an interest, since its origin comes from the last name of the law firm's founders, namely Elisabeth KASZNAR and Gabriel LEONARDOS. The Complainants claim that the Respondent is not commonly known by the disputed domain name and has not made a legitimate noncommercial or fair use of it. Instead, the disputed domain name has been used to create at least one email address aiming to falsely impersonate one of the Complainants’ partner as responsible for Finance Department and send to the Complainants’ client requiring payment of a debit note. The Complainants mention and show evidence that such fraudulent action was duly registered before the police station. Also, the Complainants inform that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainants’ trademark or any domain name incorporating the trademark. Additionally, the Complainants say that it is unlikely that the Respondent was not aware of the Complainants’ existence and their rights over the trademark KASZNAR LEONARDOS, even because the Complainants’ trademark does not represent a generic or descriptive term and predates the disputed domain name. The Complainants conclude that the Respondent’s reason for registration of the disputed domain name was to create email addresses for purposes of fraudulent commercial gain, which demonstrate that the domain name was used in bad faith. Finally, the Complainants request the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainants must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The evidence presented in the Complaint demonstrates that the Complainants are the owners of trademark registrations for KASZNAR LEONARDOS in Brazil, as well as the domain names The disputed domain name is confusingly similar to the Complainants’ trademark KASZNAR LEONARDOS. Indeed, the omission of the final letter “s” of the trademark does not prevent a finding of confusing similarity with the Complainants’ trademark, since it makes no difference to its overall impression. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainants, i.e., the disputed domain name is confusingly similar to the Complainants’ trademark. B. Rights or Legitimate Interests The Respondent has not submitted a response to the Complaint. There is no evidence that the Respondent has any authorization to use the Complainants’ trademark or to register a domain name containing the trademark KASZNAR LEONARDOS. There is no evidence that the Respondent is commonly known by the disputed domain name. There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Instead, the Complainants showed evidence that the disputed domain name was registered and used with the clear intention of fraudulently creating an association with the Complainants, by sending email to the Complainants’ clients requiring the payment of a false debit note. The Panel finds that this use of the disputed domain name, which incorporates the Complainants’ trademark, does not correspond to a bona fide use of the disputed domain name under the Policy. For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The trademark KASZNAR LEONARDOS was duly registered by the Complainants in Brazil and has been used for years. In addition,, the Complainants registered different domain names containing the expression “kasznar leonardos”, including The Complainants’ mark is very well recognized in the legal area and it is clear to the Panel that the Respondent knew about the Complainants’ services and their trademark rights at the time of the registration of the disputed domain name and registered it with the obvious intention of gaining financial advantage. A domain name that reproduces the distinctive mark KASZNAR LEONARDOS simply omitting the final letter “s” from the trademark is undoubtedly suggestive of the Respondent’s bad faith. It does not seem to make any sense for the Respondent to register the disputed domain name, except to mislead potential clients of the Complainants. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainants’ trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant. This Panel finds that the Respondent’s attempt of taking unfair advantage of the trademark KASZNAR LEONARDOS as described in paragraph 4(b)(iv) of the Policy has been demonstrated. As noted above, the disputed domain name resolves to an inactive page, and it has been used to send fraudulent emails. UDRP panels have held that such use of a domain name constitute bad faith use. See section 3.4 of the WIPO Overview 3.0. Moreover, the Respondent has chosen not to respond to the Complainants’ allegations. In these circumstances, and as found in the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name was registered and is being used in bad faith. 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 Mario Soerensen Garcia
Sole Panelist
Date: August 12, 2021
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