The Complainant is Makauf Empreendimentos S.A. of Santana de Parnaíba, Brazil, represented by Gusmão & Labrunie Advogados, Brazil.
The Respondent is Domain Protection Services, Inc. of Denver, Colorado, United States of America/ Aime Ribeiro, Novinhas of São Paulo, Brazil.
The disputed domain names <vivara.club>, <vivara.me> and <vivara.site> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2017. On August 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 31, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 31, 2017.
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 September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2017.
The Center appointed Eduardo Machado as the sole panelist in this matter on October 3, 2017. 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.
The Complainant is the owner of several trademark registrations for the VIVARA mark, including registrations No. 811205029, 820611425, 822094363, 824858280, 825878136, 826283039 and 903881497, registered before the Brazilian Patent and Trademark Office (“BPTO”) since September 4, 1984.
The Complainant produces and commercializes jewelry and has more than two hundred stores in Brazil.
The Complainant owns the domain name <vivara.com.br>, registered on March 3, 1999.
The Respondent did not file a Response, and, therefore, very little information is known about the Respondent.
The disputed domain names were registered on June 8, 2017. Before the Complaint was filed, the disputed domain names were being used to host websites copying the Complainant’s official website. The Complainant has also submitted evidence that the disputed domain names were used in connection with a phishing scheme. Currently, the disputed domain names are not used in connection with active websites.
The Complainant alleges that the disputed domain names are identical or confusingly similar to the Complainant’s trademark VIVARA and that the disputed domain names only differ from the Complainant’s trademark by the addition of the Top-Level Domains (“TLDs”) “.site”, “.club” and “.me”.
Also, the Complainant argues that the trademark VIVARA became well-known and acquired substantial goodwill among the Brazilian public.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is not authorized by the Complainant or any of its associated companies to use the Complainant’s registered trademark VIVARA. Not only that but the Respondent registered the disputed domain names with bad faith and unlawful interests, since the Respondent has no trademark rights registered or unregistered in connection with the disputed domain names or any other corresponding name.
The Complainant states that there is no suitable reason for the Respondent to choose the disputed domain names.
Besides that, the Complainant affirms that the Respondent has registered the disputed domain names in connection with a phishing scheme to induce and divert the Complainant’s customers to the Respondent’s websites in order to collect their personal information. In addition, the Complainant argues that the Respondent is aware of the Complainant’s famous jewelry business in Brazil and was using the disputed domain names to take advantage of the Complainant’s good reputation.
The Respondent did not reply to the Complainant’s contentions.
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interest in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant owns numerous trademark registrations for the VIVARA mark.
The disputed domain names incorporate the Complainant’s trademark in its entirety. The addition of the TLDs “.site”, “.club” and “.me”, does not prevent the confusing similarity of the disputed domain names with the Complainant’s trademark.
These additions are irrelevant in assessing identity or confusing similarity between the disputed domain names and the Complainant’s trademark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; Federation Francaise de Tennis (FFT) v. Whoisguard Protected, Whoisguard, Inc. / Sampath Reddy, WIPO Case No. D2016-0864; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).
The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
There is no evidence that the Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain names nor has made or is making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant owns the trademark VIVARA and has never authorized, licensed or permitted, in any way, the Respondent to register or use the disputed domain names.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the dispute domain names.
Considering that the Respondent did not submit a Response to the Complaint, the Panel finds that there is nothing on the record suggesting that the Respondent has rights or legitimate interests in respect of the disputed domain names.
Therefore, the Panel concludes that the Complainant has succeeded to establish the second condition of paragraph 4(a) of the Policy.
The Panel finds that the Respondent has intentionally registered the disputed domain names with the sole objective of targeting the Complainant’s trademark VIVARA and has used the disputed domain names in connection with phishing activities.
The Complainant’s has submitted evidence that shows that the Respondent used the disputed domain names in connection with a phising scheme, by advertising a fake promotion through social media in order to collect customers’ personal information. In fact, the Respondent’s use of the disputed domain names in a phishing scheme demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as the Complainant.
The Panel agrees with previous UDRP panels that phishing is a clear evidence of registration and use of a domain name in bad faith. See Banca Intesa S.P.A v. Moshe Tal, WIPO Case No. D2006-0228 and The Royal Bank of Scotland Group plc v. Ash Astern, WIPO Case No. D2012-1718.
The Panel also notes that the allegations of bad faith made by the Complainant were not contested.
In view of the above, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 names <vivara.club>, <vivara.me> and <vivara.site> be transferred to the Complainant.
Eduardo Machado
Sole Panelist
Date: October 17, 2017