WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tríade Educacional Ltda. v. Felipe da Cunha Araujo Pereira

Case No. D2021-2009

1. The Parties

The Complainant is Tríade Educacional Ltda., Brazil, represented by Dannemann Siemsen, Brazil.

The Respondent is Felipe da Cunha Araujo Pereira, Brazil.

2. The Domain Name and Registrar

The disputed domain name <acoesgarantem.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2021, 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 27, 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 Brazilian company established in 2019 that provides online education and offers training programs on financial investments in collaboration with Mr. Luiz Barsi Filho, an investor in the Brazilian stock exchange and creator of the “Ações Garantem o Futuro – AGF” methodology that dates back to 1970 (Annex 5 to the Complaint) and which is also the title of his book.

The Complainant owns among others the following trademark (Annex 7 to the Complaint):

- Brazilian trademark registration No. 919450709 for the word mark AÇÕES GARANTEM O FUTURO, filed on March 20, 2020 and registered on December 8, 2020 in class 41.

In addition, the Complainant has requested the Brazilian trademark application No. 921941595 for the word mark AÇÕES GARANTEM O FUTURO, filed on January 29, 2021 in class 36.

The Complainant (through its partner) owns, and operates, the domain name <acoesgarantem.com.br>, registered on January 18, 2019.

The disputed domain name was registered on February 12, 2020 and presently does not resolve to an active webpage. It has been used to redirect Internet users to the webpage available at “luizbarsi.com” that advertises Mr. Luiz Barsi Neto’s investment services. Mr. Luiz Barsi Neto (“Mr. Neto”) is the son of Mr. Luiz Barsi Filho (“Mr. Barzi”).

5. Parties’ Contentions

A. Complainant

The Complainant claims to provide training programs on financial investments under Luiz Barsi Filho’s well-known methodology named AÇÕES GARANTEM O FUTURO - AGF, providing students with the necessary knowledge to conduct asset analysis and teaching Mr. Barsi’s reasoning behind his decision-making process. The Complainant further claims to be the only company authorized by him to speak on his behalf and to teach his investment methodology, being the AÇÕES GARANTEM O FUTURO - AGF reputation indisputable in the online market.

Under the Complainant’s view, given the extensive and continuous use of its AÇÕES GARANTEM O FUTURO trademark, the disputed domain name <acoesgarantem.com> is confusingly similar therewith as well as with the <acoesgarantem.com.br> domain name which has been registered on January 18, 2019 by Mr. Felipe Camera Ruiz, a partner of the Complainant.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:

(i) the expression AÇÕES GARANTEM O FUTURO, a registered trademark in Brazil, has been in use for some years and is inevitably associated with the Complainant and its activities, so much that the disputed domain name could not have been accidentally created by the Respondent;

(ii) the Respondent is not commonly known by the disputed domain name, nor does it own any trademark registration or has it ever used the disputed domain name in connection with a bona fide offering of goods or services;

(iii) the Respondent has not been authorized to use the Complainant’s trademark; and

(iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name given that the disputed domain name has been used to redirect Internet users to the webpage available at “luizbarsi.com” that advertises Mr. Neto’s investment services, seeking to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. Such redirection stopped after a cease-and-desist letter was sent to Mr. Neto by his father, Mr. Barsi and the Complainant (Annex 9 to the Complaint).

As to the registration and use of the disputed domain name in bad faith, the Complainant states that:

(i) the Respondent knew of the Complainant’s trademark when registering the disputed domain name given that the disputed domain name has been used to redirect Internet users to Mr. Neto’s webpage, in direct competition with the Complainant, being it evident that the Respondent had knowledge of the Complainant’s trademark;

(ii) the expression AÇÕES GARANTEM O FUTURO is inevitably associated with the Complainant and its activities; not having the Respondent conducted any bona fide offering of goods or services under the disputed domain name;

(iii) the purpose of the Respondent’s registration of the disputed domain name was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation, or endorsement of its website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the Complaint.

A. Identical or Confusingly Similar

The Complainant has established rights over the AÇÕES GARANTEM O FUTURO trademark.

The disputed domain name <acoesgarantem.com> reproduces the relevant part of the Complainant’s trademark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which does not hold any trademark rights over the term “Ações Garantem”. Further, there is no evidence on record showing that the Respondent is commonly known by the disputed domain name.

Also according to the evidence submitted by the Complainant, the use made of the disputed domain name being almost identical to the Complainant’s <acoesgarantem.com.br> domain name in connection with the redirection to the webpage available at <luizbarsi.com> offering investment services suggests at least a risk of an affiliation with the Complainant which in fact does not exist.

In this case, and given the limited scope of this procedure, the evidence presented indicates that the Respondent appears to act on behalf of Mr. Neto, son of the creator of the AÇÕES GARANTEM O FUTURO methodology. This is corroborated in view of the change taken place in connection with the disputed domain name which stopped being redirected to Mr. Neto’s webpage after Mr. Neto received a cease-and-desist letter sent by his father and the Complainant (Annex 9 to the Complaint).

In the event that Mr. Neto is indeed connected to the Respondent, the Panel finds that the registration, and redirection of the disputed domain name to <luizbarsi.com> was likely done to take advantage of the similarity with the Complainant’s domain name, pursuing to attract Internet users relying also on the similarity of Mr. Neto’s name and that of his father. Such redirection to a website that offers investments under his father’s methodology would not give rise to rights or legitimate interests in the disputed domain name under the Policy.

In any case, the use made of the disputed domain name does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name under the Policy.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the Complainant argues that it is evident that the Respondent had knowledge of the Complainant’s trademark when registering the disputed domain name given that the disputed domain name has been used to redirect Internet users to Mr. Neto’s webpage, in direct competition with the Complainant.

This Panel finds that there is a connection between the disputed domain name, Mr. Neto, Mr. Barsi, and the Complainant. The disputed domain name has been used to the benefit of Mr. Neto, son of Mr. Barsi, being Mr. Barsi the author of the book published in 1970 titled ações garantem o futuro and creator of the investment methodology known by the same expression (as shown by the Annex 5 to the Complaint). In addition, the Complainant is the only company authorized by Mr. Barsi to speak in his own name, and to teach his methodology of investments, an activity that the Complainant seems to have been doing since 2019 in collaboration with Mr. Barsi.

This appears to be one of the rare cases where a Panel will find bad faith registration in the disputed domain name in spite of the Complainant only having acquired trademark rights after the registration of the disputed domain name, given the connection between the disputed domain name, Mr. Neto, Mr. Barsi and the Complainant. The Panel notes that the disputed domain name was registered within a short period of time prior to the Complainant’s trademark first filing (i.e. February 12, 2020 v. March 20, 2020), but after the Complainant’s domain name registration (January 18, 2019) and beginning of activities (May 24, 2019), what would indicate the Respondent’s opportunistic bad faith.

Prior panels, such as the panel deciding Marden Group B.V. v. Tucows.com.co, WIPO Case No. D2011-1061, have already stated that “[t]here are cases that suggest that what actually matters here is (a) whether at the time of registration of the domain name the relevant term embodied in the domain name was being (or about to be) used in a trade mark sense by the complainant and (b) whether the domain name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use (see for example St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601 […]).”

The present inactive use of the disputed domain name does not alter the conclusions the Panel has arrived to and given the nature of the disputed domain name, and its likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.

Moreover, the Respondent’s lack of reply to the warning letter sent by the Complainant and Mr. Barsi prior to this procedure, and the Respondent’s default are further indications supporting a finding of the Respondent’s bad faith.

In conclusion, the Panel finds, on the balance of the probabilities, that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has satisfied the third element of the Policy.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.

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 <acoesgarantem.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: August 10, 2020