Safra Trademarks Holding Limited Corporation v. Salvador Herrera / Safra Investment Group, LLC
Claim Number: FA2109001962338
Complainant is Safra Trademarks Holding Limited Corporation (“Complainant”), represented by Potomac Law Group, PLLC, District of Columbia, USA. Respondent is Salvador Herrera / Safra Investment Group, LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <safrainvestmentgroup.us> and <safraservices.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on September 3, 2021; the Forum received payment on September 3, 2021.
On September 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <safrainvestmentgroup.us> and <safraservices.us> domain names (the Domain Names) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 29, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@safrainvestmentgroup.us, postmaster@safraservices.us. Also on September 9, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES
The Complaint asserts claims against two domain names but does not address the matter of whether more than one domain name can be the subject of a single administrative proceeding under the Policy. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Domain Names resolve to web pages which offer financial services but they are of different kinds, one for investment and other financial services and the other for transferring funds from one country to another (screenshots of both web sites submitted as Amended Complaint Annex D). The WHOIS information furnished to the Forum by the registrar lists the same persons as registrants, at the same address and with the same telephone number. Both Domain Names were registered with the same registrar on the same date. On these facts the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.
A. Complainant
Complainant operates in the banking and financial services industries. It has rights in the SAFRA mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <safrainvestmentgroup.us> and <safraservices.us> Domain Names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety, merely adding the generic or descriptive words “investment group” and “services,” and “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Names. It has no rights in any trademark consisting of the term SAFRA in any country. It is not commonly known by the Domain Names and Complainant has not authorized Respondent to use its mark. Respondent is not using the Domain Names in connection with any bona fide offering of goods or services or for any legitimate, noncommercial or fair use.
Respondent registered and/or uses the Domain Names in bad faith. It attempts for commercial gain to attract Internet users to its web sites by causing confusion as to the source, sponsorship, affiliation or endorsement of its web sites by Complainant, and Respondent registered the Domain Names with actual knowledge of Complainant and its rights in the SAFRA mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The SAFRA mark was registered to Republic New York Corporation with the USPTO (Reg. No. 1,806,382) on November 23, 1993 and was subsequently assigned to Complainant (TESS report submitted with Complaint Annex B). Complainant’s ownership of this registration establishes its rights in the SAFRA mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As assignee and current owner of the November 1993 registration, Complainant has sufficient rights in the SAFRA mark to bring and maintain this proceeding.
Respondent’s <safrainvestmentgroup.us> and <safraservices.us> Domain Names are identical or confusingly similar to Complainant’s SAFRA mark. They incorporate the SAFRA mark in its entirety, merely adding the descriptive or generic words “investment group” and “services,” and the “.us” ccTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”), Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “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 domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the SAFRA mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s 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;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Names, (ii) Respondent is not commonly known by the Domain Names, (iii) Complainant has not authorized Respondent to use its mark, and (iv) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Names resolve to Respondent’s web site which impersonates and competes with Complainant. These allegations are addressed as follows:
Complainant addressed but did not offer evidence specifically bearing upon the Policy ¶ 4(c)(i) factor stated above. Complainants in usTLD cases can search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while it would have been preferable for Complainant to have offered evidence bearing specifically upon this element of the case, the evidence that is available is sufficient to establish an inference that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Names. The TESS report demonstrating Complainant’s rights in the SAFRA mark evidences its rights in that mark dating from at least as early as the April 1992 filing date. Complainant’s presence in the financial services industry is well-established, with more than $30 billion under its management, according to the undisputed allegations in the Complaint. It is extremely unlikely that any governmental trademark authority would have registered a trademark identical to <safrainvestmentrpoup.us> or <safraservices.us> in the name of any person other than Complainant or one of its affiliates, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to either Domain Name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that it is not.
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant did not specifically address the Policy ¶ 4(c)(iii) issue, but the WHOIS information furnished to the Forum by the registrar lists “Salvador Herrera / Safra Investment Group, LLC” as the registrant of the Domain Names. The first of these names, Salvador Herrera, bears no resemblance to the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The second name furnished by the registrar, Safra Investment Group, LLC, is virtually identical to the dominant “Safra” element of the Domain Name. Based upon allegations in the Complaint, it appears that Safra Investment Group, LLC registered as a limited liability company in the State of Texas in October of 2019. Screenshots of the web sites resolving from the Domain Names, submitted as Complaint Annex D, show that this LLC is apparently doing business as a financial services company, offering services similar to at least some of those offered by Complainant. It might appear on the basis of these facts that Respondent has been commonly known by the Domain Names. The problem with this analysis, however, is that Respondent is not authorized to use Complainant’s mark, which both the Domain Names and the name of Respondent’s company incorporate verbatim. It is well established that a respondent may not acquire rights or legitimate interests in a domain name if the domain name incorporates the protected trademark of another. Karsten Manufacturing Corp. v. New Ventures Services, FA 1705001729687 (Forum June 5, 2017) (“The Panel finds that when the disputed domain name is confusingly similar to a famous mark, Respondent cannot claim rights or legitimate interests in the disputed domain name.”).
Nor can Respondent fit within the provisions of Policy ¶ 4(c)(iii) by appropriating Complainant’s mark for use in the name of his company. In Alienware Corp. v. Dann (FA 1290045 (Forum Dec. 29, 2009), the respondent sought to prove that it had made demonstrable preparations to use the domain name in a bona fide offering of goods and services in that it had incorporated it into its email address. The panel in that case noted that if the use of the domain name by itself in an email address amounted to bona fide use, the UDRP could be easily avoided. The same reasoning applies to Policy ¶ 4(c)(iii). If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(iii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated, Policy ¶ 4(c)(iii) would be essentially meaningless. Respondent’s appropriation of Complainant’s SAFRA mark for the Domain Names was wrongful, and it was equally wrongful to use it in the name of Respondent’s company. It would defy the obvious intent of the Policy to permit any respondent to benefit from this type of manipulation. Augusta National, Inc. v. Ryan Carey, Case No. 1758547 (Forum Dec. 21, 2017). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(iii).
Complaint Annex D consists of screenshots of the web sites resolving from the Domain Names. The site resolving from the <safrainvestmentgroup.us> Domain Name, appears primarily to offer business transaction and advisory, savings and investment and stored value card services, although it also features news articles. It prominently displays the name “Safra Investment Group” as its trade name. The web site resolving from <safraservices.us> appears primarily to offer services relating to the transfer of money from persons in the U.S. to persons in Mexico and Central America, but it also contains a link to the <safrainvestmentgroup.us> web site. Neither web site appears to copy or mimic the general appearance of Complainant’s web site at <safra.com> as shown on Complaint Annex C. The <safrainvestmentgroup.us> web site contains a disclaimer reading “We have no relationship with Safra Bank” immediately below the trade name and printed in fairly conspicuous font on some of the pages, and the <safraservices.us> web site has a similar disclaimer in the copyright notation at the bottom of the last page. It thus appears that Respondent’s web sites do not pass off as or impersonate Complainant. Nevertheless, it is clear that Respondent is using the confusingly similar Domain Names to attract Internet traffic to its web sites where it purports to offer competing services. This is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iv). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).[i]
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domains Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by using the Domain Names to attract Internet traffic to its competing web sites, Respondent is using them to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web sites by Complainant. This fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Secondly, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in May 2020 (information furnished to the Forum by the registrar shows creation dates). Complainant’s SAFRA mark has long been used in the financial services industry and is known throughout the world. Respondent copied that mark verbatim into the Domain Names. It uses the mark in the name of the entity advertised on the resolving web sites, which entity offers the same types of services as Complainant. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <safrainvestmentgroup.us> and <safraservices.us> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
October 6, 2021
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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