WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Safra I.P. Holding Co. v. Virgilio Trevisano
Case No. D2014-1932
1. The Parties
The Complainant is Safra I.P. Holding Co. of Luxembourg City, Luxembourg, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is Virgilio Trevisano of Arnesano, Italy.
2. The Domain Name and Registrar
The disputed domain name <safradiamonds.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on October 31, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2014.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on December 10, 2014. 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 Safra I.P. Holding Co. which is a part of the Safra Group. The Safra Group is an internationally well-known and renowned group controlled by the Safra Family. The Safra Group provides, among others, services in banking and financial institutions, industrial operations and telecommunication. The Complainant operates worldwide.
The Complainant is the owner of several trademarks in connection with the name SAFRA throughout the world. The trademark SAFRA with the International Registration Number. 704454 was registered on October 28, 1998.
The disputed domain name was registered on March 19, 2014. The Respondent appears to be using the domain name in dispute to provide services in relation with diamonds. The website “www.safradiamonds.com” has been inactivated by the service provider Aruba S.p.A. at the Complainant’s request.
5. Parties’ Contentions
The disputed domain name <safradiamonds.com> is identical or closely similar to the Complainant’s trademark. In particular, the remaining domain name elements differ only from the said trademark by the addition of the generic term “diamonds”. The addition of the generic term “diamonds” is not sufficient to avoid confusion and similarity with the registered trademark. It is most likely that the relevant public assumes that “Safra Diamonds” is company of the Safra Group.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent claimed on the website of the disputed domain that he started his activities in the year 2006. There is no evidence that proves the existence of the Respondent since 2006. The Respondent used the same pictures and even the same history of another diamond jewelry boutique. The similarity of both websites is evident. By taking advantage of the renowned name Safra and the good reputation of the Safra Family combined with a website that is similar to the older website of a third-party jewelry boutique, the Respondent cannot show any rights or legitimate interests with respect to the use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent reproduced the older website layout of a third-party. This shows per se a lack of good intentions. In addition, the category “Contact Us” stated members of the Safra Family as President, CEO, responsible persons for Marketing and Factory and as Seller. This demonstrates the Respondent’s bad faith. By choosing the expression “Safra” in the domain name, the Respondent’s intention to divert and mislead the relevant public seems to be obvious. The Respondent connected the disputed domain name with the strength and distinctiveness of the trademark and the family name Safra, with the intention to create a likelihood of confusion with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to the consensus view of UDRP panels, the addition of generic terms such as “diamonds” to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0.”), paragraph 1.9.; see also the similar cases with the additional generic term “diamonds”, BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338; Blue Nile, Inc. v Mrs. Jello, LLC, WIPO Case No. D2005-0639).
In this case, the addition of the generic term “diamonds” is not sufficient to avoid confusion between the trademark SAFRA and the domain name <safradiamonds.com>, particularly as the word diamonds is connected with the name SAFRA that provides, among others, financial services in which the trade of precious raw materials is part of the business.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant therefore fulfills paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the Complainant’s contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
Moreover, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has thus fulfilled paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is well established that the reproduction of a third-party website and the publication of false information to create confusion with the Complainant is considered as bad faith (see DFDS A/S v. Milena Yurevna Valenskaya, WIPO Case No. D2012-0840; Texts From Last Night, Inc. v. WhoIs Privacy Services Pty Ltd / Wang Shaopeng, WIPO Case No. D2011-1266; Bluewater Rubber & Gasket Co v. Mrs Sian Jones / Easyspace Privacy, WIPO Case No. D2010-2112). In consideration of the evidence submitted by the Complainant, this Panel is satisfied that the Respondent copied the website of another diamond jewelry boutique, i.e. similar pictures and identical wording, adapted the company’s history and wrongfully stated Safra family members in the category “Contact Us” as President, CEO, responsible persons for Marketing and Factory and Seller. In the absence of evidence to the contrary and rebuttal from the Respondent, the reproduction of another’s website and the indication of false information constitutes bad faith and use under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has established the Respondent’s bad faith under paragraph 4(b)(iv) 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 name <safradiamonds.com> be cancelled.
Date: December 23, 2014