WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Itau Unibanco S.A. v. Domain Administrator, PrivacyGuardian.org / S W H Company, Stepeh Williams
Case No. D2019-1542
1. The Parties
The Complainant is Itau Unibanco S.A., Brazil, represented by Shearman & Sterling LLP, United States of America (the “United States”).
The Respondent is Domain Administrator, PrivacyGuardian.org, United States / S W H Company, Stepeh Williams, France.
2. The Domain Name and Registrar
The disputed domain name <kineainvestments.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019. On July 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2019, 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 Complainant on July 8, 2019 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 July 13, 2019.
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 July 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on August 12, 2019. 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 the owner of United States trademark registrations for KINEA, most of which were registered in 2011, and the domain name “kinea.com.br” (Annex 4 of the Complaint). Additionally, the Complainant has been using the KINEA name and trademark as part of the corporate name of one of the Complainant’s subsidiaries, Kinea Investimentos LTDA, since its founding in 2007. The Complainant’s trademarks are used and registered in Class 36 for administration of third parties’ financial assets; organization in the nature of financial management of third parties’ assets; investment funds administration; and stock and securities portfolio administration.
The Respondent registered the disputed domain name on January 26, 2019 via a PrivacyGuardian service and it was used to send fraudulent emails to third parties. Currently, the disputed domain name resolves to a pay-per-click website. The Complainant first became aware of the disputed domain name in April 2019.
5. Parties’ Contentions
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark, KINEA, as it contains that mark in its entirety including its dominant feature. The Complainant says that its use of the KINEA trademark predates the registration and use of the disputed domain name by the Respondent or entity on whose behalf it was registered.
The Complainant contends that the Respondent has used the disputed domain name to fraudulently represent itself as the Complainant and confuse the Complainant’s customers and other third parties by creating a false association between the Complainant and the Respondent. The Respondent has been using the disputed domain name to fraudulently send emails to third parties offering financial services under the name of the CEO of Kinea Investimentos LTDA. According to the Complainant, the Respondent thus seeks to exploit the Complainant’s reputation, divert consumers away from the Complainant and lure them into depositing large sums of money into a foreign bank account that is not controlled by the Complainant.
Further, the disputed domain name does not point Internet users to a functional website and does not advertise or offer any goods or services of its own. The Complainant asserts that no use has been made of the disputed domain name for a bona fide offering of goods or services. It has only been used to send fraudulent emails in the Complainant’s name to ultimately defraud recipients. The Respondent is not using the disputed domain name in connection with a legitimate commercial purpose, according to the Complainant.
In the same manner, the disputed domain name is being used to take unfair advantage of, abuse, and engage in behavior detrimental to the Complainant’s KINEA brand and business. The Complainant says that the disputed domain name was registered primarily for the purposes of taking advantage of the Complainant’s reputation, disrupting the Complainant’s business, intentionally misleading third parties to believe that the false services offered in connection with the disputed domain name were associated with the Complainant and defrauding and stealing from such third parties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s KINEA trademark, but it contains that trademark in its entirely and in an immediately recognizable form. The addition of the term “Investments” to the mark KINEA in the disputed domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
Therefore, the Panel holds that the disputed domain name is confusingly similar to the KINEA trademark of the Complainant.
B. Rights or Legitimate Interests
The disputed domain name has been used for the purpose of instigating a fraudulent scheme relying on the impersonation of an officer of the Complainant. There is no indication before the Panel that the Respondent has any rightful connection with the term “Kinea” or has any legitimate reason to use that mark or incorporate it in a registered domain name. The Respondent did not in any way respond to the Complainant’s contentions.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant asserts that the Respondent has been using the disputed domain name to generate an email address that enables it to impersonate an officer of the Complainant. The Respondent has sent emails to recipients, which are designed to mislead them into thinking there is a legitimate connection between the sender and the Complainant and persuade them to part with sums of money to the Respondent’s advantage. This is a fraudulent scheme and clearly in bad faith. It is apparent that the disputed domain name was deliberately registered with this scheme in mind, and thus in the full knowledge of the business and reputation of the Complainant and the resulting resonance the disputed domain name would have with consumers. The composition of the disputed domain name further reinforces the conclusion that the registration itself was in bad faith. The reputation of the Complainant was established in the market well before the registration date of the disputed domain name.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
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 <kineainvestments.com> be transferred to the Complainant.
William A. Van Caenegem
Date: August 23, 2019