WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Servicios de Administración Previsional S.A. v. Ivan Pablo Cabrera Bustillos
Case No. D2020-3284
1. The Parties
Complainant is Servicios de Administración Previsional S.A., Chile, represented by Estudio Carey y Cia. Ltda., Chile.
Respondent is Ivan Pablo Cabrera Bustillos, Bolivia (Plurinational State of).
2. The Domain Name and Registrar
The disputed domain name is <previred.org> which is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2020.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on January 8, 2021. This Panel finds that it was properly constituted. This 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
Complainant is a Chilean company engaged in the provision of services relating to the online filing and payment of pension contributions.
Complainant has rights, among others, over (i) the PREVIRED mark for which it holds registration No. 1009509, originally granted under registration No. 647249 on October 30, 2002, and (ii) the PREVIRED.COM mark for which it holds registration No. 1009511, originally granted under registration No. 647250 on October 30, 2002, both in classes 35, 36 and 42, with the Chilean National Institute of Industrial Property.
Complainant appears as the registrant of the domain names <previred.cl> created on November 29, 2000, and <previred.com> created on December 5, 2000, among others.
The disputed domain name was registered on March 11, 2020. According to the Complaint, at the time it was filed, the disputed domain name did not resolve to an active website.1
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows.
Complainant has formed the most important network of pension institutions operating in Chile, including pension management companies, the social pension institution, the national health fund, private health providers and the main companies that operate voluntary pension savings, providing services relating to the online filing and payment of pension contributions and other services associated therewith. The process created by Complainant for collecting pension contributions is certified under the standard ISO/IEC 27001:2013, thus continuously implementing the best practices in the field of information security relating to preserving availability, confidentiality and integrity of the information.
Complainant has registered in Chile several marks containing the term “previred”. The disputed domain name is identical to Complainant’s PREVIRED mark and domain name <previred.cl>. The disputed domain name comprises one single element, entirely reproducing Complainant’s created and registered mark.
Respondent does not have any rights or legitimate interests in the disputed domain name. No consumer fails to associate the PREVIRED mark with Complainant’s business and the quality of its services. Respondent’s use of PREVIRED in the disputed domain name is not a coincidence or mere error; it constitutes an action seeking to make consumers believe that there exists an association with Complainant and its services. No such association exists and creating such impression is entirely unlawful.
Respondent has never used the term “previred” to offer any type of goods and/or services prior to the registration date of the disputed domain name, and does not have or has had any connection with Complainant or obtained authorization for the use of PREVIRED. The disputed domain name was registered in March 2020, whereas Complainant registered the first PREVIRED mark in 2002 and the domain name <previred.com> in 2000. Any person visualizing the disputed domain name will immediately, reasonably and naturally be led to believe that it concerns a website that offers Complainant’s services, which is untrue.
Respondent is a natural person who does not have and never has had any legal entity under the name “previred” nor has been commonly known by the disputed domain name. A simple Google search of Respondent’s name shows no result relating to any use of the “previred” term.
Respondent’s disputed domain name and website create a false association with Complainant’s marks, attracting Internet users, potential clients and/or investors with the sole intent to cause harm and disruption to Complainant’s business. That could cause that Internet users think that they are logging into a legitimate website of Complainant, while erroneously logging into Respondent’s website, not being aware of the error until after reviewing the contents of Respondent’s webpage, and therefore after Complainant’s reputation has been tarnished.
Respondent has registered the disputed domain name in bad faith, even though the website at the disputed domain name is currently inactive.
Respondent’s bad faith is evident from the fact that the disputed domain name was registered to hinder or affect Complainant’s business, as well as to obtain illegitimate revenues by free-riding on Complainant’s prestige and its services. It is impossible to maintain that Respondent was unaware of Complainant’s services and associated prestige.
Respondent did know of the existence of Complainant’s prior rights over the PREVIRED marks and domain names; the disputed domain name is identical to the marks registered by Complainant and to several of its domain names containing PREVIRED. Thus the registration of the disputed domain name was made in bad faith with the purpose of leading Internet users who intend to enter Complainant’s website, to err and enter the disputed domain name, with the sole intent to cause harm and disruption to Complainant’s business.
The registration of a domain name comprising the name and mark of another is evidence of bad faith because it will trick Internet users who intend to visit the mark owner’s website into visiting Respondent’s, which has been used to cause damage to consumers while disrupting and hindering Complainant’s operations, and could be used in such a manner at any time.
Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview 3.0). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the PREVIRED mark.
Since the addition of a generic Top-Level Domain (i.e., “.org”) after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark (see section 1.11 of the WIPO Overview 3.0). Taking into account the aforesaid, it is clear that the disputed domain name is identical to Complainant’s mark since it just reproduces in its entirety said mark.
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that it has no connection with Respondent, that Respondent is not authorized to use the PREVIRED mark, that Respondent is not commonly known by the disputed domain name, and that the disputed domain name will result in its association with Complainant’s business and PREVIRED mark. The evidence in the file shows that Complainant is the registrant of the domain names <previred.cl> and <previred.com> and that the latter resolves to an active website which features Complainant’s activities. The disputed domain name is substantially identical to said Complainant’s domain names and mark. Although there appears to be no active website currently associated with the disputed domain name, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.2 In the file, there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Taking into consideration that the registration and use of Complainant’s PREVIRED mark preceded the registration of the disputed domain name, and the nature of Complainant’s Internet-based business, this Panel is of the view that Respondent should have been aware of the existence of said Complainant’s mark at the time it obtained the registration of the disputed domain name.
The concept of a domain name “being used in bad faith” is not limited to a domain name with an active website on the Internet (see section 3.3 of the WIPO Overview 3.0). In the case at hand, Respondent’s bad faith may be deduced from the following facts: (i) Complainant is a well-established company; (ii) the disputed domain name incorporates Complainant’s mark in its entirety, without any distinguishing feature; (iii) Respondent is using Complainant’s mark in the disputed domain name without Complainant’s authorization; (iv) the substantial identity of the disputed domain name with Complainant’s domain names <previred.cl> and <previred.com>; (v) the lack of any basis in the file to conceive a legitimate use of the disputed domain name by Respondent; and (vi) Respondent’s failure to appear at this proceeding.
In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its identity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s PREVIRED mark and potentially deceive third parties, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <previred.org> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: January 22, 2021
1 Since Complainant supplied no evidence supporting its allegation, on January 15, 2021, this Panel tried to access the disputed domain name and noticed that it did not resolve to an active website since an error message was displayed showing, among others, “No se puede acceder a este sitio web Comprueba si hay un error de escritura en www.previred.org”. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”. See also section 2.1 of the WIPO Overview 3.0.
3 See Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Caso No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”. See also Flight Refuelling Ltd v. Neog Inc, WIPO Case No. D2005-0503: “there is no website that corresponds to the domain name [...] the Panel is satisfied that Respondent is acting in bad faith. The domain name is unconnected with the business of Respondent, and intimately connected with that of Complainant. The Panel cannot conceive of a situation in which Respondent could use the name in good faith, and Respondent has not suggested that there are any.”
4 See Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”.