WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kaszek Management SA v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Fred Shile
Case No. D2021-1515
1. The Parties
The Complainant is Kaszek Management SA, Uruguay, represented by G. Breuer, Argentina.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Fred Shile, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <kaszekventures.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2021, 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 May 19, 2021 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 May 19, 2021.
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 May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 28, 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 Kaszek Management SA, an investment company founded in 2011 in Uruguay, with offices in Buenos Aires, Mexico City, Montevideo, and São Paulo.
The Complainant has rights, via its affiliate Kaszek Management (Cayman) Ltd, the following trademark registrations in Brazil, and the United States:
August 14, 2012
December 9, 2014
The Complainant is the owner of the domain name <kaszek.com>.
The disputed domain name was registered on March 24, 2021.
5. Parties’ Contentions
I. Identical or Confusingly Similar
That it is an investment company founded in 2011, with offices in Uruguay, Buenos Aires, Mexico City, Montevideo, and São Paulo.
That it owns registrations for the trademark KASZEK in Brazil, and the trademark KASZEK VENTURES in the United States.
That the KASZEK trademark is the acronym of the surnames of the founders of the Complainant, Hernan Kazah and Nicolas Szekasy, and therefore is not a dictionary or common word.
That the disputed domain name is identical to the KASZEK VENTURES trademark.
II. Rights or Legitimate Interests
That the Respondent does not own trademark rights in relation to KASZEK or any related trademark.
That the trademark KASZEK is associated with the Complainant, and that therefore the disputed domain name constitutes a potential risk of confusion for consumers, who might think that the disputed domain name is related to the Complainant or one of its subsidiaries.
That the Respondent is trying to cause confusion and create the notion of a non-existent relationship between the Respondent and the Complainant.
That the Respondent registered the disputed domain name in order to carry out illegal activities, and that the business activities of the Complainant are being hindered by the Respondent’s actions.
III. Registered or Used in Bad Faith
That the Respondent was aware of the existence of the KASZEK trademark and the activities surrounding it, and that the registration of the disputed domain name was made in bad faith to take advantage of the Complainant’s goodwill.
That the Respondent is not making a bona fide use of the disputed domain name, and that this is a case of cybersquatting.
That the registration of the disputed domain name was made in order to create an association with the Complainant for phishing purposes.
That on April 1, 2021, a representative from an affiliated company of the Complainant received several emails from the account “[…]@kaszekventures.com”, requesting him to transfer USD 364,000.00 to a third party located in Mexico City.
That there is no doubt that the Complainant was a victim of a scam or phishing attempt made by the Respondent, in which the disputed domain name was used.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:
(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 with respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In view of the Respondent’s failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, (see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
A. Identical or Confusingly Similar
The Complainant has filed evidence showing that Kaszek Management (Cayman), Ltd owns registrations for the trademarks KASZEK in Brazil and KASZEK VENTURES in the United States, where the Respondent appears to be located.
The Panel finds that the disputed domain name <kaszekventures.com> is identical to the Complainant’s trademarks KASZEK and KASZEK VENTURES, as it incorporates them in their entirety [see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), WIPO Case No. D2007-1699; and F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323].
The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO, WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).
In light of the above, the first element of the Policy has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the 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, even if it did no acquire trademark or service mark rights; or
(iii) 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.
The Complainant has alleged that it is not related to the Respondent, and that it has not authorized the said Respondent to use its trademark KASZEK or KASZEK VENTURES. These allegations have not been contested by the Respondent (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The Respondent has not challenged these allegations.
The Complainant has submitted evidence showing that the Respondent has used the disputed domain name to impersonate a partner and founder of the Complainant, by sending fraudulent emails from the illegitimate email address “[…]@kaszekventures.com” to a representative of an affiliated company of the Complainant, to divert funds to a third party.
According to the evidence filed by the Complainant, the disputed domain name was used in several emails, one of which reads: “[…] I excused myself from a call with our advisors, trying to conclude a DF. I thought I could quickly run a situation by you and see how you can assist us. I will go ahead and explain here for better understanding; The situation is regarding a vendor/partner in Mexico. We are looking to remit funds (as balance of a previous payment) to them, to service a DF. Because of some internal setbacks at our end, it would take till next week before we can process said payment and we are trying to avoid that, hence the decision to reach out to you. For this reason, I implore you, see if you could have your finance do a bank wire to said partner on our behalf. And we will reimburse you on or before Friday (next week). Is this something you can do for us? It would be greatly appreciated. Kindly write back and let me know. Best, Nicolas […].”
The aforementioned behavior constitutes fraudulent conduct and therefore cannot be deemed to have taken place in good faith (see Instagram, LLC v. Temp Name Temp Last Name, Temp Organization, WIPO Case No. D2019-0249; TRAVELGENIO, S.L. v. Rosabel Maduro, WIPO Case No. D2017-1392; Olayan Investments Company Establishment v. Namesco Limited d/b/a Globaldomainprivacy.net / Jeffrey Nicholson, WIPO Case No. D2012-1303). On the contrary, the acts of impersonation and phishing perpetrated by the Complainant are illegal, and thus cannot confer to him rights to or legitimate interests in the disputed domain name (see section 2.13.1 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283).
The Respondent’s use of the disputed domain name shows that the Respondent has targeted the Complainant, and a representative of an affiliated company. Therefore, the Respondent’s conduct cannot be considered as a legitimate, noncommercial, or fair use of the disputed domain name (see Wachovia Corporation v. Peter Carrington, WIPOCase No. D2002-0775; and Edmunds.com, Inc. v. Digi Real Estate Foundation WIPO Case No. D2006-1043).
Accordingly, the requirements of the second element of the Policy have been met.
C. Registered and Used in Bad Faith
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your 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, provided that the respondent has engaged in a pattern of such conduct; 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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Complainant has ascertained its rights over the KASZEK trademark and the KASZEK VENTURES trademark. The dates of registration of the Complainant’s trademarks significantly precede the date of registration of the disputed domain name.
Taking the above into consideration, as well as the fact that the Respondent has targeted the Complainant, it is clear that the Respondent knew about the Complainant when the disputed domain name was registered, which amounts to bad faith registration under the Policy (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur WIPO Case No. D2019-0208).
As discussed previously, the Respondent has impersonated a partner of the Complainant, as part of a phishing scheme to divert money from an affiliated company of the Complainant to a third party. This fraudulent conduct clearly constitutes bad faith use under the Policy (see section 3.4 of the WIPO Overview 3.0; see also BHP Billiton Innovation Pty Ltd. v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364; National Westminster Bank plc v. Sites / Michael Vetter, WIPO Case No. D2013-0870; Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov / Privacy Protect, LLC (privacy Protect.org), supra; Télévision Française 1 v. Kenechi Arene, WIPO Case No. D2019-1578).
In light of the above, the third element of the Policy has been met.
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 <kaszekventures.com> be transferred to the Complainant.
Date: July 8, 2021