WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

XP Investimentos S/A, XP Investments US, LLC v. Enrico Anders

Case No. D2021-3065

1. The Parties

The Complainants are XP Investimentos S/A, Brazil, and XP Investments US, LLC, United States of America (“United States”), represented by Dannemann Siemsen, Brazil.

The Respondent is Enrico Anders, United States, represented by Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., United States.

2. The Domain Name and Registrar

The disputed domain name <xptax.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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 October 1, 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 amendment to the Complaint on October 6, 2021.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Response was filed with the Center on October 30, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 10, 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 Complainants are part of the “XP” corporate group which provides a range of investment advisory and financial management services by reference to trademarks based on “XP”. They are both subsidiaries of XP Inc.

In December 2010, the second Complainant was incorporated in the United States under the name XP Securities LLC. In October 2019, the second Complainant changed its name to XP Investments LLC.

In September 2012, the first Complainant was incorporated in Brazil. It uses stylized versions of the trademarks “XP” and “XP investimentos”:

logo and logo

The “XP investmentos” trademark features “XP” against the same box background and the word “investimentos” in a lower case sans serif font adjacent to the box. Various other businesses in the group use the “XP” box logo in conjunction with other descriptive terms such as “educacao”, “corretora de seguros”, “advisory”, “asset management” and “private” to indicate different functionality offered through those businesses.

According to the Complaint, the first Complainant’s business has three million customers and over USD 120 billion in funds in custody. In 2016, the first Complainant spent approximately USD 10 million in advertising with increasing levels of advertising expenditure in subsequent years.

In December 2019, XP Inc. publicly listed its shares on the American Stock Exchange (NASDAQ) through an initial public offering estimated at over USD one billion. It was the largest public offering by a Brazilian-related entity in the United States at the time.

In Brazil, the first Complainant is the owner of a number of registered trademarks including:

(a) Registration No. 829818073, XP (word), which was granted on November 9, 2010;

(b) Registration No. 829818065, for the “XP” (design, box logo), which was also granted on November 9, 2010;

(c) there are also later registrations for versions of the box logo with “investementos”,Registration No. 900480793 or “private”, Registration No. 915854767, or “asset management”, Registration No. 916171361, and registrations for XP Inc., Registration Nos 917514890 and 918309263. Apart from the two registrations based on XP Inc., these trademarks were all registered before the Respondent registered the disputed domain name.

According to the translation provided in the Complaint, the trademarks (apart from the “XP investimentos” trademark) are registered, inter alia, for financial and investment services in International Class 36. The services specified do not expressly cover accountancy or taxation advice services.

The Brazilian trademarks were originally registered in the name of another member of the corporate group but “a few months ago” were transferred into the first Complainant’s name.

In the United States, the second Complainant is the owner of a number of registered trademarks including:

(a) Registration No. 5,807,966, “XP investments” (design, in the negative image of the “box logo”) which was filed on April 19, 2019, registered on July 16, 2019 and claims first use in commerce in 2018;

(b) Registration No. 6,164,812, XP (word), which was filed on December 18, 2018, registered on September 29, 2020 and claims first use in commerce in February 2012.

(c) Registration No. 6,154,043, XP (design, box logo negative image), which was filed on December 18, 2018, registered on September 15, 2020 and claims first use in commerce in February 2012;

(d) Registration No. 6,158,898, XP PRIVATE, which was filed on December 18, 2018, registered on September 22, 2020 and claims first use in commerce in May 2018; and

(e) Registration No. 6,154,042, XP private (design, negative image), which was filed on December 18, 2018, registered on September 15, 2020 and claims first use in commerce in May 2018.

These trademarks are registered, inter alia, for financial and investment services in International Class 36.

On September 24, 2019, the Respondent registered the disputed domain name. According to the Response, the Respondent is the principal of XP Tax and Accounting Services LLC, which was registered in Florida in the United States on October 14, 2019.

The Respondent appears to have registered the disputed domain name for use by his company in connection with its business. Accordingly, the disputed domain name resolves to a website promoting tax and accounting services in the United States for Brazilian immigrants and investors.1

When the Complaint was filed the website at the disputed domain name and related social media accounts included a logo in the following form:

logo

Sometimes the box element was depicted with square corners. The Respondent also tried unsuccessfully to register this logo form (with the rounded corners) as a trademark in the United States: Application No. 88830038. The Application was unsuccessful in the face of the Complainant’s prior registered trademark.

After the Complaint was filed, the “box element” appears no longer to be in use.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the 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.

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

A. Identical or Confusingly Similar

The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights.

There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainants have proven ownership of the registered trademarks referred to in section 4 above including in particular (for present purposes) the word marks for XP.

The Respondent contends that the disputed domain name is not identical nor confusingly similar to the Complainants’ trademarks because, first, the two letter combination “XP” is not inherently distinctive but is used by many different businesses and institutions in many different contexts and, secondly, the scope of the Complainants’ trademarks do not include the Respondent’s tax, accounting, and bookkeeping services.

These arguments are misplaced as far as the first element goes.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.

 

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top- Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. Neither is the case here.

Disregarding the “.com” gTLD and the design elements, therefore, the disputed domain name consists of the Complainants’ registered trademark XP and the term “tax”. As this requirement under the Policy is essentially a standing requirement, the addition of the term “tax” does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainants’ trademark remains visually and aurally recognisable within the disputed domain name.

Accordingly, the Panel finds that the Complainants have established that the disputed domain name is confusingly similar to the Complainants’ trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainants. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainants. See e.g., WIPO Overview 3.0, section 2.1.

The Complainants state that they have not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The Respondent does not dispute these matters.

The Respondent’s use of the disputed domain name in connection with the tax and accounting business does not constitute legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii).

The disputed domain name is plainly not derived from the Respondent's own name.

However, the Respondent’s company and the disputed domain name both have the acronym “XP” in common as their first and distinguishing element.

So far as the record in this dispute shows, the Respondent incorporated the company under that name in October 2019, shortly after the Respondent registered the disputed domain name.

The Panel accepts that someone planning a new business or activity may well wish legitimately to secure a domain name in advance of adoption of the business’ name or trademark. So the Panel would not consider that timing alone disentitling. Nonetheless, the Respondent registered both the disputed domain name and company many years after the Complainants and their corporate group began using their trademarks.

All of these considerations would usually be sufficient to give rise to the required prima facie case.

The Respondent does not expressly deny knowledge of the Complainants and their trademark. The Response does claim that the Respondent chose “XP” to denote “expertise” and “experience” and points out that Microsoft named a release of its Windows product Windows XP to stand for “eXPerience”.

As already mentioned, the Respondent contends that he and his business is simply one of many in a crowded field who choose to use the acronym “XP” and is doing so in a very different field to the Complainants. According to the Respondent, there is no danger of confusion. The Respondent contends (in part):

“People, including Brazilians, looking for assistance in filing their taxes or forming a new business entity or obtaining bookkeeping services do not look to an investment management company or stock brokerage for these services, and vice versa.”

The Panel is unable to agree with the Respondent that the circumstances of this case give rise to rights or a legitimate interest in the disputed domain name.

First, the Respondent’s website features “XPtax” in a logo form which very closely resembles the logo forms of the Complainants’ trademarks. The Respondent’s explanation of its adoption of the disputed domain name does not address this resemblance. Moreover, the degree of resemblance does not strike the Panel as coincidental. Therefore, the Respondent’s explanation does not overcome this.

Secondly, the Respondent’s website is or, when the Complaint was filed, was in Portuguese and clearly targeted at Brazilians.

While the Respondent claims that the Complainants are not famous like “IBM” and “GE”, the evidence in this proceeding indicates that the Complainants are, or are part of, a very significant undertaking. Viewed objectively, the manner of the Respondent’s use on the website appears designed to convey to Brazilians that the business is the tax or accounting arm of the Complainants’ business.

That conclusion appears all the more likely bearing in mind that the first Complainant in Brazil and the second Complainant in the United States (albeit to a lesser extent) have demonstrated use of the XP “box logo” trademark in connection with a range of different financial services and, as a consequence, have used their box logo trademark with a number of functional identifiers.

The Panel is reinforced in that conclusion by the United States Patent and Trademark Office’s objection to the Respondent’s attempt to register the “XP tax accounting services” logo Application No. 88830038) because of the likelihood of confusion with the second Complainant’s Registered Trademark No. 5,807,966 (XPinvestments and box logo). Following that objection, the Respondent withdrew the trademark application.

While the Panel has no reason to doubt that the Respondent and his company are using the disputed domain name in connection with a genuine tax and accounting business, the use of the disputed domain name which so closely resembles the Complainants’ trademark in a manner which appears to target the Complainant’s trademark does not qualify as a right or legitimate interest under the Policy.

Accordingly, the Respondent has not rebutted the prima facie case and the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

For the reasons explained in section 5.B. above, the Panel considers that the Respondent was in fact aware of the Complainants and their trademarks when he registered the disputed domain name.

As also explained in section 5.B. above, the Panel also considers that viewed objectively the Respondent registered and has been using the disputed domain name to capitalise on its resemblance to the Complainants’ trademarks – in particular noting the use at the time the Complaint was filed of the box logo closely resembling the Complainant’s on the Respondent’s site which was directed in Portuguese to people from Brazil. Despite the Respondent’s contentions to the contrary, therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. Decision

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, <xptax.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: December 24, 2021


1 Unless it is necessary to distinguish between the Respondent personally and his company, the Panel will refer to the website as the Respondent’s website for ease of exposition.