Tozzini, Freire, Teixeira e Silva Advogados v. Ernesto Siempro
Case No. D2015-1002
1. The Parties
The Complainant is Tozzini, Freire, Teixeira e Silva Advogados of Sao Paulo, Brazil, self-represented.
The Respondent is Ernesto Siempro of Jerusalem, Israel.
The disputed domain name (the “Domain Name”) is registered with RU-CENTER (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2015. On June 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 22, 2015, the Center sent an email to the Parties stating that the language of the Registration Agreement for the Domain Name was Russian, as indicated by the Registrar. The Center invited the Complainant to provide evidence of an agreement between the Parties to the effect that the proceedings should be conducted in English, submit the Complaint translated into Russian, or to submit a further request for English to be the language of proceedings. On June 24, 2015, the Complainant submitted a request that English be the language of proceedings. The Respondent did not file any submissions in this regard.
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 in both Russian and English, and the proceedings commenced on June 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2015.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 27, 2015. 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 in this proceeding is a Brazilian law firm. The Complainant owns Brazilian trademark registration No. 903416689 in the mark TOZZINI FREIRE that was filed on February 25, 2011 and was registered on November 18, 2014. On October 7, 2010, the Complainant registered the domain name that directs to the law firm’s website.
The Respondent registered the Domain Name on October 13, 2014.
5. Parties’ Contentions
The Complainant claims that the Domain Name is almost identical and confusingly similar to the Complainant’s registered trademark TOZZINI FREIRE, which was registered by the Brazilian Patent and Trademarks Office since February 2011 and the Complainant’s domain name , which was registered on September 24, 1999. The Complainant claims that the confusion is exacerbated by the Respondent’s attempts to use the Domain Name to pose as an employee of the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because he registered the Domain Name in October 2014, long after the Complainant worked in the legal field and after the Complainant registered an almost identical domain name and the trademark. The Complainant alleges that the Respondent mentioned the Domain Name in several emails that he sent to third parties regarding purported business handled by one of the Complainant’s partners and with requests to transfer funds to the Respondent to close the purported deals. The Complainant claims that there is no evidence that the Respondent used the Domain Name in connection with bona fide offering of goods or services.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith based on the following allegations. The Complainant claims that shortly after the Domain Name registration the Respondent sent emails about purported acquisition deals that were allegedly handled by one of the Complainant’s attorney. Some of the emails requested that recipients transfer money to close the purported transaction. The emails also provided its recipients with a purported email of one of the Complainant’s attorneys, which was associated with the Domain Name and looked virtually identical to one of the Complainant’s attorneys real email address. The Complainant argues that the fraudulent emails started shortly after the Respondent registered the Domain Name and the Respondent tried to take advantage of the Complainant’s reputation in his attempts to make the recipients to transfer funds to the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant claims that the Registration Agreement is written in two languages: English and Russian and provides a copy of the bilingual agreement. The Registrar, however, advised the Center that the language of the Registration Agreement for the Domain Name was Russian. The Registrar’s website reveals two versions of the Registration Agreement: A bilingual1 version and a Russian2 version. Since in this particular case the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would have been Russian.
The Complainant requested that the language of the proceeding be English because the Respondent is proficient in English. The Complainant argues that the Respondent sent an email in English in the past. However, the Complainant provided no clear evidence that linked the Respondent to the sender of the email. Therefore, the Panel cannot conclude that the Respondent is proficient in English.
The Panel, however, determines that English should be the language of the administrative proceeding. It is established practice to make a decision regarding the language of the proceeding to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593. In the present case, the Respondent did not object to the Complainant’s request for English to be the language of the proceeding. The Complainant, which is not proficient in Russian, will have to incur considerable expense if it is forced to translate the Complaint into Russian. The Panel, therefore, determines it will be fair to both parties to conduct the proceeding in English.
6.2. General discussion
In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence3 each of the following UDRP elements4:
(i) the Domain Name registered by the Respondent 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights regardless of the date of its registration and the goods and/or services for which it is registered. Because the evidence shows that the Complainant owns a registered TOZZINI FREIRE trademark, it has established that it has trademark rights in the TOZZINI FREIRE mark.
The Panel determines that the Domain Name is confusingly similar to the Complainant’s mark. “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.”5 Apart from a hyphen and the top-level domain suffix “.com”, the Domain Name is identical to the Complainant’s trademark. And it is well established that adding the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.6
The Panel therefore finds that the Complainant fulfilled the first condition of paragraph 4(a) of the UDRP.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant may make out a prima facie7 showing that the Respondent has no rights or legitimate interests in the Domain Name.8
Paragraph 4(c) of the UDRP provides that the Respondent may establish rights or legitimate interests in the Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the 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 Domain Name, even if the Respondent has not acquired 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 not authorized the Respondent to use its TOZZINI FREIRE trademark. There is also no evidence that the Respondent is commonly known by the Domain Name. Finally, there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the Domain Name. Based on the unrefuted evidence submitted by the Complainant, the Panel finds that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
The Panel, therefore, finds that the Complainant has established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of paragraph 4(a) of the UDRP has been established.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires a “finding that both the registration and use were in bad faith.”9
To support its claim that the Respondent registered and used the Domain Name in bad faith, the Complainant alleges that the Respondent is associated with third party-disseminated emails requesting recipients to transfer money to a bank account allegedly belonging to one of the Complainant’s partners to close an acquisition deal and referring to the […]@tozzini-freire.com email, which was created using the Domain Name, as a contact email for the attorney purportedly handling the deal. The Complainant claims that the […]@tozzini-freire.com email is very similar to the real email address of one of the Complainant’s partners, […]@tozzinifreire.com.br. The Complainant argues that the third party emails were used to give the impression that the emails originated from an entity affiliated with the Complainant and to engage in a fraudulent scheme.
While the Panel finds that the argument concerning fraud is noteworthy, it is, by itself, inadequate to establish the bad faith registration and use of the Domain Name because there is no clear evidence that linked the Respondent to the fraudulent and allegedly criminal conduct of the third party sender of emails.
However, when the Complainant’s argument is considered in light of cumulative circumstances of this case, it is likely that the Respondent registered and is using the Domain Name in bad faith.
First, the Respondent knew of the Complainant's trademark and trade name when registering the Domain Name. While the Domain Name was registered five weeks before the Complainant registered its trademark, the evidence shows that the Complainant had used the TOZZINI FREIRE trademark and established rights in the mark well before the registration date of the trademark. Also, four years prior to the Domain Name registration, the Complainant registered the domain name, which is virtually identical to the Domain Name.10
Second, the evidence establishes that the address provided by the Respondent with registration of the Domain Name is false. Several prior panels have found that deliberately furnishing false contact information to a domain name registrar can constitute bad faith in registration and use. See Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111, where “false or misleading” contact information led to a finding of bad faith in registration and use. See also, Chanel v. 1, WIPO Case No. D2003-0218, where panel found that use of false or misleading information for the registration of the domain name to be an additional circumstance evidencing bad faith in the registration and use of the domain name.
Third, the Respondent did not contest the Complainant’s allegations that the Domain Name was registered and is being used in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Date: August 7, 2015