WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Servicios de Administración Previsional S.A. v. Juan de Dios Crisostomo Carrasco

Case No. D2020-3283

1. The Parties

The Complainant is Servicios de Administración Previsional S.A., Chile, represented by Carey y Cia. Ltda., Chile.

The Respondent is Juan de Dios Crisostomo Carrasco, Chile.

2. The Domain Name and Registrar

The disputed domain name <previred.net> 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 the same day, 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.

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 the Respondent of the Complaint, and the proceedings commenced on December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2021.

The Center appointed Felipe Claro as the sole panelist in this matter on February 5, 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 a Chilean company that provides services related to the declaration and online payment of pension contributions.

The Complainant allows both employers of companies or private homes, as well as independent workers, to make the payment of pension contributions easily, safely, and free of charge.

The Complainant has built an important network of pension institutions operating in Chile, including Pension Managing Companies, Social Pension Institutions, National Health Found, Private Health Providers, Unemployment Managing Funds and the main companies that operate Voluntary Pension Savings. The process created by the Complainant for collecting pension contributions is certified under the world standard ISO / IEC 27001: 2013, and it is continuously implementing the best practices in the field of information security, which are related to preserving availability, confidentiality, and the integrity of the information.

The Chilean trademark PREVIRED.COM with the registration number 1009509 and the domain name <previred.com>, among other similar trademarks and domain names, were registered by the Complainant on October 30, 2012 and December 5, 2000, respectively.

The disputed domain name was registered on December 17, 2019, and it previously resolved to a website similar to the Complainant’s official website. The disputed domain name currently resolves to a page with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The disputed domain name <previred.net> is identical to the Complainant’s registered trademark PREVIRED and the domain name <previred.com>, among other domain names in which the Complainant has rights.

The Respondent has registered the disputed domain name having no rights or legitimate interests in the same, because the Respondent does not have any connection with the Complainant; and the disputed domain name <previred.net> was registered by the Respondent in bad faith since, through an unauthorized use of the Complainant's well-known trademarks, the Respondent intends to attract Internet users to his website with the sole intention to cause harm to the Complainant's business. The disputed domain name has been used in the past to mirror the Complainant's official website and was subject to a criminal complaint made by Complainant for this same reason.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard and apart from judging this proceeding through the default of the Respondent, the Panel makes the following specific findings, considering the Complaint’s contentions.

A. Identical or Confusingly Similar

The Complainant has registered the following trademarks, among others, before the Chilean National Institute of Industrial Property ("INAPI"):

- PREVIRED, registration No, 1009509, in international classes 35, 36, and 42, registered on October 30, 2012.
- PREVIRED.COM, registration No. 1009511, in international classes 35, 36, and 42, registered on October 30, 2012.
- PREVIRED.CL, registration No. 1010603, in classes 35, 36, and 42, registered on April 28, 2013.

The Complainant is also the owner of the following domain names, among others:

- <previred.cl> registered in November 2000
- <previred.com> registered in December 2000
- <previredtv.cl> registered in September 2010
- <mailprevired.cl> registered in May 2012

The disputed domain name comprises one single element, which entirely reproduces the Complainant’s trademark PREVIRED.

Given the fact that the Respondent incorporates the entire PREVIRED trademark without adding any other element, the disputed domain name identically reproduces the Complainant's registered trademarks.

Accordingly, the disputed domain name is identical to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

The Respondent has not been authorized to use the Complainant’s trademark PREVIRED to offer any type of goods and/or services and does not have any connection with the Complainant or obtained authorization for the use of the trademark PREVIRED.

The disputed domain name was registered on December 17, 2019, while the first PREVIRED trademark was registered by the Complainant in 2012 and the domain name <previred.com> was registered on December 5, 2000.

The Panel is a Chilean citizen who knows well, and it is also a public fact that the trademark PREVIRED is a renowned mark belonging to the Complainant. Any attempt to adopt that name for commercial purposes, at least in Chile, is not appropriate.

The Respondent is a natural person who does not have any legal entity named PREVIRED nor has been commonly known by the disputed domain name. The Respondent has no rights or legitimate interests in respect of the disputed domain name, and it is not making a legitimate noncommercial or fair use of it. On the contrary, until March 11, 2020, the disputed domain name was used to mirror the Complainant's official website “www.previred.com”. When active, the Respondent's web page reproduced the Complainant's registered trademarks, which were being used without the Complainant's authorization. The disputed domain name and website thereunder created a false association with the Complainant's trademarks, attracting Internet users, potential clients and/or investors with the intention to cause harm to the Complainant's business. After accessing the website connected to the disputed domain name and clicking the section "INGRESAR AQUI", a malicious file was downloaded to users’ devices.

The above conduct could have caused that Internet users think they were logging into the legitimate Complainant’s website, while erroneously logging into the Respondent's website, not being aware of the error until reviewing the content of the Respondent's web page or suffering a malware. Therefore, the Complainant's reputation has been tarnished. See E. &. J. Gallo Winerv v. Hanna Law Firm, WIPO Case No. D2000-0615 ("Indeed, Internet users would have every reason to believe that, until they actually arrived at one of the Hanna Law Firm complaint sites, they were on their way to visiting a Bartles & Jaymes sponsored or authorized website. Hanna Law Firm is consciously counting on initial confusion to divert Internet users from sites meant to promote Bartles & Jaymes products to the Hanna Law Firm complaint websites").

Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain <previred.net> was registered to hinder or affect the Complainant's business, as well as to obtain illegitimate revenues by freeriding on the Complainant's prestige and its services.

The Respondent was aware of the Complainant's services and associated prestige, particularly considering that the Respondent's website associated to the disputed domain name <previred.net> mirrored Complainant's official website and used its registered trademark, with the purpose of deceiving consumers. The domain name <previred.net> currently resolves to a website with pay-per-click links.

The Respondent's use of the identical trademark PREVIRED in the web site <www.previred.net> is not a coincidence or mere error; it constitutes a deliberated action seeking to make consumers actively believe that there exists an association with the Complainant and its services.

On March 12, 2020, the Complainant filed a criminal claim for fraud before the Chilean specialized Police Bureau for Cybercrimes. Once consumers entered the website <previred.net> and after signing in by providing their sensitive personal information, a malicious file was downloaded into consumers' computer systems without their knowledge or consent, affecting their privacy and their perception in regard to the Complainant's operations. The above seriously impacted Complainant's clients and its reputation.

The Respondent registered the domain name knowing the existence of Complainant's trademarks, as all the information provided in the Respondent's website, when active, was referred to the Complainant. Moreover, the website not only used the PREVIRED trademark, but also reproduced the look & feel of Complainant's website. Therefore, it is not possible to argue that the Respondent did not know the existence of the Complainant's prior rights over the PREVIRED trademarks and domain names; consequently, the registration of the disputed domain name was in bad faith. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 ("A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name").

The disputed domain name is identical to the Complainant’s trademark and to several domain names composed by the trademark PREVIRED. The disputed domain name was registered in bad faith with the purpose of misleading Internet users who intended to access the Complainant's website, instead of the one owned by the Respondent, with the intention to cause harm and disruption to the Complainant's business.

The abovementioned conduct has been recognized as bad baith act in the following case:

Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 (“In this Case, the Respondent is neither a "competitor" of the Complainant nor it is acting for “commercial gain” in the ordinary sense of those words. However, while the Panel recognizes the Respondent's right to campaign and to conduct its campaigns by way of the internet, the Domain Name is not necessary for that purpose, Moreover, registration of a domain name comprising the name and trade mark of another and specifically with a view to causing damage and disruption to that other cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trade mark owner’s site into visiting the registrant's site. The Panel therefore finds that the Domain Name was registered in bad faith”).

As it was stated above, the registration of a domain name comprising the name and trademark of another is evidence of bad faith because it will mislead Internet users who intend to visit the trademark owner's site into visiting a third party's website.

Accordingly, the Respondent has registered and used the disputed domain name in bad faith.

7. 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, <previred.net> be transferred to the Complainant.

Felipe Claro
Sole Panelist
Date: February 21, 2021