WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Administradora de Marcas, RD, S. de R.L. de C.V. v. Richard Yaming
Case No. D2012-1923
1. The Parties
The Complainant is Administradora de Marcas, RD, S. de R.L. de C.V. of Mexico city, Mexico, represented by Basham, Ringe y Correa, S.C., Mexico.
The Respondent is Richard Yaming of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <clarotv.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2012. On September 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2012, 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 October 9, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Korean. On October 12, 2012, the Complainant requested English to be the language of the proceedings. On October 12, 2012, the Respondent requested Korean to be the language of the proceedings.
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, and the proceedings commenced on October 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2012. The Response was filed with the Center on October 25, 2012.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 16, 2012. 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 the leading wireless service provider in Latin America, and one of the largest in the world in terms of subscribers. The Complainant has registered its CLARO mark in a large number of jurisdictions, including the Republic of Korea (registration no. 41-169390 of June 25, 2008), and its CLARO TV mark in a significant number of jurisdictions.
The disputed domain name was first registered on March 1, 2011.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s CLARO TV mark and confusingly similar to the Complainant’s CLARO mark in which the Complainant has rights.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain name, and the Complainant has not licensed rights to the Respondent.
The disputed domain name was registered and is used in bad faith by the Respondent.
The Respondent is well aware of the Complainant’s business and its related entities.
The Respondent has a history of bad faith registration.
The Respondent contends “claro” is a “general vocabulary” word.
The Respondent further contends that he was unaware of the marks of the Complainant, and he believes that the Complainant’s marks are not well known in the Republic of Korea or elsewhere in the world. The Respondent notes that the Complainant’s marks were not registered in the Republic of Korea which he believes is relevant to his contentions about the lack of fame of the Complainant’s marks.
The Respondent also contends that he did not register the disputed domain name with the intent to sell it to the Complainant.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the disputed domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, although the registration agreement for the disputed domain name was made in the Korean language, it is also apparent from previous UDRP decisions in which the Respondent has been named that the Respondent appears to have sufficient ability communicating in the English language. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English nevertheless communicated with the Parties in both English and Korean, indicated that it would accept a Response in either English or Korean and indicated it would (and has) appointed a Panel familiar with both English and Korean.
While noting that the Respondent has objected to the proceeding in English, the Panel considers that the email correspondences exchanged between the Parties before the Complaint was filed with the Center appear to demonstrate the Respondent’s sufficient ability to understand the English language.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Complainant has registered the CLARO TV and CLARO marks in various countries. The disputed domain name wholly incorporates the Complainant’s distinctive marks, CLARO and CLARO TV, and as such creates sufficient similarity to be identical (or at least confusingly similar) to both marks (see paragraph 4(a) of the Policy).
Therefore, the Panel finds that the disputed domain name is identical (or at least confusingly similar) to the Complainant’s marks pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several UDRP decisions have held that once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has ever been commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Panel finds that the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; see also Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when a party registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are widely known in its field, it is unlikely that the Respondent, at the time of registration of the disputed domain name, was not aware of the Complainant’s marks.
Under the appropriate circumstances, bad faith can also be inferred based on the fame of the Complainant’s trademark, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto. The Panel notes that any trademark check of the records of the patent and trademark offices of various jurisdictions would have made the Complainant’s registrations known to the Respondent.
In addition, the Respondent attempted to sell the disputed domain name for EUR 45,000. It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for consideration in excess of a respondent’s out-of-pocket expenses is evidence that the domain name was registered and is being used in bad faith (see adidas-Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372).
The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions constitute evidence of bad faith in terms of 4(b)(i) of the Policy.
Moreover, the Panel notes that the Respondent has been involved in past UDRP proceedings where he was ordered to transfer domain names in dispute to the trademark owners.
The conduct described above falls squarely within paragraph 4(b)(ii) of the Policy and accordingly the Panel concludes that the Respondent registered and uses the disputed domain name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent, pursuant to paragraph 4(a)(iii) of the Policy.
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 <clarotv.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: November 23, 2012