WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
América Móvil, S.A.B. de C.V. v. Above.com Domain Privacy / Ready Asset, Nish Patel
Case No. D2014-0610
1. The Parties
The Complainant is América Móvil, S.A.B. de C.V. of Mexico City, Mexico, represented by Tsuru Morales Isla Abogados, S.C., México.
The Respondent is Above.com, Domain Privacy of Victoria, Australia / Ready Asset, Nish Patel of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <clarojuegos.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2014. On April 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, 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 e-mail communication to the Complainant on April 23, 2014 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 April 28, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2014.
The Center appointed Mladen Vukmir as the sole panelist in this matter on June 11, 2014. 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 Panel has determined the following non-contested facts:
(i) the disputed domain name was registered on August 2, 2012 (Annexes 1 and 2);
(ii) the Registrar disclosed that the Respondent is the Registrant of the disputed domain name (the Registrar’s email transmitted to the Center on April 16, 2014);
(iii) the Complainant is the owner of numerous international and national CLARO trademark registrations in different classes, including 38, 37, 35, 41, 42 and 45, listed in Annexes 9, 9.1, 16.1 and 27, particularly,
– Registration No. 6317217 CLARO design trademark registered in China on March 28, 2010;
– Registration No. 925395 CLARO design trademark registered in Mexico on March 24, 2006;
– Registration No. 1200226 CLARO word trademark registered in Australia on September 20, 2007
– Registration No. 777299 CLARO design trademark registered in New Zealand on October 9, 2007, etc.
(iv) the Complainant is the owner of several domain name registrations incorporating their trademark, particularly, <claro.com> registered in 1996, <claro.org> registered in 1999, <claro.net> registered in 2003, <clarovideo.com> registered in 2010 and <clarovideo.net> registered in 2012, among others (Annex 17).
5. Parties’ Contentions
The Complainant, essentially, asserts that:
(i) they are the third largest wireless services provider in the world and the leading wireless services provider in Latin America (Annexes 5, 6, 6.1, 7 and 8);
(ii) they and their affiliated companies own numerous trademark registrations with the distinctive name CLARO registered worldwide, including China and Australia (Annexes 9, 9.1, 16.1 and 27);
(iii) their CLARO trademark is famous due to extensive marketing, including online and through sponsorship of sporting events (Annexes 9.2, 10, 11, 12, 13, 14, 15, 16 and 26;
(iv) they own several generic Top-Level Domain (“gTLD”) domain names based on their CLARO trademark registered prior to the disputed domain name (Annex 17);
(v) the only (minor) difference between their CLARO trademarks and domain names and the disputed domain name <clarojuegos.com> is the descriptive word “juegos”, which in Spanish means “games” and which, from visual, phonetic and a typographical point of view, must be considered as merely insignificant given that the disputed domain name reproduces in its entirety the CLARO trademark;
(vi) the likelihood of confusion of the disputed domain name with the Complainant’s market identity is also ascertained by the notoriety of their trade name, trademarks and domain names, being that WIPO panels have previously found that CLARO is a worldwide famous trademark (see Administradora se Marcas, RD, S. de R.L. de C.V. v Richard Yaming, WIPO Case No. D2012-1923 (<clarotv.com>); America Móvil, S.A.B. de C.V. v Claro GmbH & Co. KG, WIPO Case No. D2008-1770 (<claro.com>));
(vii) the Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide famous trademarks and domain names of the Complainant;
(viii) there is no relationship whatsoever between the Complainant and the Respondent, nor has the Complainant ever licensed or authorized the Respondent to use their trademarks or register any domain name incorporating their CLARO trademark;
(ix) the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a legitimate interest in favor of the Respondent and in accordance with paragraph 4(b)(i) of the Policy, because the disputed domain name resolves to pay-per-click advertising website and collects click-through revenue from advertising links to the Complainant’s competitors (Annex 18);
(x) the Respondent registered and has been using the disputed domain name in bad faith, because they were aware or should have been aware of the Respondent’s famous trademark and registered the disputed domain name in order to illegitimately benefit from the Complainant’s famous trademark and confuse Internet users, which is supported, inter alia, by the evidence in Annexes 19, 20, 20.1, 21, 22, 23 and 26.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the domain name is confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of a number of CLARO trademarks in the world, including Australia and China, where the Respondent is apparently located. Also, that their CLARO trademarks have been extensively used on the Internet since 1996, primarily through the Complainant’s gTLD domain name <claro.com>, as well as <clarovideo.com>.
It is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”)).
It is evident that the disputed domain name <clarojuegos.com> incorporates the Complainant’s CLARO trademark in its entirety, and that the CLARO trademark of the Complainant is clearly recognizable within the same.
The Panel must further answer the question, whether adding the term “juegos” (meaning “games” in Spanish) to the word “claro” is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s CLARO trademark.
It is this Panel’s position that the Complainant has presented sufficient evidence showing that their CLARO trademark is extensively publicized in online media, widely known in its field and has world-wide fame, which they also substantiated by making a reference to past UDRP decisions (see Administradora se Marcas, RD, S. de R.L. de C.V. v Richard Yaming, WIPO Case No. D2012-1923 (<clarotv.com>); America Móvil, S.A.B. de C.V. v Claro GmbH & Co. KG, WIPO Case No. D2008-1770 (<claro.com>)).
Based on the Complainant’s evidence submitted in Annexes 9.2, 10, 11, 12, 13, 14, 15 16 and 26, the Panel concludes that CLARO is a widely known trademark worldwide, including China and Australia. It should also be noted that at least two other UDRP panels found that the Complainant’s trademark CLARO is widely known and that ownership of the same belongs to the Complainant, as indicated in the above cited decisions invoked by the Complainant.
Further, the disputed domain name begins with the dominant and distinctive word “claro”, i.e. the Complainant’s trademark. By the time one reads the added word “juegos” in the disputed domain name, one is clearly prepared to see something related to the Complainant. In the Panel’s view, there remains significant room for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name with the Complainant.
It is, therefore, safe to conclude that the disputed domain name trades on the renown of the Complainant’s CLARO trademark. The presence of the Complainant’s CLARO trademark in the disputed domain name certainly bears weight as a signal to the potential costumers and the disputed domain name benefits from the same. The latter especially, if one bears in mind that the term “juegos” by itself has no distinctive character, and as such can be considered as a common/generic term. Further, the fact that the Respondent, who is apparently situated in China, used in the disputed domain name the Spanish word “juegos” in addition to the Complainant’s CLARO trademark indicates that the Respondent must have been aware of the Claimant’s trademarks and their renown on Spanish-speaking markets and intended to illegitimately benefit from the Claimant’s famous trademark and confuse Internet users.
It should be noted, that panels found the confusing similarity in circumstances involving a “trademark + games” domain names in earlier UDRP cases. See. e.g. LEGO Juris A/S v. Saputro Wijayanto, WIPO Case No. D2013-0916, (<legogamesandtoys.com> et al.); as well as RealNetworks, Inc. v. Domain Admin, PrivacyProtect.org / eMarket Center LLC, WIPO Case No. D2013-1725 (<zylomgames.org>): “In the Panel’s view, the descriptive word “games” is insufficient to prevent the threshold on Internet user’s likelihood of confusion and confusing similarity as a result.” Confusing similarity was found in each of the aforementioned instances, because the term added was not powerful enough to overcome the strong mental association created by the trademark.
Taking into consideration the renown of the Complainant’s CLARO trademark and the initial interest induced by the word “claro” in the disputed domain name, as well as the previous practice in the UDRP, the position of this Panel is that the term “juegos” is insufficient to overcome the overall confusing similarity between the disputed domain name <clarojuegos.com> and the Complainant’s CLARO trademarks.
Regarding the applicable gTLD “.com” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e. has proven that the disputed domain name is confusingly similar to their CLARO trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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 trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. ”
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […]”.
In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name.
Namely, the Complainant has established that it is the owner of an impressive number of word and device trademarks CLARO registered in various jurisdictions around the world, including China and Australia, as well as that they have extensively used the same trademark on the market and the Internet. The Complainant also stated that they have not authorized, licensed, permitted or otherwise consented to the Respondent’s use of their trademark in the disputed domain name.
The Panel observes that there is neither any relation, disclosed to the Panel or otherwise apparent from the records, between the Respondent and the Complainant, nor evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Namely, the evidence submitted by the Complainant substantiates that the disputed domain name resolves to a parking website, which indicates that it has been registered solely for the purpose to attract Internet users into clicking on sponsored links published on the disputed website.
So far, numerous previous decisions were rendered in accordance with the WIPO Overview 2.0 that the use of a domain name to post parking and landing pages or PPC links would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder (paragraph 2.6 of the WIPO Overview 2.0). See, e.g. Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021 (<getawaytoday.co>) and the decisions cited therein: “It is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests.”
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce any arguments or evidence to the contrary.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
“(i) circumstances indicating that the holder 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location”.
Owing to a lack of the Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent was in bad faith, since the Respondent knew or should have known about the Complainant’s CLARO trademark, because of its registrations in Australia and China and because of the widespread global publicity of the trademark. Moreover, the Respondent must have been aware of the risk of deception and confusion that would result from the registration of the disputed domain name and the posting of the content of the website linked thereto, particularly, because the Internet users, who access the website operated under the disputed domain name, are redirected to third party websites offering services and products that compete with those offered by the Complainant under their CLARO trademark.
Therefore, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website, for commercial gain by means of a “pay-per-click” mechanism, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the service on the Respondent’s website, when, in fact, the Respondent’s website redirects Internet users to the Complainant’s competitors’ sites. For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since that the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See, e.g., the following previous decisions invoked by the Complainant:
(i) Sanofi v. PrivacyProtect.org / ICS Inc., WIPO Case No. D2012-1293 (<sanofiadventis.com>): “[…] previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303)”;
(ii) Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031 (<rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com>): “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites.”;
(iii) PepsiCo, Inc. v Ali Khan, WIPO Case No. D2004-0292 (<pepsistrawberry.com>): “The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant.”
In view of the above, the Panel finds that the disputed domain name was registered and has been used in bad faith.
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 <clarojuegos.com> be transferred to the Complainant.
Date: June 30, 2014