WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Móvil, S.A.B. de C.V. v. Gold Area, Gold Area LTD
Case No. D2018-0222
1. The Parties
Complainant is America Móvil, S.A.B. de C.V. of Mexico City, Mexico, represented by TMI Abogados, S.C. (Tsuru Morales Isla Abogados, S.C.), Mexico.
Respondent is Gold Area, Gold Area LTD of Valletta, Malta, represented by ADLP (Studio Legale), Italy.
2. The Domain Name and Registrar
The disputed domain name <claropay.com> is registered with TLDS L.L.C. d/b/a SRSPlus (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On February 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2018. On March 6, 2018, Respondent requested an automatic four-day extension to file a Response. On March 7, 2018, the Center notified the Parties that the updated due date for Response was March 19, 2018. The Response was filed with the Center on March 19, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 28, 2018. 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.
On April 20, 2018, the Panel issued Administrative Panel Procedural Order No. 1 which requested that Complainant provide copies of its current annual report and further information on issues raised in the matter by April 24, 2018, and which provided Respondent the right to file a response to Complainant’s submission by April 27, 2018. Complainant timely submitted the requested document and information on April 24, 2018, and Respondent did not submit anything further.
4. Factual Background
Complainant, America Móvil, S.A.B. de C.V., is a telecommunications Company based in Mexico and one of the largest providers of wireless, fixed-line, broadband and Pay TV services in Latin America. Complainant also provides wireless, fixed or Pay TV services in several countries in Central and Eastern Europe.
Complainant and its subsidiaries offer various telecommunications services and products under the name and mark CLARO. These services include wireless voice, wireless data and value-added services, fixed voice, fixed data, broadband and IT services, Pay TV and other services. Complainant’s CLARO services are currently offered in numerous countries in Latin America.
Complainant and its subsidiary Claro S.A. own a number of trademark registrations for the CLARO mark, or CLARO formative marks, in many countries throughout Latin America and North America, most of which issued to registration before 2013. Of particular relevance to this proceeding, Complainant or its subsidiary Claro S.A. own registrations for the CLARO mark as either a word or figurative mark in Europe, including in (i) Malta (Registration No. 52373) which was filed on June 21, 2010 and registered on July 8, 2015, and (ii) the European Union (Registration Nos. 006976443, 007152101, 010137644 and 016172934) the earliest of which was registered on February 20, 2009. Complainant also owns (i) registrations for CLARO PAY as a figurative mark in Mexico (Registration No. 1825844), which was registered on November 28, 2017, and Chile (Registration No. 1232781), which was registered on January 3, 2017, and (ii) a pending application in the United States of America for CLARO PAY & Design (Application Serial No. 87139830) which was filed on August 16, 2016.
Complainant also owns and uses a number of domain names that include the CLARO name and mark, such as <claro.com> (registered in 1996), <claro.net> (registered in 2003), <clarovideo.com> (registered in 2010), <claroideas.com> (registered in 2004), <claroonline.com> (registered in 2006) and <claroapps.com> (registered in 2008).
Respondent, Gold Area, is a limited liability company based in Malta. Respondent claims to be involved in the electronic payments field as a provider of payment gateway services for certain merchants. Respondent has been in business since 2005. Respondent registered the disputed domain name on February 21, 2013. The disputed domain name currently resolves to a click through landing page with links related to Pay TV, cellular phone services, and paying bills online such as phone bills and payment cards.
5. Parties’ Contentions
Complainant asserts that it has corporate control over many enterprises, including its subsidiaries Claro S.A. and Administradora de Marcas RD S. de R.L. (“MRD”). Complainant contends that it owns and uses the CLARO mark through its subsidiaries Claro S.A. and MDR over which it exercises commercial control. Complainant further contends that the CLARO mark has been in use since at least 2005 and as a result of Complainant’s extensive promotional efforts is now a well-known mark in connection with telecommunications and related services with a strong presence around the world.
Complainant contends that the disputed domain name is confusingly similar to the CLARO mark because it contains the CLARO mark in its entirety. Complainant contends that the inclusion in the disputed domain name of the term “pay” does not distinguish the disputed domain name, as the term is simply a reference to a service provided by Complainant, such as Complainant’s mobile application entitled “Claro Pay”, and, as such, consumers will likely have the false belief that the disputed domain name is owned, sponsored by or connected to Complainant.
Complainant argues that Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not affiliated with Complainant, is not a licensee of Complainant, has not been authorized to use the CLARO mark, and is not commonly known as or associated with the disputed domain name. Complainant contends that Respondent has not used the disputed domain name for a bona fide offering of goods or services and has instead used the disputed domain name with a landing page replete with advertisements of third parties related to telecommunications services. Complainant further asserts that Respondent has clearly targeted Complainant as CLARO has no meaning in the Maltese, English, French or Italian languages which are used in Malta and Italy (where Respondent claims to have offices), and because a simple search on a search engine would have easily revealed Complainant’s rights in CLARO.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent knew or should have known of Complainant’s rights in the well-known CLARO mark, particularly in light of Complainant’s existing trademark registrations for CLARO in the European Union and in Malta. Complainant also argues that given Respondent’s business activities it seems unlikely that Respondent would not have been aware of Complainant’s well-known CLARO mark, particularly as a simple trademark search would have quickly disclosed Complainant’s rights in CLARO. Complainant further maintains that Respondent’s bad faith is established by Respondent’s use of the disputed domain name with a pay-per-click landing page featuring third party advertisements for telecommunications services related to the services offered under the CLARO mark. Lastly, Complainant contends that Respondent is engaged in a pattern of registering domain names based on the trademarks or names of others and using such with pay-per-click websites for profit.
Respondent contends that Complainant lacks standing to file the UDRP Complaint as Complainant (i) does not own the CLARO PAY mark or any trademark registrations for the CLARO PAY mark, and (ii) has no authorizations or license to assert claims in the name of Claro S.A. that is not a party to this proceeding.
Respondent asserts that the disputed domain name is not confusingly similar to the CLARO mark as it consists of a combination of two descriptive terms, the Spanish word “claro” and the English word “pay,” which creates an overall difference with Complainant’s CLARO mark. Respondent further asserts that Complainant owns no rights in the mark CLARO PAY, and in particular with financial services in Class 36, and that consequently there can be no confusion between the disputed domain name which relates to payment services and Complainant’s telecommunications services. Respondent also contends that confusion is not likely as Respondent registered the disputed domain name four years before Claro S.A. obtained a registration for the CLARO PAY mark in the United States of America in which Complainant specifically dropped financial services in Class 36 following an Office Action.
Respondent argues that it has a legitimate interest in the disputed domain name because it has made pre-complaint preparations for use of the disputed domain name with Respondent’s business. These preparations include registering Gold Area as a limited liability company in Malta in 2005 for purposes of providing payment services for goods and services purchased over the Internet, registering multiple domain names with the word “pay” that relate to the provision of electronic payment services, and the ultimate development of Mistral Pay Ltd by Respondent as a payment institution. Respondent contends that given the time it took Respondent to set up and launch its “www.mistralpay.com” website and related company, Respondent cannot be faulted for not having yet used the disputed domain name with an actual business operation.
Respondent asserts that is has not registered or used the disputed domain in bad faith as Complainant only owns rights in CLARO in connection with its telecommunications services and not CLARO PAY for financial services. Respondent also argues that because the disputed domain name fully consists of common words and was registered before Complainant obtained rights in CLARO PAY, Respondent’s use of the disputed domain name with a click through portal that relates to the dictionary meaning of the common words in the disputed domain name is legitimate, permissible, and not for commercial gain. In that regard, Respondent maintains that it has rejected offers from third parties to buy the disputed domain name from Respondent, and that such proves Respondent’s intent to not commercially benefit from the disputed domain name.
6. Preliminary Issue Regarding Complainant’s Standing
Respondent argues that Complainant lacks standing to initiate this proceeding against Respondent as it is not the record owner of the CLARO PAY mark, is not a licensee of Claro S.A., the owner of the CLARO PAY mark, and does not have authorization from Claro S.A. to assert rights in the CLARO PAY mark.
The concept of standing concerns the ability of a party to demonstrate that it has a sufficient connection or stake in a dispute to support that party’s participation in the case. Panelists who have considered the issue of standing have concluded that for purposes of standing to file a UDRP complaint a complainant does not need be the actual registered owner of the mark, but can also include, for example, an exclusive licensee of the mark or an affiliated company related as a subsidiary or parent to the registered holder of a mark. See Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796; see also section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Here, Complainant has provided its latest annual reports that were filed before the United States Securities and Exchange Commission and the Mexican Comisión Nacional Bancaria y de Valores (the Mexican Securities and Exchange Commission) that show that Claro S.A. is a subsidiary of Complainant in which Complainant holds a 97.7% equity interest, and that Complainant owns a 100% equity interest in other companies that use the CLARO name and mark, including Claro Chile S.A. and Claro Panama S.A. In addition, Complainant has provided evidence that it owns two trademark registrations for the CLARO mark as a figurative mark in the European Union (Registration Nos. 006976443 and 007152101), which were registered on February 2, 2009 and March 5, 2010. Complainant has also provided evidence that it is the controlling company of a group of companies, including Claro S.A., that as an economic group commercialize and offer telecommunication and related services under the CLARO name and mark in a number of countries around the world.
In sum, the Panel is satisfied that Complainant has established that it has standing to file a complaint in this UDRP proceeding concerning the CLARO mark. Indeed, prior UDRP panelists have similarly concluded as much. See, e.g., América Movil, S.A.B. de C.V. v. Travis Sutton, Green Shoot Group LLC, WIPO Case No. D2017-0122.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See WIPO Overview 3.0 at Section 4.2.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the CLARO mark in connection with its telecommunications products and services. Complainant has also provided evidence that the CLARO mark has been registered in a number of countries well before Respondent (who is located in Malta) registered the disputed domain name.
With Complainant’s rights in the CLARO mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s CLARO mark as it incorporates the CLARO mark in its entirety in the disputed domain name. For purposes of this first element, the addition of the common word “pay” at the tail of the disputed domain name does not distinguish the disputed domain name from Complainant’s CLARO mark, as the dominant component of the disputed domain name is CLARO. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s CLARO mark and in showing that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that since registering the disputed domain name in February 2013 Respondent has only made use of the disputed domain name in connection with a click-through revenue portal that has included links to advertisements by third parties for telecommunications and related services. While Respondent claims that its business is related to electronic payment services, the evidence submitted by Respondent does not show that Respondent took any steps since registering the disputed domain name to make use of such for a bona fide business purpose. Indeed, while Respondent provided evidence that it registered and operates a payment services company called Mistral Pay Ltd., which has a website at <mistralpay.com>, that company appears to provide online payment services under the name and mark MISTRAL PAY. Respondent provided no evidence that Mistral Pay Ltd. is known as Claro Pay, that Claro Pay is somehow related to a service provided by Mistral Pay Ltd. or Respondent, or that Respondent is commonly known as Claro Pay.
But putting aside the fact that Respondent has only used the disputed domain name in connection with a click-through portal for profit since registering the disputed domain name, it appears more likely than not that Respondent was aware of Complainant’s well-known CLARO mark when Respondent registered the disputed domain name. Indeed, Respondent does not contest that it was aware of the CLARO mark. Rather, Respondent argues that Complainant has no rights in the mark CLARO PAY which consists of the common Spanish word “claro,” which means “clear,” in combination with the common English word “pay.” Respondent contends it has a legitimate interest in the disputed domain name because the disputed domain name was registered before Complainant attempted to register the CLARO PAY mark in 2016, and because Respondent has a right to use a domain name consisting of common words for financial services that are distinct from the telecommunications services offered by Complainant.
While Respondent’s contentions could, in theory, provide a basis for claiming a legitimate interest, the evidence before the Panel shows otherwise. First, for Respondent to argue that Complainant has no rights in CLARO PAY ignores that Complainant has prior rights in the CLARO mark, which is well-known, at least, in the telecommunications field. While it is conceivable that combinations of the Spanish word “claro” with other common words might be legitimate in their dictionary sense and unrelated to Complainant’s CLARO mark, Complainant’s rights in CLARO are not so narrow that Complainant does not, or cannot, enjoy rights in CLARO in combination with descriptive words that relate to its business or services, or which could be seen by consumers as related to Complainant’s services under the CLARO mark and name. Second, although Respondent argues that its services are distinct from those of Complainant, the evidence before the Panel shows that Respondent (i) has never used the disputed domain name in connection with Respondent’s claimed payment services or for any services related to Respondent, and (ii) has not taken any bona fide steps since 2013 to launch a claimed electronic payment service using the disputed domain name or which is to be known by the name “claro pay.” Instead, the use of the disputed domain name appears to have been made only with a click through portal with links to third party offerings for telecommunications and related services. Consequently, what is before the Panel is evidence that Respondent registered and used the disputed domain name that consists of Complainant’s CLARO mark to more likely than not profit from links that relate to the very services offered by Complainant under its CLARO mark. Under such circumstances, and also noting that Respondent boldly claims its registration was not for commercial gain, Respondent’s arguments ring hollow and do not support a claimed bona fide offering of goods and services or legitimate interest.
Given that Complainant has established with sufficient evidence that it owns rights in the CLARO mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the present case, the evidence shows that Respondent was likely aware of Complainant when Respondent registered the disputed domain name that consists of the CLARO mark with the descriptive term “pay.” Given this awareness, Respondent’s actions since registering the disputed domain name can only be seen as having been undertaken in bad faith. The evidence before the Panel shows that Respondent registered the disputed domain name and then simply used it with a click-through portal that featured links to third party advertisements that relate to telecommunication and related services – such as the payment of mobile phone charges. Indeed, a link currently appearing at the click-through portal specifically refers to the CLARO mark in conjunction with cellular phone services.
While Respondent maintains that its electronic payment services do not compete with Complainant’s telecommunications services and that the disputed domain name is merely a combination of common words, the evidence submitted (and discussed above) shows that Respondent is not making use of “claro” in its dictionary sense or in connection with Respondent’s claimed services. Rather, the use of the disputed domain name by Respondent, at all relevant times, appears to have been made with a click-through portal with offerings that specifically relate to telecommunications services. Simply put, Respondent registered a disputed domain name that incorporates Complainant’s well-known CLARO mark and has been using it opportunistically to redirect web users, who likely believe they are accessing a service related to Complainant, for Respondent’s profit and not for some claimed business purpose.
Accordingly, the Panel finds that Complainant succeeds under this element 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 <claropay.com> be transferred to Complainant.
Date: May 4, 2018