WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adminiatradora de Marcas RD, S. de R. L. de C. V. v. Cyber

Case No. D2019-0100

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 Cyber of Uijeongbu-si, Gyeonggi-do, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <clarotv.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2019. On January 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registration and providing the contact details.

On January 21, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On January 24, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

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 in English and Korean of the Complaint, and the proceedings commenced on January 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 19, 2019.

The Center appointed Andrew J. Park as the sole panelist in this matter on February 27, 2019. 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 subsidiary of América Móvil, S.A.B. de C.V., a telecommunications company based in Mexico and the largest provider of wireless, fixed line, broadband and Pay TV services in Latin America, and also in several countries in Central and Eastern Europe. América Móvil, its subsidiary Claro S. A., and the Complainant own numerous registrations for the CLARO and CLARO TV trademarks, or CLARO formative marks in many countries throughout the world. The Complainant also owns trademark registration No. 4101693900000 for CLARO in class 38, in the Republic of Korea since June 25, 2008, which is prior to the registration date of the disputed domain name and significantly before the acquisition of the disputed domain name by the Respondent. The following are the details of additional trademark registrations for the CLARO TV trademark.

The Complainant also owns and uses several 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;
<claroapps.com> registered in 2008.

The disputed domain name <clarotv.com> was registered with DomainCA on March 1, 2011, and then moved to Gabia, Inc. The last update to the disputed domain name’s WhoIs information and assumed date of registration by the Respondent was on July 31, 2017 with Megazone Corp., dba HOSTING.KR.

The Complainant received a UDRP decision ordering the transfer of the disputed domain name <clarotv.com> to the Complainant on November 23, 2012 (see Administradora de Marcas RD, S. de R. L. de C. V. v. Richard Yaming, WIPO Case No. D2012-1923). The respondent in WIPO Case No. D2012-1923, filed suit for the cancellation of the Panel’s decision before the 12th Civil Affairs Seoul Northern District Court in the Republic of Korea. However, on April 10, 2015, the court ruled in favor of the Complainant and declared the UDRP decision to be final and conclusive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <clarotv.com> is identical to the trademark CLARO TV, as it incorporates said trademark in its entirety. The inclusion of the generic Top-Level Domain (“gTLD”) “.com” is a standard requirement, and as such, holds no legal relevance in assessing identity or confusing similarity concerning the analysis of the first element of the Policy.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent is not authorized to use the Complainant’s CLARO and CLARO TV trademarks or any variation and has not been commonly known by the disputed domain name, nor does he own trademark rights to CLARO, CLARO TV or any of their variations. Also, there is no evidence that the Respondent has used or has made preparations to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name either.

Using the disputed domain name incorporating the Complainant’s trademarks to host sponsored links associated with the Complainant’s area of business cannot be considered to confer rights to or legitimate interests in the disputed domain name arising from a bona fide offering of goods or services or from a legitimate noncommercial or fair use.

3) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Complainant is the owner of numerous trademark registrations for trademarks CLARO, CLARO TV and their variations, in countries all over the world including in the Republic of Korea, where the Respondent is domiciled, and the Complainant registered the trademark much before the disputed domain name was first registered by the respondent in WIPO Case No. D2012-1923 and acquired by the current Respondent in WIPO Case No. D2019-0100. Further, the Complainant argues that the term “CLARO” has no meaning in Korean and bears no direct or obvious link to telecommunication services. These two facts imply that the Respondent knew or should have known of the existence of Complainant’s worldwide reputation and CLARO trademarks when it acquired the disputed domain name and should therefore be found to have registered the disputed domain name in bad faith.

The disputed domain name currently resolves to a parked website exclusively consisting of pay-per-click (“PPC”) links which were directly related to services covered by the Complainant’s trademarks CLARO and CLARO TV. Moreover, there are several links that are directed to the websites of the Complainant’s competitors which demonstrates that the Respondent is using the disputed domain name in bad faith.

Furthermore, the Respondent registered at least eleven domain names comprising famous

trademarks, and has been shown to be the respondent in at least two other domain name disputes concerning famous trademarks. The Respondent has been using different monikers and pseudonyms to hide its true identity in order to avoid any possible proceedings that could surface as a result of its blatant unauthorized use of famous trademarks. The Respondent has acquired the disputed domain name as part of his pattern of conduct to register domain names bearing famous third-party trademarks in order to prevent them from reflecting their trademarks in corresponding domain names.

In all circumstances, it is clear that the Respondent has used the disputed domain name to intentionally attract Internet users to its website by creating the likelihood of confusion with the Complainant’s CLARO marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (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 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis 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, pursuant to paragraph 15(a) of the Rules.

A. Language of the Proceeding

The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) The Complaint was notified to the Respondent in both English and Korean;

3) The disputed domain name resolves to a website which is in English.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the marks, CLARO and CLARO TV and that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the Complainant’s trademark in its entirety and the addition of the gTLD “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of 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.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered or acquired and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent’s registration and use of the disputed domain name is in bad faith under the Policy, paragraphs 4(b)(ii) and (iv). The Respondent has acquired the disputed domain name as part of his pattern of conduct to register domain names bearing famous third-party trademarks in order to prevent them from reflecting their trademarks in corresponding domain names and to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds that the Complainant’s registered trademarks CLARO and CLARO TV are used on a global basis, and the Complainant has provided a selection of trademark registrations pre-dating the earliest registration date of the disputed domain name in 2011. Further, the disputed domain name is identical and confusingly similar to the Complainant’s trademarks in its entirety and the Panel confirms that there is no evidence that the Respondent is currently using or is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name CLARO or CLARO TV.

The Panel also confirms that the Respondent has been using different monikers and pseudonyms as its registrant name, and that by so doing, it is attempting to hide its true identity from the allegation that it is engaged in a pattern of bad faith registrations. The Respondent has been identified as the respondent in at least two other domain name disputes concerning famous trademarks and is the owner of at least eleven domain names, most of which apparently are virtually identical to the registered trademarks or enforceable unregistered trademark rights of third parties. The Respondent has acquired the disputed domain name as part of his pattern of conduct to register domain names bearing famous third-party trademarks in order to prevent them from reflecting their trademarks in corresponding domain names.

The Respondent acquired the disputed domain name that contained the Complainant’s trademark and used it to offer in its parking page sponsored PPC links to attract Internet users to its website for commercial gain. Those links are directing the Internet customers to services which are Complainant’s core activities in its business and they are also directed to the Complainant’s competitors. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant’s trademark and its business.

Bad faith can be inferred based on the fame of the Complainant’s mark, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto (particularly in view of the Complainant’s use of its marks on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in order to attract Internet users to its website for commercial gain.

The conduct described above falls squarely within paragraphs 4(b)(ii) and (iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <clarotv.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: March 19, 2019