WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION America Móvil, S.A.B. de C.V. v. Claro GmbH & Co. KG Case No. D2008-1770 1. The Parties
The Complainant is America Móvil, S.A.B. de C.V., Anáhuac, Mexico, D.F., Mexico.
The Respondent is Claro GmbH & Co. KG, Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2008. On November 18, 2008, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On November 18, 2008, R 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2008. The Response was filed with the Center on December 10, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 18, 2008. 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
Complainant is the fifth largest mobile network operator and the largest corporation in Latin America. Complaint, Annex V. As of September 2008, Complainant provided goods and services to over 172.6 million wireless subscribers and has 3.9 million land lines in the Americas. Complaint, Annex VI. Through September 2008, Complainant's revenues for the fiscal year were 251.2 billion pesos. Id. Complainant was ranked as the number one Information Technology Company by Business Week magazine for the calendar years 2005 and 2006. Complaint, Annex IX. On November 15, 2005, Complainant signed an international agreement with Vodafone to jointly deliver various international services. Complaint Annex V. Vodaphone is the world's largest mobile telecommunications company based on turnover, and has subsidiaries and customers throughout Europe. In February 2000 it acquired the German company Mannesmann in a merger transaction. Mannesmann was the largest provider in mobile services in Germany.1
Complainant is the parent company of Sercotel, S.A, de C.V. (“Sercotel”) and owns 100% of its stock. In turn Sercotel owns 100 % of AM Telecom Americas, S.A. de C.V. (“AM Telecom”) and 100 % of the stock of AMOV I, S.A. de C.V. (“AMOV”). Subsidiary Claro Telecom Participacoes, S.A. (“Claro Telecom”) is owned 12.31% by AM Telecom and 87.69% by AMOV. Subsidiary Claro, S.A. (“Claro”) is owned 11.90% by AM Telecom, 0.74% by Sercotel, and 87.31% by Claro Telecom.2 Complaint, Annex X. In Annex VII, Complainant includes a chart of its principal subsidiaries. Annex VII, pages 21-22.
Complainant produces copies of certifications of registrations of various Claro trademarks and service marks issued by trademark authorities in countries around the world, but chiefly in Spanish and Portuguese speaking communities. Complaint, Annexes XIV and XV. These certifications show the owner of the marks to be either TELET S/A or BCP S.A. Id. Neither of these names appears as a subsidiary or affiliate of Complainant. However Complainant has provided proof that Telet S/A and BCP S.A. were merged into a single company whose name was later changed to Claro, S.A. Complaint, Annex XIII.
The domain name at issue was originally registered on December 9, 1996, by the company KGras Grün Kühnel und Sonnenberg GmbH. The domain name was transferred to Respondent on June 12, 2008. Complainant's consultant contacted Respondent by telephone shortly thereafter and was told that the relevant contact person was Dietrich von Hase. Respondent submits a “personal statement” of Mr. von Hase in the form of a letter to the Center dated December 3, 2008, not under oath. In that letter Mr. von Hase identifies himself as an independent business consultant hired by Respondent to search for potential investors in Respondent. Response, Annex XXIII. On July 7, 2008, Complainant's consultant contacted Mr. Hase to inquire whether Respondent was interested in selling the registration rights to the domain name at issue. Complaint, Annex XVIII. On July 17 or 18, 2008, Mr. von Hase telephoned Complainant's consultant. According to Complainant, Mr. von Hase reported that Respondent was aware of Complainant's interest in the domain name, but was not interested in selling the domain name for a low price, as Respondent was earning 20,000 Euros per year in advertising revenues through Google. Mr. von Hase said that an acceptable purchase price should not be less than 400,000 Euros. Complaint, Annex 19.
In his “personal statement,” Mr. von Hase states that in this telephone conversation he informed Complainant's consultant that he was an independent consultant retained by Respondent to receive investments, that Respondent did not wish to sell the domain name at issue, but that Respondent was seeking investors. When Mr. von Hase was told that Complainant had no interest in investing in Respondent, but wanted to acquire the domain name at issue, Mr. von Hase iterated that Respondent did not wish to sell the domain name. Upon being told by Complainant's consultant that Complainant would offer a high price (“the sky would be the limit”). On hearing this, Mr. von Hase decided that perhaps Respondent could benefit from such a large sale, and that perhaps he could earn a commission on such sale. He then discussed the 20,000 Euros per year that the domain name was realizing through Google's advertising program, and stated that “400,000 Euro might be an offer which may be could convince claro to sell [sic].” Response, Annex XXIII, at 4. Mr. von Hase asked Complainant's consultant “if he already knew that the name claro would also be used as a name of a large mobile phone company in Latin America with millions of subscribers [sic].” Complainant's consultant said that he was unaware of the Claro company in Latin America, but that the price mentioned should not be a problem and stated that he would discuss the matter with Complainant and get back to Mr. von Hase by telephone. Id.
On August 7, 2008, Complainant's consultant offered to purchase the domain name at issue for 50,000 Euro. Complaint, Annex XX; Response, Annex XXIII, at 5.
On August 18, 2008, Mr. von Hase met with Respondent's CEO to discuss the 50,000 Euro offer for the domain name at issue. Mr. Hase states that Ms. Rosedale said the domain name was not for sale. Response, Annex XXIII, at 5. On August 19, 2008, Mr. von Hase wrote Complainant's consultant and stated that 50,000 Euro was insufficient and that Respondent was not actively interested in selling the domain name. However, Mr. von Hase stated that he assumed Respondent would be interested in selling the domain name if the price was high enough and to let him know if Complainant was interested in increasing its offer. Complaint, Annex XXI; Response, Annex XXIII, at 5.
Respondent registered as a German company by electronic filing on June 26, 2008, effective July 3, 2008. Response, Annex I. Respondent showed its business activity as Hotel and Food, Health and Wellness, and the production, storage and trade of precious metals or coins made of precious metals. Id.
Respondent alleges that in July 2008 it changed its business plans to focus on the precious metals business. This caused a delay in the writing of software for the online business. Work on the software is reportedly ongoing, but Respondent is unable to disclose more in order to protect its business secrets. The web site to which the domain name at issue resolved was changed from hotel and holiday house bookings to the precious metals business theme.
Respondent attaches certificates which show that the word mark CLARO was applied for on June 9, 2008, with the German trademark office and the registration issued to Respondent on October 10, 2008. Complaint, Annexes XI and XII. Respondent has also applied for two EU trademarks, one application dated June 10, 2008, and one application dated August 11, 2008.
The Panel visited the web site to which the domain name resolves on January 4 and 12, 2009. At the time of the visits the domain name was used to resolve to a parking site. The first link on the parking site was for “Celular Claro.” Clicking on the link took one to a web site in Portuguese which featured offers from Complainant's competitors in the Spanish language. Other links were for shopping pages, many of which were in the Spanish language, none of which were related either to hotels and bookings or to precious metals. 5. Parties' Contentions A. Complainant
Complainant contends that the domain name at issue is identical or confusingly similar to trade marks and service marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. B. Respondent
Respondent contends that Complainant has no rights in the trademark CLARO, which is registered to entities different from Complainant and which is based on a common international term having “an extremely common word statement like ‘OK,'” that Respondent has rights and legitimate interests in respect of the domain name at issue in that it is part of Respondent's business name and in that Respondent has registered German trademarks in CLARO, and in that Respondent has taken steps to use the domain name in respect of a business involving precious metals.
Respondent requests a finding of bad faith reverse domain name hijacking, in that a trademark search performed by Complainant's attorneys would have revealed that Respondent held trademarks in Germany for the mark CLARO. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The word “claro” is the equivalent of the English word “clear” in the Spanish or Portuguese language. Trademarks and service marks for the mark CLARO have been issued by countries around the world, including Spanish and Portuguese speaking countries. Complainant attaches trademarks issued to the predecessors of Claro, an affiliate of Complainant. There is no question that Complainant effectively controls Claro, through its 100% ownership of its subsidiary, Sercotel, whose 100% owned subsidiaries effectively control the management of Claro. Staples, Inc., Staples The Office Superstore, Inc. and Staples Contract and Commercial, Inc. v. Skylabs Corporation and DL Enterprises,WIPO Case No. D2004-0220. Just as it is permissible to join subsidiary companies for purposes of demonstrating ownership of the trademarks, it is permissible to bring a claim in the name of the controlling entity without joining all subsidiaries in a demonstrated chain of ownership. Therefore, the Panel finds that the disputed domain name at issue is identical or confusingly similar to trademarks and service marks in which Complainant has rights. B. Rights or Legitimate Interests
The general rule established by panels is that a subsequent acquirer of a domain name is held to have “registered” that domain name for purposes of the Policy as of the date of acquisition of the registration rights. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062 (“[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”). As Respondent acquired the domain name at issue on June 12, 2008, that is the date on which Respondent is said to have registered the domain name at issue for purposes of the Policy.
At the time Respondent undertook to create its business and register its trademarks, it was in immediate contemplation of or following the acquisition of the domain name at issue. At the time of the acquisition of the domain name at issue, Complainant had registered trademarks around the world, was well known in the field of wireless telecommunications, and was a partner with the leading wireless service in Germany, the residence of Respondent. At no time does Respondent contend that it was unaware of Complainant's marks when it instigated its business activities or acquired the domain name at issue. In fact, Respondent's business consultant, who had been charged in dealing with offers to purchase the domain name, had informed Complainant's consultant in mid-July 2008 that a large Latin American phone company with millions of subscribers might be interested in the domain name.
Moreover, Respondent argued in its Response that “[o]nline search for trademark and domain name collision cases is a daily routine operation in trademark oriented law firms before any action is taken.” Response, page 7. Respondent's representative who submitted the Response in this matter was Respondent's CEO.
Thus, it is impossible to believe that Respondent was not fully aware of Complainant's marks and its business before it acquired the domain name at issue or began to form its business or to apply for its trademarks. In the face of such knowledge preceding the formation of Respondent's business, its application for its trademarks, and its acquisition of the domain name at issue, its subsequent activities could not establish rights or legitimate interests in respect of the domain name at issue. Thus, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
Because it is clear from the facts of the worldwide fame and use of the CLARO marks by Complainant, from Respondent's failure to even deny that it was aware of Complainant and its marks at the time it acquired the domain name at issue, and from the admitted knowledge, in mid July 2008, of Respondent's business consultant charged with dealing with offers for the domain name of Complainant's business, its fame, and its interest in the domain name at issue that Respondent could not have “registered” (see Section 6,B, supra) the domain name at issue in good faith.
Moreover recent visits to the web site show the domain name being used for a pay-per-click parking site at which the first link is to competitors of Complainant, and is replete with offerings in the Portuguese and Spanish languages. Even where a respondent affirmative asserts that it was unaware of complainant's rights in its marks, such use of pay-per-click landing sites is evidence of bad faith registration and use. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. This holding applies here a fortiori where not only did Respondent not assert that it was unaware of Complainant and its mark, but also Respondent's consultant in charge of dealing with requests to purchase the disputed domain name stated that he was aware of the Complainant and its interests in the disputed domain name. Accordingly, the Panel finds that Respondent registered and is using the domain name at issue in bad faith. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Dated: January 12, 2009
1
2 This totals 99.95%. It is not explained who owns the balance of the 0.05% of Claro.
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