WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fundación Carlos Slim, A.C. v. WEBPAGES.COM.CN Case No. D2010-0500 1. The Parties
The Complainant is Fundación Carlos Slim, A.C. of Mexico, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is WEBPAGES.COM.CN of United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2010. On April 1, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On April 2, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2010. The Response was filed with the Center on April 27, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 5, 2010. 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 Mexican company, founded by the notable Mexican individual Carlos Slim and wholly controlled by Mr. Slim's family. In 1994, the Complainant founded the Museo Soumaya Slim, an arts and cultural museum dedicated to the interests of Soumaya Slim, the late wife of Mr. Slim.
By virtue of its long and extensive commercial use of the personal name “Soumaya Slim”, the Complainant claims common law rights in the trademark for SOUMAYA SLIM in respect of artistic and cultural activities. The Complainant also relies on a number of registered trademarks for SOUMAYA, MUSEO SOUMAYA, MUSEO SOUMAYA SLIM and MUSEO SOUMAYA FUNDACION CARLOS SLIM, which were registered between October, 1999 and September, 2008.
Additionally, the Complainant relies on the registered trademarks for SOUMAYA SLIM held by Inmobiliaria Carso, S.A. de C.V., a related company which is also owned and controlled in its entirety by the Slim family, and which has provided a declaration stating that the SOUMAYA SLIM trademarks are held by the company for commercial reasons. The declaration also states that Inmobiliaria Carso, S.A. de C.V. shares the goals of the Complainant, namely, to prevent third parties from misappropriating the mark SOUMAYA SLIM.
The Complainant is the owner of a number of gTLD and ccTLD domain names which incorporate the marks MUSEO SOUMAYA, SOUMAYA SLIM and SOUMAYA.
The Domain Name was registered on August 7, 2007. At the time the Complaint was filed, the Domain Name resolved to a website that appeared to be associated with Apple Computer's MobileMe software, containing links related to the MobileMe platform. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
(a) By virtue of its long and extensive commercial use of SOUMAYA SLIM in relation to the Museo Soumaya Slim, the Complainant has acquired to common law trademark rights in respect of such activities;
(b) The Complainant has rights in SOUMAYA SLIM by virtue of its registered trademarks for SOUMAYA, MUSEO SOUMAYA, MUSEO SOUMAYA SLIM and MUSEO SOUMAYA FUNDACION CARLOS SLIM;
(c) The Complainant also claims rights in SOUMAYA SLIM by virtue of the registered trademarks for SOUMAYA SLIM held by its related company, Inmobiliaria Carso, S.A. de C.V.;
(d) The Respondent's Domain Name is identical or confusingly similar to the Complainant's common law trademark, and the registered trademarks held either by the Complainant or by its related company Inmobiliaria Carso, S.A. de C.V.;
(e) The Complainant has not licensed, authorised, contracted or otherwise permitted the Respondent to use the Complainant's trademarks;
(f) To the best of the Complainant's knowledge, the Respondent has no rights or legitimate interests in the Domain Name, and has not been commonly known by the Domain Name;
(g) SOUMAYA SLIM is not a commonly used name or phrase, and has been made famous through use by the Complainant. From this fact, it can be inferred that the Respondent would not have registered the Domain Name but for the renown of the Complainant's SOUMAYA SLIM mark;
(h) The circumstances of the case, including the fact that the Respondent makes no genuine use of the Domain Name, indicate that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant;
(i) The fact that the Respondent has engaged in a pattern of registering domain names incorporating famous trademarks is a further indication of bad faith on the part of the Respondent in registering and using the Domain Name; and
(j) The Respondent's behaviour suggests that at the time of registration, the Respondent had knowledge of the Complainant's trademarks and intentionally registered the Domain Name to trade off the goodwill and reputation of the Complainant. B. Respondent
The Respondent submitted a short Response, in which it made the following assertions:
(a) The Domain Name has never resolved to a parking site;
(b) The Domain Name has never been offered for sale to the Complainant nor any other third party;
(c) The Domain Name has never made any reference to the Complainant, its website or its good and services, and contains no meta-tags referring to the Complainant's website or domain names;
(d) The fact that the Domain Name was registered prior to the Complainant's registered trademarks is conclusive of the fact that the Domain Name was not registered in bad faith; and
(e) The Respondent never received any notification from the Complainant as to its rights in SOUMAYA SLIM, which could have avoided the need for these proceedings.
The Respondent also stated in its Response that, having read the Complaint, it has no further intention to keep or control the Domain Name. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant must first establish that there is a relevant trademark or service mark in which it has rights. In this case, the Complainant relies on both common law rights, and registered trademarks which (with the exception of one registration) were registered after the Domain Name was registered.
In relation to the common law rights that the Complainant asserts by virtue of its long and extensive use of the personal name “Soumaya Slim”, it is well established that the Policy protects rights in unregistered marks: SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131, Imperial College v. Christopher Dessimoz,WIPO Case No. D2004-0322. Further, it is possible for a complainant to establish unregistered or common law rights in a personal name, where the unregistered personal name is being used in trade or commerce: see Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210 and Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service,WIPO Case No. D2004-0108.
Having considered the evidence submitted by the Complainant, the Panel accepts that the Complainant can claim rights in SOUMAYA SLIM as an unregistered common law trademark, which has been in existence since at least 1994, if not before. The Panel accepts that Soumaya Slim was a well known Mexican individual, active in the artistic and cultural sector, and the Museo Soumaya Slim is an internationally significant museum. While the Complainant is a corporate entity, and is not Soumaya Slim herself (as are most successful complainants who claim unregistered or common law trademark rights in their personal names), the Panel is prepared to accept that in this situation, the rights in the name “Soumaya Slim” have been effectively assigned to the Complainant. The Company was set up prior to the death of Ms. Slim, and is controlled by her surviving family members. The Panel considers that in the circumstances, the unregistered trademark rights in SOUMAYA SLIM have vested in the Complainant in relation to artistic and cultural activities.
In relation to the registered trademarks held by the Complainant and the Complainant's associated company, the Panel also finds that the Complainant has established its rights in relation to these marks. One of the trademarks held by the Complainant predates the registration of the Domain Name. The Panel notes that the Policy does not require that the trademark in question predates the disputed domain name (Digital Vision, Ltd v. Advanced Chemill Systems,WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527). This fact may only be relevant to a finding of bad faith under paragraph 4(a)(iii) of the Policy, which is considered below.
Having accepted the above, the question is therefore whether the Domain Name is confusingly similar to the Complainant's marks. The Domain Name consists of the phrase “Soumaya Slim” in its entirety (the addition of the gTLD “.com” being irrelevant for these purposes). The Domain Name is therefore confusingly similar to the Complainant's marks. Paragraph 4(a)(i) is made out. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the Domain Name, either through license or authorisation from the Complainant, or from independent use of SOUMAYA SLIM or the Domain Name, such that the Respondent has acquired rights or legitimate interests in the Domain Name.
The Panel notes that the Respondent has made no assertions as to its rights or legitimate interests in the Domain Name. There is no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services; that it has ever been known by the Domain Name, or that it is making legitimate, non-commercial or fair use of the Domain Name, without the intent to misleadingly divert Internet users from the Complainant's website and/or services.
From the evidence before the Panel, the Domain Name resolves to a website that appears to be associated with Apple Computer's MobileMe software, containing links related to the MobileMe platform. Without further evidence from the Respondent as to the content of the website, the Panel presumes that the Respondent is receiving some kind of remuneration by allowing a third party to utilise the Domain Name by pointing it to a website with click-through links and promotional material. This type of use has been consistently held in appropriate circumstances not to be a legitimate offering of goods or services (PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437). Based on the evidence submitted by the Complainant, the Panel finds that the Respondent's use of the Domain Name is not a bone fide offering of goods, nor is it a legitimate, non-commercial, or fair use.
The Panel finds that, in the circumstances of the present case, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent claims that the fact that the Domain Name was registered prior to the Complainant's registered trademark proves that the Domain Name was not registered in bad faith. The Panel disagrees. As discussed above, the Panel accepts that the Complainant had unregistered trademark rights in SOUMAYA SLIM that predated the registration of the Domain Name. Additionally, one of the registered trademarks held by the Complainant predates the registration of the Domain Name. In any event, though it may be more difficult to show bad faith in such circumstances, a prior domain name is by no means conclusive of a lack of bad faith.
Having examined the circumstances, the Panel accepts that SOUMAYA SLIM is not a commonly used name or phrase. The name was made famous by Mrs. Slim (and as her assignee, the Complainant), through use in trade by Mrs. Slim and the Complainant from at least 1994, if not well before. The Complainant has provided ample evidence that Mrs. Slim and the Complainant were frequently and prominently referred to in business and cultural circles and the popular press. The Panel considers that by 2007, when the Domain Name was registered, the Respondent must have been aware of the fame attached to the Complainant's mark, and would not have registered the Domain Name but for that fame.
In situations such as these, it is difficult to foresee many circumstances where the registration and use of the Domain Name could be said to be bona fide when its registration and use has occurred in the full knowledge of the Complainant and its rights. Where that knowledge is combined with the fact that the Respondent has no connection to the trademark in question, the facts imply opportunistic bad faith on the part of the Respondent (Expedia, Inc. v European Travel Network, WIPO Case No. 2000-0137; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No., D2000-0226).
The Panel notes the Complainant's assertions that (i) the Respondent registered the Domain Name for the primary purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant, sufficient for a finding of bad faith; and (ii) the fact that the Respondent has engaged in a pattern of registering domain names incorporating famous trademarks is also indicative of bad faith.
The Panel does not consider there is enough evidence before the Panel to make out the first assertion. The Respondent has also expressly denied that it has ever offered to sell the Domain Name to the Complainant or any other third party, and the Complainant has not produced any evidence to the contrary as part of the Complaint.
As to the second assertion, the Panel notes that the Respondent appears to be the owner of at least one other domain name that contains a third-party mark. While this is not by any means conclusive, in the circumstances, this fact does tend towards the conclusion that the respondent has registered and used the Domain Name in bad faith.
Finally, as previously indicated, the Domain Name resolves to a website that appears to be associated with Apple Computer's MobileMe software.
Based on the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
Gabriela Kennedy
Sole Panelist
Dated: May 17, 2010
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