Complainant is Fundación Carlos Slim, A.C. of Mexico D.F., Mexico, represented by Abelman Frayne & Schwab, United States of America.
Respondent is M El Mathari of Almere, the Netherlands. 2. The Domain Names and Registrar
The disputed domain names and are registered with Realtime Register B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 22, 2010, the Center transmitted by email to Realtime Register B.V. a request for registrar verification in connection with the disputed domain names. On November 22, 2010, Realtime Register B.V. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On November 29, 2010, the Center issued a Language of Proceeding notification, inviting comments from the parties. Complainant submitted a request that English be the language of the proceeding on November 30, 2010. Respondent did not submit any comments regarding the language of the proceeding and did not oppose Complainant’s request to proceed in English. On December 6, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English and 2) accept a Response in either Dutch or English.
The Center verified that the Complaint together with the amendment to 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 December 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2010. Respondent submitted email communications to the Center on November 20, 2010, November 25, 2010 and December 6, 2010.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 6, 2011. 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.
As the Complaint was not filed in the language of the Registration Agreement and in the absence of a formal agreement between parties on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Panel is satisfied that both parties speak and write English. Based on the evidence adduced before the Panel, the Panel finds Respondent to be proficient in the English language. Respondent used the English language in written communications with both Complainant and the Center. Moreover, Respondent asked the Center in English when a decision was to be expected, and never opposed against the use of English in the proceedings. Accordingly, this Panel finds that these elements show that Respondent has a sufficient understanding of English.
Accordingly, the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceedings (See e.g., Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683, according to which, where a respondent shows to be able to understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement; The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, where a respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement). 4. Factual Background
Complainant, Fundación Carlos Slim, A.C., is a Mexican company, founded by Mr. Carlos Slim, who was married to the late Ms. Soumaya Domit Gemayel, the niece of the former President of Lebanon, Mr. Amin Gemayel. In honor of Carlos Slim’s wife, Complainant established a museum, named the Museo Soumaya.
Complainant shows to be the holder of inter alia the following registered trademarks:
- SOUMAYA, registered with the Mexican Institute of Intellectual Property under number 632747 on October 29, 1999 in class 41, and duly renewed;
- MUSEO SOUMAYA, registered with the Mexican Institute of Intellectual Property under number 1060457 on September 11, 2008 in class 41;
- MUSEO SOUMAYA SLIM, registered with the Mexican Institute of Intellectual Property under number 1060458 on September 11, 2008 in class 41.
On October 20, 2010, Respondent registered the disputed domain names and with Realtime Register B.V. On October 21, 2010, Respondent informed Complainant that he had registered the disputed domain names and inquired as to whether or not this disappointed Complainant. On October 25, 20010, Complainant replied to Respondent that he had no authorization to register the disputed domain names and requested Respondent to relinquish all rights to the disputed domain names. On October 26, 2010, Respondent replied stating that he was going to use the disputed domain names for his websites, attached a preview and requested that Complainant contact him via email if Complainant wanted to make an offer. In further email communications to Complainant, Respondent indicated that he did not mean to offer Complainant to buy the disputed domain names, that he was a simple fan and that he “contacted Mr.Slim for his oppinion, for ideas on the website (sic)”.
Respondent does not make active use of the disputed domain names. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain names to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names. According to Complainant, Respondent has not used the disputed domain names since its registration. Finally, Complainant considers that the disputed domain names were registered and are being used in bad faith. B. Respondent
Respondent did not submit a formal response to the Complaint in accordance with paragraph 5(b) of the Rules. However, Respondent expressed its position in three emails addressed to the Center. According to Respondent, Complainant has no trademark rights corresponding to the disputed domain names. Respondent asserts that he did not put anything online yet, because he wanted to know the reaction of Complainant. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is 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.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain names. The standard of proof in this administrative proceeding is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. The disputed domain names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the trademark SOUMAYA, which is used in connection with services in the fields of education and entertainment, as well as cultural services, it is clearly established that there is a trademark in which Complainant has rights. The SOUMAYA trademark is derived from the name of the late Soumaya Domit Gemayel.
According to the Panel, the mere addition of words to a trademark that are associated with the business of a complainant, as well as words that are associated to the trademark, do nothing to reduce the risk of confusing similarity (See Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scot banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that that domain name identifies a website from which they can download software supplied by the complainant in that case; Nintendo of America Inc v. Marco Beiien, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to POKEMON in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word “POKEMON”; Nintendo of America, Inc.v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKEMON marks; Caterpillar Inc. v. Pipetech, NAF Claim No. 1000030, where the domain name was held to be confusingly similar to complainant’s CAT mark under the parameters of Policy paragraph 4(a)(i).
The additions to a complainant’s mark in its entirety of a common term directly relating to a complainant’s business, as well as the addition of the generic top-level domain (“gTLD”) “.com” were found by many previous panels to be insufficient to distinguish the domain name from a complainant’s mark under Policy, paragraph 4(a)(i)).
The Panel considers the disputed domain names to incorporate the SOUMAYA trademark in its entirety, to which only the family names “Domit” or “Domit” and “Gemayel” are added. Because of the origin of the SOUMAYA trademark and the reputation of the late Ms. Soumaya Domit Gemayel, the words “Domit” and “Gemayel” are both individually and collectively associated to the SOUMAYA trademark. Since the disputed domain names incorporate the SOUMAYA trademark in its entirety and only add terms that are associated to the trademark, the Panel considers the disputed domain names to be confusingly similar.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain names.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain names in order to place the burden of rebuttal on Respondent. (See: Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain names and that Respondent has not acquired trademark or service mark rights corresponding to the disputed domain names. Respondent’s registration of the disputed domain names was not authorized by Complainant. There are no indications that a connection between Respondent and Complainant, or even Ms. Soumaya Domit Gemayel, existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. In fact, Respondent is not making any use of the disputed domain names at all. According to the Panel, the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (See American Home Products Corporation vs. Ben Malgioglio,WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244; Paws, Inc. v. , NAF Claim No. 97328; Victoria’s Secret et al v. This Domain Name For Sale, NAF Claim No. 96486).
Furthermore, the day after he registered the disputed domain names, Respondent informed Complainant that he had registered the disputed domain names and inquired as to whether or not this disappointed Complainant. Upon reply by Complainant, who requested Respondent to relinquish all rights to the disputed domain names, Respondent asked to be contacted via email if Complainant wanted to make an offer. Although it is not entirely clear whether this offer relates to the sale of the disputed domain names or to the content of the websites Respondent allegedly wanted to design, given the circumstances of this case, such offer can neither be considered to be a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). Indeed where the only use of the disputed domain names that are confusingly similar to trademarks in which Complainant has rights is to contact Complainant to ask whether it is disappointed by the registration of the disputed domain names and to request it to make an offer, such use amounts in the Panel’s view to a form of blackmailing.
In light of the above, the Panel is of the opinion that Respondent cannot reasonably claim any rights or legitimate interests in the disputed domain names. The fact that Respondent described himself as a simple fan in email communications to Complainant does not alter the Panel’s conclusions in this regard, especially given the circumstances enunciated above.
The Panel therefore finds Complainant has satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may be evidence of bad faith. Among these factors is the registration of a domain name in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct.
1. Bad Faith Registration
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant and/or Complainant’s rights in the SOUMAYA trademark at the moment he registered the disputed domain names, since the day after the registration of the disputed domain names, Respondent contacted Complainant to inform it about the registration of the disputed domain names. According to the Panel, given the circumstances of this case, Respondent’s awareness of Complainant and/or Complainant’s trademark rights at the time of registration is further evidence of bad faith. (See Nintendo of America Inc v. Marco Beijen, supra, where POKEMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
Furthermore, the Panel finds that Respondent must have had knowledge of Complainant and/or Complainant’s rights in the SOUMAYA trademark at the moment he registered the disputed domain names, since Respondent had no rights to or legitimate interests in terms similar to the disputed domain names, it is inconceivable Respondent came up with the disputed domain names by himself.
Therefore, it is established that the disputed domain names were registered in bad faith.
2. Bad Faith Use
In the instant case, Respondent is passively holding the disputed domain names. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, the concealment of identity, etc. (See e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763).
Apart from the passive holding of the disputed domain names, the file shows that Respondent contacted Complainant shortly after the registration of the disputed domain names and asked Complainant to contact him if it wanted to make an offer. Although such is denied by Respondent, in the current circumstances, the Panel finds on the balance of probabilities that “please mail me if you want to make an offer”, in reply to a communication by Complainant that Respondent relinquish its rights to the disputed domain names, implies Respondent intended to somehow benefit financially from the disputed domain names and the websites associated therewith. According to the Panel this cannot be considered to be genuine use of the disputed domain names and sufficiently demonstrates that Respondent registered the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registrations to Complainant for valuable consideration in excess of out-of pocket costs (See Nike, Inc. v. Farrukh Zia,WIPO Case No. D2000-0167; Skype Limited v. Xiaochu Li,WIPO Case No. D2005-0996).
As a result, it is established that the disputed domain names have not only been registered, but are also used in bad faith.
Here again, the fact that Respondent described himself as a simple fan in email communications to Complainant does not, given the circumstances enunciated above, alter the Panel’s conclusions that the disputed domain names were registered and used 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 disputed domain names and be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: January 20, 2011
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