The Complainant is América Movil, S.A.B. de C.V of Mexico City, Mexico, represented by Tsuru Morales Isla Abogados, S.C., Mexico.
The Respondent is Travis Sutton, Green Shoot Group of Holly Springs, North Carolina, United States of America (“United States” or “US”). 2. The Domain Names and Registrar
The Disputed Domain Names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2017. On January 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 24, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2017.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on March 8, 2017. 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
4.1. The Complainant is one of the largest telecommunications companies in the world. As of May 2016 and up to this date, the Complainant has occupied the 142nd place in Forbes’ Global 2000 list, 127th in sales, 281st in profit, 355th in assets, 169th in market value. The Complainant has also been included in Fortune’s Global 500 list for 10 years, occupying the 154th spot in the 2016 edition with revenue of USD 56,361 million.
4.2. The Complainant owns numerous trademark registrations for the mark CLARO including in Mexico, with registrations dating from 2006, and in the United States, with registrations dating from 2011.
4.3 The Disputed Domain Name was registered on June 11, 2011, and the Disputed Domain Name was registered on February 16, 2014. The disputed domain name does not resolve to an active website. The Disputed Domain Name resolves to a generic registrar parking page with sponsored links. 5. Parties’ Contentions A. Complainant
5.1. The Complainant states that the Respondent registered without authorization the Disputed Domain Names, and , respectively on June 11, 2011, and on February 16, 2014.
5.2. Furthermore the Complainant contends that the Disputed Domain Names incorporate the Complainant’s trademark CLARO in its entirety with the addition of the words “cloud” and “logic” to the Complainant’s registered mark. Thus, this addition does not prevent the Disputed Domain Names from being confusingly similar to the trademark CLARO.
5.3. The Complainant states that the Respondent lacks rights or legitimate interests in the Disputed Domain Names, which were registered and are being used in bad faith. B. Respondent
5.4. The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specific remedies to trade mark owners against registrants of domain names where the owner of the mark (i.e., the complainant) proves each of the following elements:
(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 was registered and is being used in bad faith.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”. A. Identical or Confusingly Similar
6.4. The Disputed Domain Names are confusingly similar to the Complainant’s trademark CLARO as they contain it entirely.
6.5. The Complainant holds and exercises (through its sub-holding companies) commercial control over Claro S/A and Administradora de Marcas S. de R.L.MRD, as indirect subsidiaries. This is confirmed by the Affidavit signed by a legal Representative of the Complainant.
6.6. Altogether the Complainant, Claro S/A and MRD are owners of several trademark registrations for CLARO in Switzerland, Denmark, Turkey, France, Austria, the Russian Federation, Germany, Slovakia, Brazil, the United States, Latvia, Sweden, Slovenia, Poland, the United Kingdom of Great Britain and Northern Ireland, Greece, Mexico, Finland, Spain, Ireland, Portugal, Lithuania, Cyprus, Canada, Australia, Estonia, New Zealand, Singapore, Italy, Bulgaria, Belgium, the Netherlands, Luxembourg, Czechia, Malta, Colombia, Argentina, Paraguay, Uruguay, Chile, Peru, Ecuador, Guatemala, El Salvador, Honduras, Nicaragua, Panama, Costa Rica, the Dominican Republic and Puerto Rico.
6.7. Prior UDRP Panels have held that for the purposes of the first element the Policy does not require that a mark should be registered in the country in which the Respondent is based. lt is sufficient that a complainant can demonstrate registered trademark rights in some jurisdiction (See Koninklijke KPN N V v. Telepathy Inc.,WIPO Case No. D2001-0217; and Statoil ASA v. Ken Suzue,WIPO Case No. D2016-0895).
6.8. The Disputed Domain Name incorporates in its entirety the Complainant’s CLARO trademark. It is impossible to consider that the word “logic” (easily attributable to a CLARO service) could in any way help differentiate the Disputed Domain Name from the rest of the domain names and trademarks owned by the Complainant (See Wal-Mart Stores. Inc. v. Walsucks & Walmarket Puerto Rico,WIPO Case No. D2000-0477; and Advance Magazine Publishers Inc. v. Arena International Inc.,WIPO Case No.D2011-0203).
6.9. The Disputed Domain Name also incorporates the Complainant’s CLARO trademark in its entirety. Due to the Complainant’s main economic activities and focus on the rendering of services related to telecommunications, the companies that comprise the Complainant’s economic group have commenced the offering of cloud computing services. These computing services have been labeled “Claro Cloud” and are obtainable in a great amount of countries. Hence, the addition of the word “cloud” to the Disputed Domain Name, far from differentiating it from the Complainant’s trademarks and domain names, may heighten the confusing similarity (See eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307; and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888).
6.10. Finally, the addition of the generic Top-Level Domain (“gTLD”) “.com”, is immaterial for purposes of assessing confusing similarity (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541; and Arthur Guinness San & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
6.11. Accordingly, the Disputed Domain Names are confusingly similar to the CLARO trademark. The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
6.12. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons:
6.13. The Complainant or any of its subsidiaries have never licensed or authorized the Respondent (as Travis Sutton or as Green Shoot Group LLC) to use the Complainant’s trademark in any way which could be derived as the Complainant’s approval or as authorization to register the Disputed Domain Names or .
6.14. The Respondent, Travis Sutton, provided the Registrar with the name of an organization, Green Shoot Group LLC when registering the Disputed Domain Names. Neither Travis Sutton nor Green Shoot Group LLC hold any trademarks, in the United States or elsewhere, which could substantiate a right over the Disputed Domain Names.
6.15. The Respondent Travis Sutton and Green Shoot Group are related to several other domain names, none of which contains the use of CLARO in a way that could validate the unauthorized registration and passive holding of domain names containing the Complainant’s CLARO trademark.
6.16. Upon further research, the Complainant found what appears to be the Respondent’s website, resolved by the domain name and redirected by the domain name . ln said website, Green Shoot offers “Cloud Services”, and “Professional Services”, without making a single mention of or providing links to a site which offers “Claro’’, “Claro Cloud” or “Claro Logic” services.
6.17. Neither the Respondent’s name nor that of his organization contains the term “claro”, nor do they present themselves as such. The Respondent has not been commonly known by the domain name. As it can be seen from the reverse Whols, submitted in evidence by the Complainant, the Respondent has registered some domain names incorporating trademarks of third parties.
6.18. The Disputed Domain Names are currently inactive or resolve to a generic parking page with sponsored links and according to the Internet Archive Way Back Machine, the only recorded active uses correspond to as a promotional site for a Portuguese Registrar. Moreover the current source code of the websites resolved to by the Disputed Domain Names show no signs of preparations for an otherwise active use of the Disputed Domain Names.
6.19. There is no evidence of the Respondent’s use of or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names.
6.20. The preceding arguments and evidences establish a prima facie case regarding the lack of rights or legitimate interests by the Respondent in the Disputed Domain Names, shifting the burden of production of evidence to the Respondent. It was up to the Respondent to rebut the arguments and evidence laid out in the Complaint and prove its rights or legitimate interests in respect of the Disputed Domain Names (see Confederation Nationale du Credit Mutuel v. Balley Arthur, Touvet-Gestion,WIPO Case No. D2015-2221; Skipton Building Society v. , Private Registration,WIPO Case No. D2011-0222; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
6.21. Under these circumstances, including the Respondent’s default, the absence of any authorization by the Complainant and the lack of any plausible legitimate reason for the Respondent to use the Disputed Domain Names, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Accordingly, the second element of the Policy has been established. C. Registered and Used in Bad Faith
6.22. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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.
6.23. Past UDRP panel decisions have determined that the Complainant’s CLARO trademarks are widely known in their field and have worldwide fame (See América Móvil, S.A.B. de CV v. A Domain Privacy / Ready Asset, Nish Patel,WIPO Case No. D2014-0610; Administradora de Marcas, RD. S. de R.L. de CV v. Richard Yaming,WIPO Case No. D2012-1923; and America Móvil, S.A.B. de C. V v. Claro GmbH & Co. KG, WIPO Case No. D2008-1770).
6.24. Accordingly, as shown by the evidence submitted by the Complainant. The Complainant has a widespread reputation sponsoring international sports and cultural events since its creation. American Audiences in North and South America are not alien to events like Formula 1 races (hosting a Grand Prix themselves), the Olympics (heading the medal count for earliest editions) or the Latin Grammys (hosted in the United States of America and aimed at the Spanish-speaking population in the country), all of them sponsored by the Complainant.
6.25. Even if the Respondent had been surprisingly oblivious to the media coverage and merchandising of the Complainant’s trademark, running a simple search on the Internet would have been enough to reveal the existence of the great number of trademarks owned by the Complainant since 2005 or registered domain names dating as far back as 1996.
6.26. The Panel finds that the Respondent registered two domain names that contain a famous trademark without authorization, and without offering any explanation for doing so.
6.27. The Disputed Domain Names are inactive, or simply resolve to a generic parking page with sponsored links. The fact that one of the Disputed Domain Names is inactive does not prevent a finding of bad faith in the present case. UDRP panels have consistently held that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name.
6.28. The Complainant alleges, and the Respondent has not disputed, that the Respondent offers competing cloud computing services via the domain name . The Panel finds that the Respondent most likely had the Complainant in mind when registering the Disputed Domain Names, and did so either to prevent the Complainant from reflecting its mark in corresponding domain names, or in order to disrupt the business of a competitor, or both. In light of the above, and in the absence of any answer to the Complaint from the Respondent, the Panel concludes that the Disputed Domain Names were registered and are being used in bad faith.
6.29. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Names, and be transferred to the Complainant.
José Pio Tamassia Santos
Sole Panelist
Date: March 25, 2017
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