The Complainant is Claro S.A. of São Paulo, Brazil, represented by Dannemann, Siemsen, Bigler & Ipanema Moreira, Brazil.
The Respondent is José Eduardo Correa, Mirai Servicos em Telefonia Ltda – ME of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2018, 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 September 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 25, 2018. 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 telecommunication services provider operating in Brazil and in other Latin American countries and the United States of America, part to the América Móvil conglomerate. It is the owner, amongst others, of the following trademark registrations in Brazil:
- No. 825196035 for CLARO, filed on January 10, 2003, registered on June 12, 2007, in class NCL(8) 38;
- No. 825625050 for CLARO & device, filed on June 13, 2003, registered on June 5, 2007, in class NCL(8) 38;
- No. 825797101 for CLARO EMPRESA, filed on August 29, 2003, registered on June 12, 2007, in class NCL(8) 38; and
- No. 826879527 for CLARO EMPRESAS, filed on September 9, 2004, registered on October 16, 2007, in class NCL(8) 38.
The disputed domain name was registered on April 8, 2016. Currently the parked page that resolves from the disputed domain name displays the Complainant’s logo on the website’s heading. Evidence submitted by the Complainant shows that the disputed domain name has been used in connection with a website which reproduced the Complainant’s logo offering telecommunication services. (Annex 38 to the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant asserts to be one of the largest telecommunications company in Brazil, serving more than 56 million customers and having 25% of the Brazilian market share.
In view of the importance of its CLARO trademark in Brazil it has obtained the highly renown status which grants Complainant protection over such expression in all fields of activity in Brazil (Annex 12 to the Complaint).
The CLARO trademark has also been registered by the Complainant in Argentina, Colombia, Costa Rica, Cuba, Guatemala, Jamaica, Mexico, Paraguay and the United States of America.
The disputed domain name, under the Complainant’s view, reproduces the Complainant’s highly renown CLARO trademark as well as its CLARO EMPRESAS trademark with the mere addition of the term “para” which translates as “Claro for companies” in English, thus creating a likelihood of confusion between the Complainant’s trademark and the disputed domain name.
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) the Respondent, established as Mirai Serviços em Telefonia Ltda. ME. exploits the same telecommunications services as the Complainant, as can be shown in its website;
(ii) being located in Brazil and exploiting the same services as the Complainant, the Respondent could not be unaware of the Complainant given its great renown in the country; quite to the contrary, the Respondent’s knowledge of the Complainant is evident by the reproduction of the Complainant’s logo in the website that resolved from the disputed domain name and is still depicted in the website’s heading of the current parked page associated with the it;
(iii) the use made by the Respondent of the disputed domain name clearly attempted to create a false association between the parties;
(iv) after having sent a warning letter to the Respondent (Annex 39 to the Complaint), no reply was received by the Complainant, but the active website associated with the disputed domain name was removed;
(v) the Respondent does not own any trademark registration or application for CLARO before the Brazilian Trademarks Office.
(vi) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, given that the disputed domain name has been used to misleadingly divert consumers away from the Complainant’s authentic services by claiming to be the Complainant when it is not.
In what relates to bad faith in registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s highly renown trademark is evident given the reproduction of its logotype and clear intention to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement with the disputed domain name.
Furthermore, the Complainant contends that the Respondent bought the adwords “CLARO + EMPRESA” in search mechanisms such as Google so as to unlawfully divert Internet users searching for the Complainant to the disputed domain name which was ranked and would appear at the top of Internet search result pages (annex 42) B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the CLARO and CLARO EMPRESAS trademarks.
The disputed domain name fully incorporates the Complainant’s trademark which has been recognized special protection in Brazil in view of its notoriety and reputation.
The addition of the term “para” (which can be translated into English as “for”) does not prevent a finding of confusing similarity.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the absence of any indication that the Respondent owns any registered trademarks or trade names corresponding to the disputed domain name as well as the Complainant’s trademark have been awarded special protection in Brazil, where both parties are domiciled, corroborate with the indication of a lack of rights or legitimate interests in the disputed domain name.
In this Panel’s view, due to the nature of the disputed domain name, it can easily be associated with the Complainant and its services for corporations, having the disputed domain name a risk of undue association by the Complainant’s customers or Internet users in general.
Furthermore, the website that resolved from the disputed domain name clearly reproduced the Complainant’s, offering telecommunication services, what leads this Panel to the conclusion that the Respondent was seeking to create a false impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s trademark logotype in connection with the Complainant’s services on the website that resolved from the disputed domain name and the Respondent’s attempt to create a false impression of affiliation, endorsement or association with the Complainant.
The Panel comes to this conclusion in view of the overall impression of the webpage in which all construction and communication lead Internet users into believing that such webpage was developed by the Complainant or endorsed by it. Thus, the Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt to misleadingly divert consumers for its own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. 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, , be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: November 6, 2018
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