According to paragraph 15(a) of the Rules, the Panel is to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements by a "preponderance of the evidence" (WIPO Overview 2.0, par. 4.7) in order to obtain an order that the <Claro.video> domain name be transferred:
(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 Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
IDENTICAL OR CONFUSINGLY SIMILAR:
Paragraph 4(a)(i) of the Policy is only a standing requirement which is satisfied if the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Furthermore, it is not as extensive as the “likelihood of confusion” test for trademark infringement applied by many courts. Rather, under the Policy confusing similarity is commonly tested by comparing the complainant’s trademark and the disputed domain name in appearance, sound, meaning, and overall impression. See, e.g., The Dannon Company Inc., Compagnie Gervais Danone v. Muhammad Bashir Ibrahim, Case No. D2016-2270 (WIPO, September 12, 2014).
Here, Complainant has submitted evidence of its rights to the CLARO trademark, in relation to telecommunications and video streaming services, in the form of database screenshots from various national trademark offices indicating that the mark is registered. Although it is the preferred practice in UDRP complaints to submit scans of actual trademark registration certificates, Complainant has done so with respect to one United States registration and the Panel accepts Complainant’s claim that it owns rights to the CLARO trademark.
The next step of the inquiry under paragraph 4(a)(i) of the Policy is to compare the CLARO trademark to the <claro.video> domain name. The Panel notes that the second level of the disputed domain name incorporates the Complainant's trademark in its entirety and merely adds the .video TLD. Ignoring the TLD, for the moment, this Panel finds that the second level of the domain name is identical to the Complainant’s trademark.
As for the .video portion of the domain, a multitude of UDRP decisions have held that merely adding a TLD to a complainant’s trademark is not sufficient to distinguish the domain name from such trademark. See, e.g., ARCELORMITTAL S.A. v. Anton M Bahtin, Case. No. 100831 (CAC, August 21, 2014). This is because legacy TLDs such as .com, .net, .org, etc. most often add little further meaning to second level domains and merely act as the addressing devices they were designed to be. However, with the advent of new gTLDs, the text of such new top-levels can, in some cases, add context and substance to the overall domain name and impact the analysis of all three factors under paragraph 4(a) of the Policy.
In the present case, rather than being irrelevant or neutral for the paragraph 4(a)(i) analysis, this Panel finds that the use of the .video TLD in the <claro.video> domain enhances the confusing similarity with Complainant’s CLARO trademark due to the meaning and overall impression it provides in relation to Complainant’s video streaming services.
Accordingly, the Panel finds that the <claro.video> domain is identical or confusingly similar to the CLARO trademark and that Complainant has satisfied paragraph 4(a)(i) of the Policy.
RIGHTS OR LEGITIMATE INTERESTS:
Pursuant to paragraph 4(a)(ii) of the Policy, a complainant has the burden of making a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. Cephalon, Inc. v. Domain Administrator c/o PrivacyGuardian.org, Case No. 100834 (CAC, September 12, 2014). Once this burden is met, it shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy offers respondents several examples of how to demonstrate their rights or legitimate interests to a disputed domain. The first, under paragraph 4(c)(i), involves an inquiry into whether the respondent is using the domain in connection with a bona fide offering of goods or services.
Based on the evidence provided by Complainant, the <claro.video> domain name resolves to a pay-per-click parking website with links to a variety of other websites. Some of these sites are operated by the Complainant and others are operated by third-parties to this dispute. Complainant claims that some of these third parties are its competitors in the telecommunications and video streaming industry and Respondent does not contest this.
Respondent correctly points out that providing a pay-per-click service is a common business practice and can constitute legitimate use of a domain name. However, this is the case where the listings on a pay-per-click page are derived from the generic meaning of a domain rather than from its value as a trademark. WIPO Overview 2.0, par. 2.6. For example, if the word “apple” is used in a domain and its website shows links to pages referencing the well-known tree fruit, this would seem to be a legitimate use of the pay-per-click structure. However, where the links relate to cell phones, music players, computers, and related technology products, it is quite obvious that the trademark value, and not the generic meaning, of the word “apple” is being exploited.
Here, the Spanish word “claro” means “clear” in English but the links at the <claro.video> website do not relate only to the generic meaning of the words “clear” and “video” (e.g., products to help avoid screen static, tips for getting the best picture, etc.). Rather, the links are to websites of Complainant itself and of other companies providing competing telecommunications or video streaming services. As such, the <claro.video> domain is being used to target the CLARO trademark – and thus to confuse and misleadingly divert consumers – and not, as claimed by Respondent, for any generic meaning of the word “claro”. Such use is not bona fide and does not demonstrate that Respondent has any rights or legitimate interest in the domain under paragraph 4(c)(i) of the Policy. See, e.g., BACCARAT SA v. AZLO Ltd, Case No. 100069 (CAC, June 8, 2009).
The existence of third-party trademark registrations for the word “Claro” does not affect this analysis as none of the examples submitted by Respondent relate to telecommunications or video products or services. However, the links at Respondent’s website relate almost exclusively to these fields thus indicating that third-party uses of the CLARO mark are not relevant to the present dispute.
With respect to paragraph 4(c)(ii) of the Policy, the Respondent does not appear to be commonly known by the name "Claro" or by a similar name. The Whois record for the <claro.video> domain lists Respondent as “DNS Manager / Profile Group” and Respondent makes no claim that it is known otherwise.
Finally, paragraph 4(c)(iii) of the Policy looks at whether a respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” The pay-per-click website to which the <claro.video> domain name resolves does not fit into any accepted category of “fair use” such as news reporting, comment, criticism, or the like. In any event, its use is not noncommercial or without intent for commercial gain. Respondent specifically notes that it is in the business of holding domain names “for the purpose of deriving advertising income.”
For these reasons, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and Respondent has not demonstrated that it has rights or legitimate interests in the <claro.video> domain name.
REGISTERED AND USED IN BAD FAITH:
Complainant must demonstrate both that the <claro.video> domain name was registered and is being used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four examples of actions by a respondent that may satisfy this burden of proof. However, the examples of paragraph 4(b) are not exhaustive and panels are free to look beyond them for evidence of bad faith. LA POSTE v. RIVERA BERNARD, Case No. 101139 (CAC, February 10, 2016).
A threshold question here is whether, at the time it acquired the <claro.video> domain name, Respondent was aware of Complainant’s CLARO trademark. Complainant has submitted evidence of the widespread notoriety of its mark, specifically its millions of customers and its use of numerous domain names that incorporate the CLARO mark.
Respondent asserts that “Complainant has not demonstrated that Respondent had actual or constructive knowledge of Complainant at the time Respondent registered the Domain Name” and that it “acquires and holds a portfolio of non-infringing domain names consisting of generic terms, common words, initialisms, acronyms, and short phrases […]” However, Respondent goes on to point out that it is a professional domain investor with “an enormous number of domain names” and that it acquires and holds domain names “for the purpose of deriving advertising income.”
Numerous prior UDRP Panels have found that paragraph 4(a)(iii) of the Policy does not require a specific intent directed at a complainant’s trademark but that it may be satisfied where an experienced, professional domain investor with a sizeable portfolio of names acquires a disputed domain that runs afoul of the Policy. In Intesa Sanpaolo S.p.A. v. Keyword Acquisitions Inc., Case No. D2011-0733 (WIPO, June 17, 2011), the respondent was an experienced domain investor, with a large portfolio, who claimed that it lacked knowledge of the complainant’s existence when it registered the disputed domain name. The Panel in that case determined that such domain owners are held to a higher standard and are expected to show greater caution in their domain acquisitions due to their experience in the industry. See also, Dayton Electric Manufacturing, Co. v. Buy This Website at http://buy.DaytonElectric.com and James Hotka, Claim No. FA 1293631 (FORUM December 31, 2009) (“The Panel accepts Respondent’s arguments that its business model is reasonable and that it may even try to avoid infringement on others’ trademarks. However, in this case, Respondent did not succeed.”); Storvik Aqua AS v. Sucom AS, Case No. 101090 (CAC, January 11, 2016) (“prior panels deciding under the Policy have held that "a sophisticated domainer who regularly registers domain names cannot be 'wilfully blind' to whether a particular domain name may violate trademark rights.”); Domain Hostmaster, Customer ID: 44519875664713, Whois Privacy Services Pty Ltd / Stanley Pace, Case No. D2015-1669 (WIPO, December 9, 2015) (“It is reasonable to require the Respondent, an acknowledged domainer … to conduct a trademark search. * * * Any basic research … would easily lead to results in relation to the Complainant.”)
This is not Respondent’s first exposure to this principle. In CMA CGM v. Whois agent, Whois Privacy Protection Service, Inc. / DNS Manager, Profile Group, Case No. D2016-1036 (WIPO, July 14, 2016), under similar circumstances where the Respondent claimed that it did not have the complainant in mind when it acquired the disputed domain name, the Panel found that “the Respondent is responsible for determining whether any domain name in its bulk purchase violates a third-party’s rights.”
In the present case, Respondent similarly cannot absolve itself of responsibility for the existence, in its large portfolio, of a domain that violates the Policy by resolving to a pay-per-click page with links that target Complainant’s CLARO trademark. Regardless of whether the vast majority of its domains are non-infringing and consist of generic terms, or whether it owns other domains that incorporate the word “clear”, as an experienced, professional domain investor with a sizeable portfolio, it has an obligation to incorporate reasonable and effective processes into its acquisition activities that will enable it to avoid disputes like the present. However, if a rogue domain slips through such processes, it should not avoid the application of the Policy and perhaps the investor will view it as an opportunity to improve its system or simply accept the occasional bad apple as an inevitable part of its business model. As such, this Panel finds that Respondent either knew of, or was willfully blind to Complainant’s CLARO trademark and thus registered the <claro.video> domain in bad faith.
Next, we turn our attention to Complainant’s claim that the Respondent used the <claro.video> domain in bad faith. It is well-established that resolving a domain that incorporates a complainant’s trademark to a pay-per-click website featuring links to websites of the complainant and its competitors constitutes solid evidence of bad faith use with intent for commercial gain under paragraph 4(b)(iv) of the Policy. See, e.g., Enterprise Rent-a-Car Company v. Blupea c/o Janepanas, Sirinarin, Case No. 100053 (CAC, May 25, 2009); AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO October 12, 2008); Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, December 12, 2007).
Respondent claims, with respect to the nature of the pay-per-click links at its website, “that all advertisements associated with the Domain Name were automated and that Respondent had no influence in such advertisements.” Regardless of whether Respondent, its registrar, or its hosting provider selects the links that appear on its website, as the owner of the <Claro.video> domain, Respondent is entirely and solely responsible for the content of its website, including all resulting third-party sites and advertisements which result therefrom. See, eLeader Sp. z o.o. v. Hyunjong Lee, Case No. 100364 (CAC, May 4, 2012) (“Panels have generally found that a domain name registrant is normally deemed responsible for the content appearing on its website, even if it is not exercising direct control over such content”); Disney Enterprises, Inc. v. ll, Claim No. FA 1336979 (FORUM, August 31, 2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website.) As in these cases, Respondent has the final say over what content appears at the <claro.video> website and cannot avoid responsibility therefor simply because it voluntarily allowed a third-party to select pay-per-click links on its behalf.
As noted earlier, Complainant makes further assertions regarding the circumstances set out in paragraphs 4(b)(i) and (ii) of the Policy. However, in light of this Panel’s finding of bad faith registration and use on other grounds, it is unnecessary to address whether these impact the analysis under paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the <claro.video> domain was registered and used in bad faith and that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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