{ "case_number": "CAC-UDRP-101622", "time_of_filling": "2017-08-01 09:17:35", "domain_names": [ "telcelup.com" ], "case_administrator": "Aneta Jelenová (Case admin)", "complainant": [ "Administradora de Marcas RD, S. de R.L. de C.V." ], "complainant_representative": "GAMA Consult GmbH", "respondent": [ "Juan Hernandez" ], "respondent_representative": null, "factual_background": "The Complainant is Administradora de Marcas RD, S. de R.L. de C.V., a Mexican company which owns several trademarks and domain names worldwide, including the registered trademark \"TELCEL\". These marks and domain names are mainly used in the fields of telecommunication and entertainment services, especially in Mexico. The Complainant is a wholly owned subsidiary of America Móvil, S.A.B de C.V. (AMX), which the Complainant claims is the leading provider of integrated telecommunications services in Latin America and is offering communications solutions in 25 countries in America and Europe. Furthermore, the Complainant claims that at June 30, 2016, AMX had 364.5 million access lines, including 282.9 million wireless subscribers, 33.7 million landlines, 26 million broadband accesses and 22 million PayTV units.\r\n\r\nAccording to the Complainant, \"TELCEL\" was launched in 1989 and it is the leading provider of wireless communications services in Mexico, covering around 90% of Mexico's population.\r\n\r\nRegarding the trademark registrations for \"TELCEL\", the Complainant claims that it owns several registrations consisting of or including \"TELCEL\" especially in Mexico, where the Respondent resides. In particular, the Complainant refers to the Mexican trademark registration 879826 for TELCEL in class 38, the Mexican trademark registration 677446 for TELCEL.COM in class 38 and the Mexican trademark registration 43262 for YO SOY TELCEL in class 38.\r\n\r\nThe Complainant claims that it has been successful in previous UDRP cases regarding the brand TELCEL such as Administradora de Marcas, RD, S. de R.L. De C.V. Radiomóvil Dipsa S.A. De C.V. v. Jordan Smith, WIPO Case No. D2008-1397; Administradora de Marcas, RD, S. de R.L. De C.V. Radiomóvil Dipsa S.A. De S.V. v. Francisco Ito, El Mesero Express \/ NELTELCEL.COM, WIPO Case No. D2008-1555 and Administradora de Marcas RD, S. de R.L. de C.V. v. Muñoz Milén, WIPO Case No. DES2015-0034.\r\n\r\nThe Complainant also claims that, in Administradora de Marcas, RD, S. de R.L. De C.V. v Jose Ramirez\/nuB, CAC Case No. 101347, it has been considered that \"TELCEL\" is a well-known trademark.\r\n\r\nThe Respondent is a physical person residing in Mexico.\r\n\r\nThe domain name in dispute was registered with 1&1 Internet SE on November 25, 2015.", "other_legal_proceedings": "No other legal proceedings are known by the Panel.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant states that the domain name in dispute is confusingly similar to its well-known registered trademark \"TELCEL\" since the term \"up\", which is added to the TELCEL trademark, is very closely connected with TELCEL's business (telecommunication). Furthermore, the Complainant assumes that the addition of the Top-Level Domain \".com\" does not add any distinctiveness to the domain name in dispute. \r\n\r\nThe Complainant also contends that it has not found that the Respondent is commonly known by the disputed domain name. The WHOIS information “Juan Hernandez” is the only evidence in the WHOIS record, which relates the Respondent to the domain name in dispute. The Respondent has not by virtue of the content of the website, nor by its use of the domain name shown that the same Respondent should be considered to be using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also states that when entering the terms “TELCEL” and “Mexico” on Google engine search, all returned results point to Complainant and its business activity. \r\n\r\nThe Complainant states that there is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services. In its view, it is clear that the Complainant has become a distinctive identifier associated with the term TELCEL and that the intention of the domain name in dispute is to take advantage of an association with the business of the Complainant. The Complainant also claims that at the time of the filing of this complaint, the disputed domain name does not resolve to an active website. The Respondent has made no claims to neither having any relevant prior rights of its own, or to having become commonly known by the domain name. Moreover, the Complainant claims it never authorized the Respondent to use its trademark in any form. \r\n\r\nThe Complainant highlights that its trademarks significantly predate the registration of the disputed domain name. In addition, the Complainant asserts it has business presence as well as trademarks in Mexico, where the Respondent resides. The Complainant claims that these facts strongly indicate that Respondent was aware of Complainant’s trademarks at the time of the registration.\r\n\r\nThe Complainant claims it first tried to contact Respondent on July 3, 2017 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the \"TELCEL\" trademarks violated the Complainant’s rights in said trademarks. The Complainant asserts it requested a voluntary transfer of the domain name. On July 13, 2017 the Respondent replied to the Complainant indicating its availability in transferring the domain name. When the Complainant asked about the time it might require to complete the transfer the Respondent indicated from two to six months.\r\nAfter than, on July 17 the Complainant indicated by a new written communication that the time indicated by the Respondent was not acceptable and indicated that in a maximum period of three days the Respondent should have sent the transfer code and proceed to unlock the domain. After this communication the Complainant has not received any answer. \r\nSince the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. According with the Complainant's view the content of the Respondent's answer it is a clear indication about his knowledge on Complainant's rights.\r\n\r\nThe Complainant also states that some Panels have found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name as it happens in the current case. The Complainant also contends that the inaction in relation to a domain name registration can also constitute a domain name being used in bad faith and any attempt to actively use the domain name would lead to confusion as to the source, sponsorship of the Respondent’s web site among the Internet users who might believe that the web site is owned or in somehow associated with the Complainant. \r\n\r\nThe Complainant states it has conducted thorough searches to try to establish whether the Respondent would have any rights in the name. This has been accomplished by trademark database searches, and according to the Complainant, it cannot find that the Respondent has any registered rights in TELCEL or similar names or has become known under said names. \r\n\r\nFinally, the Complainant claims that the Respondent has registered under the name \"Juan Hernandez\" around 1303 domain names including well-known brands with protected trademarks such as , and and that such pattern of abusive conduct constitutes evidence of bad faith according to the Policy as also confirmed by previous Panel.\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent states that even if the domain name in dispute may be considered to be similar to the trademark TELCEL it is composed by abbreviations of generic Spanish words. In addition the Respondent contends that does not match exactly with the TELCEL trademark.\r\n\r\nFurthermore, the Respondent declares that its intention has never been to damage the reputation of the Complainant's trademark and that the Complainant failed to demonstrate the contrary. In addition the Respondent assumes that the disputed domain name has been used only for email services. \r\n\r\nFinally, the Respondent confirmed its intention to transfer the disputed domain name to the Complainant but that the same Respondent is not available to discuss again with the Authorized Representative (Gama Consult) or with any other law firms.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\nThe Complainant, being represented by GAMA Consult GmbH, filed its complaint in relation to the disputed domain name with the Czech Arbitration Court (\"CAC\") on July 26, 2017. \r\n\r\nThe CAC by way of a notification of deficencies in complaint filed on August 1, 2017, informed that the language of the Registration Agreement (Spanish) was different from the language of the proceeding as resulting by the text of the complaint (English). The CAC by way of the above communication assigned to the Complainant a term of five days to file the amended complaint\r\n\r\nOn August 1, 2017, the Complainant filed the amended compliant requesting the English to be the language of the proceeding and providing its arguments in support of the above request. \r\n\r\nThe CAC formally commenced proceedings on August 2, 2017, and notified the Respondent accordingly.\r\n\r\nThe Respondent submitted his response within the time frame required, following which the Complainant requested a temporary suspension of the proceedings to attempt to reach a settlement. The CAC suspended the proceedings accordingly to Par. 11(a) of its UDRP Supplemental Rules. However, the Respondent informed the CAC of its intention to decline the suspension request, and therefore the Czech Arbitration Court decided to resume the proceedings. \r\n\r\nAfter then, the CAC appointed Guido Maffei as the Panel on August 29, 2017.", "decision": "Accepted", "panelists": [ "Avv. Guido Maffei" ], "date_of_panel_decision": "2017-09-04 00:00:00", "informal_english_translation": "The Complainant is the owner of numerous trademark registrations consisting of or including the term TELCEL and, in particular:\r\n\r\n- TELCEL, Mexican trademark registration no. 879826, class 38, registered on April 28, 2005;\r\n- TELCEL.COM, Mexican trademark registration no. 677446, class 38, registered on October 31, 2000;\r\n- YO SOY TELCEL, Mexican trademark registration no. 43262, class 38, registered on July 25, 2007;\r\n- TELCEL (device), U.S. trademark registration no. 4949189; class 9, 16, 35, 38 and 41, registered on May 03, 2016.", "decision_domains": { "TELCELUP.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }