{ "case_number": "CAC-UDRP-101341", "time_of_filling": "2016-11-28 09:20:30", "domain_names": [ "claro.video" ], "case_administrator": "Aneta Jelenová (Case admin)", "complainant": [ "Administradora de Marcas RD, S. de R.L. de C.V." ], "complainant_representative": "GAMA Consult GmbH", "respondent": [ " DNS Manager \/ Profile Group" ], "respondent_representative": null, "factual_background": "Complainant is a provider of integrated telecommunications services in Latin America, North America, and Europe, and owns a number of trademark registrations for the word CLARO in relation to telecommunications services and streaming video. Respondent is a domain investor and the owner of thousands of domain names including which it acquired at or sometime after its creation on 13 May 2015. The domain resolves to a pay-per-click website that features links to a number of other websites, some of which belong to Complainant and some of which belong to third-party entities.", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings the Panel which are pending or decided and which relate to the disputed Domain Name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nComplainant is a Mexican company and a wholly owned subsidiary of America Móvil, S.A.B de C.V. (“AMX”). AMX is a provider of integrated telecommunications services in 25 countries in Latin America, North America, and Europe and it services 364.5 million access lines including 22 million PayTV units. Since at least 2007, through Complainant (a trademark holding company) and other subsidiaries, AMX has owned a number of trademark registrations in various countries for the trademark CLARO in relation to telecommunications services and video streaming services.\r\n\r\nAMX operates various multi-national websites including those reached through the domain names and , as well as several country-specific websites including those reached through the domain names , , , and . These websites promote AMX's various telecommunications and video services.\r\n\r\nWith respect to paragraph 4(a)(i) of the UDRP (the \"Policy\"), Complainant contends that the domain is identical or confusingly similar to its CLARO trademark and that the top-level domain \".video\" does not add any distinctiveness to, or alter the identity of the domain.\r\n\r\nComplainant further contends, with respect to paragraph 4(a)(ii) of the Policy, that Respondent has no rights or legitimate interests in the domain name because it is not being used in connection with a bona fide offering of goods or services. The domain resolves to a pay-per-click website that displays links to various other websites. Some of these other websites are operated by Complainant to promote its services and some are operated by a variety of third-party companies, certain of which are claimed to be Complainant's competitors. As such, Complainant contends that the domain is not being used for the generic or descriptive value of the Spanish word \"claro\" (meaning “clear” in English) but, rather, to target its CLARO trademark. This use, it argues, is not a bona fide offering of goods or services.\r\n\r\nComplainant also points out that Respondent could easily have performed an internet search before registering the domain name and that, from the search results, it would have quickly learned that the CLARO trademarks are owned by Complainant.\r\n\r\nWith respect to paragraph 4(a)(iii) of the Policy, Complainant contends that the domain name was registered and used in bad faith. Since Complainant has a strong business presence in the various markets it serves (including Puerto Rico which is a territory of the Respondent's home country of the United States of America), it claims that Respondent was aware of the well-known CLARO trademarks at the time it registered the domain.\r\n\r\nIt is further contended that use of the domain to resolve a pay-per-click website, that displays links to various websites of Complainant and its competitors, constitutes a bad faith intentional attempt to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with the CLARO trademark (Policy, paragraph 4(b)(iv)).\r\n\r\nComplainant also points out that Respondent failed to respond to a cease and desist letter, and one follow-up letter, sent to Respondent prior to the filing of this UDRP Complaint and that this further supports a finding of bad faith.\r\n\r\nNext, Complainant asserts that Respondent's listing of the domain name for the amount of US$679 through the Sedo.com and Afternic.com domain name brokerage\/auction sites also indicates Respondent's bad faith as it constitutes an effort to sell the domain name for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain (Policy, paragraph 4(b)(i)).\r\n\r\nFinally, Complainant argues that Respondent has prevented Complainant from reflecting its mark in a corresponding domain name (Policy, paragraph 4(b)(ii)) and has engaged in a pattern of such conduct with respect to other domain names and trademarks. In support of this, Complainant points to the fact that Respondent has lost a number of prior UDRP cases and is also the owner of a significant portfolio of over 3,000 other domain names, some of which consist of \"typo variants of brands.\"\r\n\r\nIn light of the above contentions, Complainant asserts that all three elements of paragraph 4(a) of the Policy have been satisfied and that the domain should be transferred to Complainant.\r\n\r\nRESPONDENT:\r\n\r\nWith respect to paragraph 4(a)(i) of the Policy, Respondent states that \"Complainant has failed to prove the criteria\" under this paragraph and adds that it \"will not argue that the CLARO.VIDEO Domain Name [...] is not identical or confusingly similar to a trademark or service mark in which Complainant has rights.”\r\n\r\nRespondent contends, with respect to paragraph 4(a)(ii) of the Policy, that it \"acquires and holds a portfolio of non-infringing domain names consisting of generic terms, common words, initialisms, acronyms, and short phrases for the purpose of deriving advertising income by the use of each such domain name in connection with a click-through service which serves as a starting point for Internet users seeking certain information.\" It states that it registered the domain name due to the common and generic nature of its second level Spanish word “claro”.\r\n\r\nIt is further contended that a click-through service is a common business practice and constitutes legitimate use of a domain name where such domain consists of generic terms.\r\n\r\nIn any case, Respondent argues that the Policy does not affirmatively require a respondent to demonstrate legitimate rights or interests and that Complainant has not shown that use of the domain to be illegitimate.\r\n\r\nWith respect to paragraph 4(a)(iii) of the Policy, Respondent contends that it did not have a specific intent directed toward Complainant and did not have a conscious and willful intent to exploit Complainant's rights in the CLARO trademark. It notes that \"Complainant offers no facts or evidence that Respondent had actual knowledge of Complainant at the time Respondent registered the Domain Name.\" Rather, it restates its assertion that it registered the domain due to the common and generic nature of its second level, “claro”.\r\n\r\nIn this vein, Respondent points out that it owns an \"enormous number of domain names\" and that a number of these include the word \"clear\". It asserts that the domain \"fits rather nicely into this portfolio of ‘clear’ domain names.\"\r\n\r\nRespondent further points out that \"Complainant does not have the exclusive, worldwide right to use the word 'claro,' nor does Complainant have a monopoly over any domain name with the word ‘claro’ in it\" and it supports this with the submission of various United States trademark registrations of the mark CLARO owned by third parties.\r\n\r\nNext, Respondent claims that it did not reply to Complainant's cease & desist letter because it \"cannot locate any record of receipt of such cease and desist letter [...]\"\r\n\r\nWith respect to the domain being offered for sale, Respondent argues that \"simply considering to sell or even offering to sell a domain name is insufficient to amount to bad faith\" and it claims that the domain was not acquired primarily for the purpose of selling it to Complainant or one of Complainant's competitors. As a domain consisting of common and generic words, any offer to sell it cannot establish that Respondent registered and is using the domain in bad faith.\r\n\r\nIn light of the above, Respondent contends that the elements of paragraph 4(a) of the Policy have not been satisfied and that this Complaint should be denied.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the 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 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 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.", "decision": "Accepted", "panelists": [ "Steven M. Levy, Esq." ], "date_of_panel_decision": "2017-01-05 00:00:00", "informal_english_translation": "Complainant owns a number of trademark registrations in various countries for the trademark CLARO in relation to telecommunications services and video streaming services (e.g. U.S. word trademark CLARO No. 4545569, filed on 20 September 2005 and registered on 10 June 2014).", "decision_domains": { "CLARO.VIDEO": "TRANSFERRED" }, "panelist": null, "panellists_text": null }