WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONInmobiliaria Carso S.A. de C.V. v. RusliCyber.com and Trisakti University, Mr. Ahmad RusliCase No. D2008-17671. The PartiesThe Complainant is Inmobiliaria Carso S.A. de C.V., Mexico City, Mexico, represented by Abelman Frayne & Schwab, United States of America. The Respondent is RusliCyber.com and Trisakti University, Mr. Ahmad Rusli, Jakarta, Indonesia. 2. The Domain Name and RegistrarThe disputed domain name <carlosslimhelu.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2008. On November 18, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On November 19, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2008. The Response was filed with the Center on December 11, 2008. The Center appointed Luca Barbero as the sole panelist in this matter on December 22, 2008. 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 BackgroundThe Complainant is the owner of trademarks CARLOS SLIM in Mexico used in connection with business management, real estate, financial and insurance services, design and development of computer services, construction and transportation, and telecommunications, including the following trademarks: - Trademark CARLOS SLIM registration No. 939703 for business management, June 6, 2006. - Trademark CARLOS SLIM registration No. 940915 for insurance, financial issues, real-estate issues, monetary issues, June 6, 2006. - Trademark CARLOS SLIM registration No. 941731 for construction of real-estate, properties, repairs and installation services, June 6, 2006. - Trademark CARLOS SLIM registration No. 941732 for telecommunications, June 6, 2006. - Trademark CARLOS SLIM registration No. 940916 for education, training, entertainment, sporting and cultural activities, June 6, 2006. - Trademark CARLOS SLIM registration No. 939702 for transportable metallic, constructions, metallic, construction materials, June 6, 2006. - Trademark CARLOS SLIM registration No. 940045 for scientific and technological, services, design and development of computer or software equipment and programs, June 6, 2006. The Respondent registered the Domain Name <carlosslimhelu.com> on September 22, 2006. 5. Parties’ ContentionsA. ComplainantThe Complainant states to be a Mexican company founded in 1966 which has operated continuously since then. The Complainant informs the Panel that the chairman of the board of directors of Complainant is Mr. Carlos Slim Hélu and, following Spanish naming customs, Slim is his surname taken from his father and Hélu is his surname taken from his mother. The Complainant indicates that the Respondent in several instances requested for the transfer of the Domain Name for amounts of USD $50,000,000 on December 11, 2007, USD $10,000,000 on March 11, 2008, USD $55,000,000 on May 16, 2008, all well in excess of the out-of-pocket expenses related to the Domain Name. The Complainant points out that the Respondent on September 17, 2008 even threatened to point the Domain Name <carlosslimhelu.com> to a adult site in absence of a reply, providing the Panel with evidence of the above correspondence. The Complainant asserts that the Domain Name is “identical or confusingly similar” to the Complainant’s trademark since the Domain Name incorporates the primary elements of the Complainant’s trademark. According to the Complainant the addition of “Helu” to the Complainant’s trademark does not distinguish the Domain Name from Complainant’s trademark but heightens the likelihood of confusion with Complainant’s trademark since the Complainant’s head of the board of directors is Mr. Carlos Slim Hélu. The Complainant emphasizes that the term “Helu” when used in conjunction with the trademark could be interpreted as offerings emanating from the same source. With reference to rights or legitimate interests in respect of the Domain Name, the Complainant asserts that the Respondent has not been licensed, authorized, contracted or otherwise permitted by the Complainant in any way to use the CARLOS SLIM trademark or to apply for any domain name incorporating the CARLOS SLIM trademark, nor has the Complainant acquiesced in any way to such use or application by the Respondent. The Complainant emphasizes that to the best knowledge of the Complainant, the Respondent has no right or legitimate interest in the Domain Name. The Complainant states that on the information and belief that prior to the registration of the Domain Name, the Respondent did not use “Carlos Slim” or any mark containing “Carlos Slim” as a trademark, company, business or trade name and is not commonly known in reference to “Carlos Slim” or any combination of this mark. The Complainant asserts that the Domain Name was registered on September 22, 2006 after the registration of the Complainant’s trademarks and that it may reasonably be inferred that at the time the Respondent registered the Domain Name, the Respondent was aware of the Complainant’s rights in respect of the CARLOS SLIM trademark. The Complainant emphasizes that the Complainant’s various registrations were notice to Respondent of Complainant’s rights in the CARLOS SLIM mark. The Complainant highlights that CARLOS SLIM is a distinctive trademark and that the Domain Name would not have been registered but for the renown of the trademark and of its director. The Complainant indicates that the Respondent does not currently actively use the Domain Name in connection with a bona fide offering of goods or services. The Complainant emphasizes that the Domain Name is currently associated with a “parking” webpage. The Complainant states that the sole purpose of registering the domain name was to sell it for Respondent’s financial profit to the Complainant or its chairman Mr. Carlos Slim Helu. The Complainant indicates that the Respondent threatened to direct the Domain Name to a pornographic site in an attempt to tarnish the Complainant and its chairman’s reputation. The Complainant informs the Panel that for a period between approximately September 25, 2008 and September 30, 2008, Respondent did point the Domain Name to a pornographic website located at “www.redtube.com”. The Complainant informs the Panel that the Respondent repeated this threat to direct the domain name to “unpredictable destination”. In view of the above the Complainant asserts that it is inconceivable that the Respondent could make any active legitimate use of the Domain Name without creating a false impression of association with the Complainant. According to the Complainant such use cannot constitute a bona fide offering of goods or services nor a legitimate noncommercial use. With reference to the circumstances evidencing bad faith, the Complainant contends that the Respondent registered 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 his documented out-of-pocket costs directly related to the Domain Name. The Complainant highlights that the Respondent threatened to redirect the Domain Name to an adult site and that thereafter, for a period from approximately September 25, 2008 to September 30, 2008, the Domain Name was actually pointed to a pornographic website located at “www.redtube.com”. The Complainant contends that the threats and the actual action are evidence that Respondent registered 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 his documented out-of-pocket costs directly related to the Domain Name. The Complainant also asserts that the registration of a domain name identical or confusingly similar to a well-known trademark by a person with no connection to that trademark amounts to “opportunistic bad faith”. The Complainant alleges that the Complainant’s various registrations existing at the time Respondent registered the Domain Name were notice to Respondent of Complainant’s rights in the CARLOS SLIM mark and that registration of a domain name that is identical or confusingly similar to another’s mark despite knowledge of the mark holder’s rights is tantamount to bad faith registration and use. B. RespondentThe Respondent claims to operate the “www.ruslicyber.com” web site providing “domain name that needed by many people in the world” and helping “people to get the domain name and selects whoever who deserved a domain name [sic]”. The Respondent emphasizes that “the secure action happened when it was still 22 years old, or 750 days ago, or about 18.000 hours ago, or actually on September 22, 2006. The vision and mission is clear, to help MR. CARLOS SLIM HELU get this domain name [sic]”. The Respondent claims to respect trademarks rights and contends to have therefore “saved” the Domain Name. The Respondent also asserts to have demonstrated its good faith by contacting the Mr. Carlos Slim Helu, the chairman of the board of directors of the Complainant and underlined that, notwithstanding these patient efforts the Complainant did not provide feedback on the requests submitted. The Respondent stated that “the value of USD 50,000.000, USD 55,000,000, and USD 10,000,000” indicated in the mails were “only basic parameter” but no reply was received “to discuss that number”. The Respondent also highlighted that he “feel[s] un-appreciated to this condition” and “the Respondent feel un-respected either[sic]” and also the redirection to a pornographic site was just a way another “method” to attract the Complainant’s attention. According to the Respondent, in light of the addition of the word “Helu”, the Domain Name is not similar to the CARLOS SLIM trademark and “the confusions will not happen”. The Respondent underlines that the Domain Name has never been used “in connection with goods or services marketing”. Commenting the redirection to the adult web site, the Respondent stated that “the RedTube.com has nothing valuable thing. The Claimant should consider this good-faith [sic].” With reference to the circumstances evidencing bad faith, the Respondent reiterates that many emails were sent to the Complainant who never replied. 6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly SimilarThe Complainant has provided evidence of ownership of the trademark CARLOS SLIM in Mexico. The Panel finds that the Domain Name is confusingly similar to the trade mark owned by the Complainant. Indeed the mere addition of the word “Helu” which corresponds to the family name on the maternal side of the chairman of the board of directors of the Complainant, does not exclude but rather may tend to increase the likelihood of confusion between the Domain Name and the Complainant’s trade mark. In comparing the Complainant’s marks to the Domain Name with reference to <carlosslimhelu.com> it should be taken into account the well-established principle that the generic top level domain, may be excluded from consideration as being merely a functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”). In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate InterestsThe Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (i) that it has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or (ii) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or (iii) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581). The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Name. The Panel notes that the Domain Name was, at the time of the filing of the Complaint, pointing to a home page of one of the web sited managed by the Respondent with the following advertisement “… Welcome guest; buy, donate; lease, barter or free services – Please visit: RusliCyber.com …”. The Panel finds that under the circumstances the use of the Domain Name confusingly similar to the registered trademark of the Complainant whether to direct visitors to the Respondent’s website or to an adult web site does not constitute a legitimate, noncommercial use of the Domain Name under the Policy. Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad FaithFor the purpose 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 the Domain Name in bad faith: (i) circumstances indicating that the holder 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 that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the Domain Name; or (ii) the holder 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 holder has engaged in a pattern of such conduct; or (iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location. As to bad faith at the time of the registration the Panel notes that the Domain Name wholly incorporates the Complainant’s CARLOS SLIM trademark and corresponds to the full name of the chairman of the board of directors of the Complainant. The Panel observes that it appears from the correspondence of the Respondent that the Respondent was fully aware of the Complainant’s rights at the time of the registration of the Domain Name. Indeed the Respondent stated in one of the emails addressed to the Complainant before the filing of the present procedure: “… I own ‘CarlosSlimHelu.com’. I would like to offer this domain name to you. This domain name is so important to Mr. Carlos Slim Helu. There are so many people want to have this domain name. I have kept this domain name for more that 1 (one) year and secure it from misuse. …”. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant’s trademark at the time of the registration of the Domain Name is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). With reference to use of the Domain Name in bad faith, the Panel finds that in light of the content of the correspondence attached to the Complaint and indeed the statements provided to the Panel in the Response, the Domain Name was registered for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs. Certainly, the indication of a “... value of USD 50,000.000, USD 55,000,000, and USD 10,000,000…” in the correspondence addressed to the Complainant — even if described by the Respondent as “only basic parameter” — are certainly well over any reasonable or documented out of pocket costs. In view of the above, the Panel deems paragraph 4(b)(i) of the Policy applicable to the present case. In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith. 7. DecisionFor all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <carlosslimhelu.com> be transferred to the Complainant. Luca Barbero Dated: January 5, 2009
: https://internet-law.ru/intlaw/udrp/2008/d2008-1767.html
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