WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Organización Luis Carlos Sarmiento Angulo Ltda. and Grupo Aval Acciones y Valores S. A. v. Ken Brar, Aviva Strategic Consulting Inc.
Case No. D2016-1911
1. The Parties
Complainants are Organización Luis Carlos Sarmiento Angulo Ltda. (“Complainant No. 1”) and Grupo Aval Acciones y Valores S. A. (“Complainant No. 2”) of Bogota, Colombia (collectively also referred to as “the Complainants”), represented by Holland & Knight LLC, Colombia.
Respondent is Ken Brar, Aviva Strategic Consulting Inc. of Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <luiscarlossarmiento.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2016. Respondent sent emails to the Center on October 7, 8, 10, 20, November 2 and 3, 2016. The Center notified the parties about the commencement of the panel appointment process on October 26, 2016.
The Center appointed Stephanie G. Hartung, Daniel Peña and Christopher J. Pibus as panelists in this matter on November 15, 2016. The Panel finds that it was properly constituted. Each member of 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
Complainants are two companies legally incorporated in Colombia and domiciled under the same address in Bogota. Complainant No. 1 is a construction and infrastructure venture with Mr. Luis Carlos Sarmiento Angulo being the controlling partner. Complainant No. 2 is the largest Colombian banking group of which Mr. Sarmiento Angulo is the Chairman of the Board of Directors.
Complainants have recited and the Panel, within its General Powers set forth by paragraph 10 of the Rules, has verified that Complainant No. 1 is the registered owner of various national Colombian trademarks e.g. relating to the designation “Organización Luis Carlos Sarmiento Angulo”, inter alia:
- Word mark ORGANIZACIÓN LUIS CARLOS SARMIENTO ANGULO, Registration No. 338,656, Registration Date: August 8, 2007; Status: Active;
- Word mark ORGANIZACIÓN LUIS CARLOS SARMIENTO ANGULO, Registration No. 338,657, Registration Date: August 8, 2007; Status: Active.
Respondent is residing in Canada and is active in the business of buying and selling domain names.
The disputed domain name was first registered on July 8, 2016. Complainants have provided evidence that at some point before the filing of this Complaint, the disputed domain name redirected to a standardized pay-per-click (PPC) website headed “luiscarlossarmiento.com” that provided for hyperlinks to third parties’ websites related to the sale and rental of houses and appartments.
On July 26, 2016, Respondent sent an unsolicited email to Complainant No. 2 stating his willingness to sell the disputed domain name “as it generates a lot of interest on google searches” and “could be great for building a page about the founder and great marketing”.
Complainants request that the disputed domain name be transferred to Complainant No. 1.
5. Parties’ Contentions
A. Complainants
Complainants argue that they have a common grievance against Respondent as they were both targeted and legally affected by Respondent’s conduct, and that, therefore, both Complainants should be accepted by the Panel as parties to this proceeding.
Complainants point to the fact that Mr. Sarmiento Angulo is and has been for decades recognized among the most important and influential businessmen in Colombia as well as in America, and that both Complainants are basically under his control.
Complainants allege that the disputed domain name is confusingly similar to Complainant No. 1’s trademarks ORGANIZACIÓN LUIS CARLOS SARMIENTO ANGULO as the disputed domain and the trademarks have three identical words in common which in fact respond to the name of the worldwide recognized businessman Luis Carlos Sarmiento and are, therefore, the distinctive elements to Complainant No. 1’s trademarks.
Moreover, Complainants claim that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent so far has not used the disputed domain name for any bona fide offering of goods or services, but merely to redirect it to a PPC website, (2) Respondent is neither commonly known by the disputed domain name nor is he acting as Complainant’s representative and (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but rather acquired the latter for the purpose of selling it to Complainant No. 2 as evidenced by the email-correspondence of July 26, 2016, which also clearly demonstrates that Respondent is aware of the existence of Mr. Sarmiento Angulo, his well-known character and influential participation in the Colombian market.
Finally, Complainants assert that the disputed domain name was registered and is being used in bad faith which again is evidenced e.g. by the email-correspondence of July 26, 2016 and Respondent’s apparent knowledge of the interest in Google searches that the disputed domain name is generating.
B. Respondent
Respondent did not file a formal Response, but sent email-correspondence to the Center on October 7, 8, 10, 20, November 2 and 3, 2016 stating that he did not understand the dispute, but that he was buying and selling many domain names and was willing to transfer the disputed domain name at a fair price.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainants carry the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
As a preliminary note, the Panel recognizes that this case involves two Complainants, which are separate legal entities not belonging to one group of companies though they reside at the very same place, but which still claim to have a common grievance against Respondent as they were both targeted and legally affected by Respondent’s conduct: Complainant No. 1 being the owner of trademark rights relating to the personal name of Mr. Sarmiento Angulo and Complainant No. 2 being the addressee of Respondent’s offer to sell the disputed domain name which includes that very name. It is, therefore, in line with the consensus view among panelists (see e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16) to accept this single Complaint be filed by two consolidated Complainants, thereby also taking into account that they have jointly agreed to seeking transfer of the disputed domain name solely upon Complainant No. 1.
Having said so, the Panel now comes to the following decision on the merits of the case:
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <luiscarlossarmiento.com> is confusingly similar to the trademark ORGANIZACIÓN LUIS CARLOS SARMIENTO ANGULO in which Complainant No. 1 has shown to have rights.
It has become a consensus view among panelists (see WIPO Overview 2.0, paragraph 1.2), that the application of the confusing similarity test under the UDRP will typically involve a straight forward visual or oral comparison of the concerned trademark with the alphanumeric string in the disputed domain name and that the test is satisfied if the relevant trademark would generally be recognizable as such therein. In the case at hand, the trademark ORGANIZACIÓN LUIS CARLOS SARMIENTO ANGULO, which is composed of the first and the family name of Mr. Sarmiento Angulo headed by the generic Spanish term for “Organization” (“Organización”), is still easily recognizable as such in the disputed domain name, which, in turn, is composed of Mr. Sarmiento Angulo’s first name and the first part of his family name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainants’ undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof.
Respondent apparently has not been authorized to use Complainant No. 1’s ORGANIZACIÓN LUIS CARLOS SARMIENTO ANGULO trademarks, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name. Finally, Respondent so far has neither made use of the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. On the contrary, on July 26, 2016, Respondent offered the disputed domain name for sale to Complainant No. 2 stating that “it generates a lot of interest on google searches” and “could be great for building a page about the founder and great marketing”.
Accordingly, Complainants have established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not formally reply to Complainants’ allegations as they were included in the Complaint duly notified to Respondent by the Center on October 3, 2016, nor did he come forward with any other reasonable explanation e.g. in his emails to the Center on October 7, 8, 10, 20, November 2 and 3, 2016, that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As evidenced by the email-correspondence of July 26, 2016, Respondent intended to sell the disputed domain name to Complainant No. 2. The wording of such email leaves little, if no doubt that Respondent was fully aware of the person of Mr. Sarmiento Angulo (whose personal name is reflected in the disputed domain name) and of the reputation that Mr. Sarmiento Angulo enjoys at least in Colombia. This finding is reinforced by the fact that Complainant No. 2 itself neither owns trademarks rights in the name “Luis Carlos Sarmiento” nor carries this name as a company trade name, different from Complainant No.1. Therefore, contacting Complainant No. 2 as a possible interested buyer of the disputed domain name is explainable only against the background of Respondent’s knowledge of Mr. Sarmiento Angulo’s role within Complainant No. 2’s group of companies and the respective value of the disputed domain name for said entity.
Accordingly, the Panel is convinced that Respondent registered the disputed domain name for the purpose of selling it e.g. to Complainant No. 2 for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. Such circumstances serve as evidence of the registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainants have satisfied all of the three requirements of paragraph 4(a) under 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 <luiscarlossarmiento.com> be transferred to Luis Carlos Sarmiento Angulo Ltda.
Stephanie G. Hartung
Presiding Panelist
Daniel Peña
Panelist
Christopher J. Pibus
Panelist
Date: November 28, 2016
