The Complainant is Fundación Carlos Slim, A.C. of Mexico City, Mexico, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Luis Slim of Madrid, Spain.
The disputed domain name <carlosslimfundacion.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2018. On September 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 17, 2018.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on September 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on October 19, 2018. 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.
The Complainant is a Mexican non-profit association founded by Mr. Carlos Slim and others in 1986. The Complainant develops programs designed to help vulnerable people in Latin America.
The Complainant owns three Mexican registered trade marks for FUNDACIÓN CARLOS SLIM namely Nos. 1040767, 1040768 and 1040772, in classes 41, 42 and 35 respectively, all registered on May 23, 2008.
The disputed domain name was registered on May 21, 2017.
There is no evidence that the disputed domain name has ever been used for a website or otherwise.
A summary of the Complainant’s contentions is as follows:
The Complainant has acquired common law trade mark rights in the name “Fundación Carlos Slim”, arising from its long and extensive use of that name.
The disputed domain name is confusingly similar to the Complainant’s trade marks.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has never licensed the Respondent to use its trade marks.
To the best of the Complainant’s knowledge, the Respondent has never used the name “Fundación Carlos Slim” or any similar name as a trade mark and the Respondent is not commonly known by any such name.
The Respondent has not used the disputed domain name for any bona fide offering of goods or services.
The Respondent registered and used the disputed domain name in bad faith.
The Respondent registered the disputed domain name primarily to create a false impression of association with the Complainant, which is world-renowned. Because the Complainant’s trade marks are distinctive, the Respondent should be treated as having had actual notice of their existence when he registered the disputed domain name. This shows that the Respondent acted with opportunistic bad faith.
The Respondent set out to create a likelihood of confusion with the Complainant’s marks in accordance with paragraph 4(b)(iv) of the Policy.
The disputed domain name constitutes passive holding in bad faith. The Complainant’s trade mark, which is long-established and widely known, is solely connected with the Complainant. There is no evidence of any actual or contemplated good faith use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established rights in the mark FUNDACIÓN CARLOS SLIM by virtue of its registered trade marks.
The disputed domain name and the Complainant’s trade mark contain the same words; the only difference is that, in the disputed domain name, the word “fundacion” has been moved to the end of the phrase. The Complainant’s distinctive trade mark remains readily recognisable within the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
While the Respondent’s surname is given as “Slim”, this falls well short of raising the possibility that the Respondent might be commonly known by the disputed domain name. The Respondent’s first name is given as “Luis”, not “Carlos” and the disputed domain name is plainly referable to a foundation, rather than just an individual. In any case, the Respondent has not demonstrated that “Slim” is his genuine surname or that he is commonly known by the disputed domain name.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith: the highly distinctive nature of the Complainant’s trade mark which is uniquely associated with the Complainant; the lack of a response from the Respondent or any evidence of actual or contemplated good-faith use; and the implausibility of any good faith use to which the disputed domain name may be put.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <carlosslimfundacion.com> be transferred to the Complainant.
Date: November 1, 2018
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