WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tenaris Connections BV v. WeiBing Case No. D2010-0233 1. The Parties
The Complainant is Tenaris Connections BV of Amsterdam, The Netherlands, represented by Mitrani, Caballero, Rosso Alba, Francia, Ojam & Ruiz Moreno Abogados, of Buenos Aires, Argentina.
The Respondent is WeiBing of Shandong, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with T, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2010. On February 17, 2010, the Center transmitted by email to T, Inc. a request for registrar verification in connection with the disputed domain name. On February 25, 2010, T, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 25, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On February 26, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 March 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2010. The Respondent sent a few email communications to the Center indicating its apparent willingness to settle the dispute with the Complainant. The Complainant preferred to continue the current proceedings. The Respondent did not file any formal Response by the due date.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 30, 2010. 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 Panel notes the Complainant's request that English be the language of the proceeding, and further that the Respondent, although provided with copies of the Center's case-related documents in both English and Chinese, has not elected to formally respond to either this request or to the Complaint. Based on the evidence in the case file, the Panel also notes that the Respondent at one time used English exclusively to operate the website at the Domain Name and the Respondent communicated with the Complainant in English. In view of the above, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render its decision in English. 4. Factual Background
The Complainant, Tenaris Connections BV, is owned and held by Tenaris S.A. The Complainant, Tenaris S.A. and its affiliated companies (hereinafter, together “the Complainant”), are a well known global manufacturer and supplier of steel pipe products and related services used in the drilling, completion and production of oil and gas.
In the last fifteen years the Complainant extended its business globally and is now operating in North and South America, Europe, Asia and Africa. The Complainant currently employs more than 24,000 workers.
The Complainant is the owner of multiple trademark registrations for the mark TENARIS around the world. For example, Community trademark registration No. 002154771 – TENARIS logo, with the registration date of July 15, 2002; Community trademark registration No. 002163335 – TENARIS logo, with the registration date of June 14, 2002; Chinese trademark registration No. 1792154 – TENARIS logo, with the registration date of June 21, 2002; and many others.
The Complainant has expended significant resources throughout the years in promotion and advertisement throughout the world. As a result of extensive use and publicity, the TENARIS trademark has become widely-known and is solely associated with the Complainant. The Complainant further argues that the TENARIS trademark has also become well-known and well-recognized by the general public, and has generated significant goodwill.
The Complainant has also developed a presence on the Internet and is the owner of several domain names that contain the name “tenaris”. For example, , , and others. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name on March 25, 2009.
The disputed domain name used to redirect consumers to a different website, which provided a link to another site operating under the name “China Petroservices”. When the Panel viewed the website at the disputed domain name, it resolved to an error page, displaying the words “Oops! Internet Explorer could not find ”. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the TENARIS trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that it has exclusive rights to the TENARIS trademark and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it does not have a relationship with the Respondent nor has it licensed or permitted the Respondent to use the TENARIS mark.
The Complainant further argues that the Respondent is not making a legitimate or fair use of the TENARIS mark.
The Complainant further argues that the Respondent redirects the website which operates under the disputed domain name to a website that promotes a company which offers quasi-identical goods without the Complainant's consent. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent registered and acquired the disputed domain name primarily for the purpose of selling it. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent registered and acquired the disputed domain name primarily for the purpose of disrupting the business of the Complainant. The Complainant argues that this is evidence of the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent sent a few email communications to the Center. In its communications the Respondent alleged a relationship with the Complainant, based upon which it has a legitimate interest in using the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The TENARIS trademark is registered in multiple territories around the world. For example, Community trademark registration No. 002154771 – TENARIS logo, with the registration date of July 15, 2002; Community trademark registration No. 002163335 – TENARIS logo, with the registration date of June 14, 2002; Chinese trademark registration No. 1792154 – TENARIS logo, with the registration date of June 21, 2002; and many others.
The disputed domain name consists the registered TENARIS trademark and the generic top-level domain (gTLD) “.tel”.
The dominant element in the disputed domain name is the Complainant's TENARIS trademark, which is incorporated in its entirety. The Panel cites the following decision with approval, “[r]espondent's domain name wholly incorporates [c]omplainant's mark […]. Accordingly, it is confusingly similar to a mark in which [c]omplainant has rights” (see Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652).
The addition of the gTLD “.tel” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.tel” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent claimed that it has a relationship with the Complainant, based upon which it has a right or legitimate interest to use the disputed domain name. The Respondent did not submit any evidence in support of this claim.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the TENARIS trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name after the Complainant registered its TENARIS trademark. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant owned registrations for its TENARIS trademark at least since the year 2002. It is strongly suggestive of the Respondent's bad faith that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). Moreover, Respondent suggests in its email sent in response to the Complaint that it has knowledge of the Complainant and their rights.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain name lead Internet users to a website, which advertised and provided information on a company that provides gas or petro. The Respondent's use of the name “tenaris” to promote similar or identical goods to the goods being manufactured and sold by the Complainant clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark TENARIS. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made of the disputed domain name for quasi-identical goods to the ones the Complainant manufactures and produces (as well as counterfeit versions of the Complainant's goods) constitutes bad faith on behalf of the Respondent (see Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
In light of the Complainant's distinctive registered trademark and the Respondent's use of the disputed domain name, the Panel finds that the registration of the disputed domain name shows the Respondent's intent to operate a website that redirects consumers to a website which offers similar services, and by doing so, creating a likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant.
The disputed domain name currently resolves to an error page. However, the fact that the Respondent has ceased the use of the domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
In addition, the Panel finds that the Respondent's attempt to sell the disputed domain name to the Complainant indicates that the disputed domain name was primarily registered for the purpose of selling it (See Conforama Holding v. Ying Liu,WIPO Case No. D2010-0094).
Based on the evidence presented to the Panel, including on the use of the TENARIS trademark, the previous use made by the Respondent of the domain name, the Respondent's current failure to use the disputed domain name in any meaningful way and the Respondent's attempt to sell the disputed domain name to the Complainant, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Further, the disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. A previous WIPO UDRP panel ruled that in such circumstances “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic for commercial gain by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For all 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 be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: April 12, 2010
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