The Complainant is Tenaris Connections BV of Amsterdam, Netherlands, represented by Mitrani, Caballero, Rosso Alba, Francia, Ojam & Ruiz Moreno Abogados, Argentina.
The Respondent is Stanley Pace of Flower Mound, Texas, United States of America, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2011. On August 26, 2011, the Center transmitted by email to F a request for registrar verification in connection with the Disputed Domain Name. On August 28, 2011, F 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 September 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2011. The Center received email communications from a possible Respondent-related contact on September 7, 2011, of which the Center acknowledged receipt on September 9, 2011. The Respondent did not submit any response by the due date for Response. Accordingly, the Center notified the Respondent’s default on September 23, 2011. On September 24, 2011, a late Response was filed by the Respondent with the Center. On September 28, 2011, comments regarding the Respondent’s late Response were filed by the Complainant with the Center.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 3, 2011. 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 Background
The Complainant is a Dutch company that manufactures and supplies steel pipe products and related services and is owned and held by the international holding company Tenaris S.A. ("Tenaris"), a company established in 1948. Since 2001, following a group-wide rebranding initiative, the trade names of both the company now known as Tenaris and the Complainant were changed to incorporate the "Tenaris" name. The Complainant owns numerous trade mark registrations around the world incorporating the name "Tenaris", including a community trade mark for TENARIS registered in 2002. The Complainant also owns two trade mark registrations in the Unites States of America ("USA") for TENARIS, which were registered by an Argentinian affiliate company of Tenaris (formerly known as Siderca S.A.I.C.) on January 21, 2003 and May 4, 2004, and subsequently assigned to the Complainant on June 10, 2008. The Complainant has also registered numerous domain names incorporating TENARIS, including , , and , of which registrations date from as early as October 6, 2000.
The Respondent is an individual residing in the USA. The Disputed Domain Name was registered on March 11, 2005 and as at the date of this decision, the Disputed Domain Name resolves to a parking page containing numerous sponsored links (the "Website"). 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant's TENARIS mark:
(i) the Complainant is the owner of the TENARIS trade mark in over 100 territories throughout the world;
(ii) the word “tenaris” is a coined term, created in 2001 by the Complainant with the assistance of a brand consulting firm;
(iii) the Disputed Domain Name incorporates the Complainant's TENARIS mark and "Tenaris" trade name in its entirety; and
(iv) the only difference between the Disputed Domain Name and the Complainant's TENARIS trade mark and "Tenaris" trade name is the omission of the letter "s" and such omission is a clear case of "typosquatting". As such, the Respondent's registration of the Disputed Domain Name was an intentional registration of a domain name that is a misspelling of a distinctive or famous mark.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Complainant is the sole owner of the TENARIS trade marks, the “tenaris” trade name and domain names incorporating the TENARIS mark;
(ii) the Complainant does not have any relationship or association with the Respondent or any companies affiliated with the Respondent, and has never authorised or otherwise permitted the Respondent to use any of its trade marks, trade names or domain names in any way;
(iii) the Respondent is not using and has not demonstrated an intent to use the Disputed Domain Name in connection with a bona fide offering of goods or services;
(iv) the Respondent is not and has not been commonly known by the TENARIS mark incorporated in the Disputed Domain Name, which is uniquely associated with the Complainant, being a “fantasy and coined term” developed for use by Tenaris in 2001; and
(v) the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name without the intent for a commercial gain.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent is engaged in typosquatting. Because of the close similarity between the Disputed Domain Name and the Complainant’s TENARIS trade mark, Internet users are likely to misspell the trade mark and reach the Respondent’s website;
(ii) the Respondent purposely registered the Disputed Domain Name without the Complainant’s authorisation;
(iii) this is not the first time the Respondent has been sued in a case like this such that the Respondent is aware not only of his non-compliance with applicable legislation, but also of the consequences of his act;
(iv) in each of the previous UDRP cases involving the Respondent, the relevant panel found that the respondent registered and used the relevant disputed domain name in bad faith;
(v) in each of the previous UDRP cases involving the Respondent, the respondent either offered the relevant disputed domain name for sale in order to take advantage of his domain name registrations, deliberately acted in bad faith, or was engaging in typosquatting;
(vi) the Respondent’s pattern of typosquatting and offer to sell distinctive or famous trade mark domain names evidences that the Respondent registered and is using the Disputed Domain Name in bad faith;
(vii) the Complainant was contacted by an individual named Mr. Grogan of Domain Security Experts, who offered the Disputed Domain Name for sale. Although the Complainant cannot confirm the relationship between the Respondent and Mr. Grogan, the Complainant contends that such offer indicates that a relationship between the two does exist, which demonstrates that the main reason for registration of the Disputed Domain Name was for its subsequent sale;
(viii) the Disputed Domain Name was thus registered with conscious bad faith primarily for the purpose of making a bad faith profit by selling, renting or otherwise transferring the Disputed Domain Name registration to the Complainant; and
(ix) the Respondent intentionally attempted and currently attempts to attract for commercial gain, Internet users to its Website by creating a likelihood of confusion with the Complainant's trade marks.
(d) Additional contentions and rebuttal:
(i) the Respondent’s submission was untimely and should thus be disregarded; and
(ii) there are false statements contained in the Response, including the Respondent's allegation that the word "tenari" is a generic Italian word and that a Google search for the word "tenari" does not produce any results relating to the Complainant's company "Tenaris", which statements provide further evidence of the Respondent's bad faith. B. Respondent
The Respondent’s contentions can be summarized as follows:
(a) The Disputed Domain Name is not identical or confusingly similar to the Complainant's TENARIS mark:
(i) there is a critical difference between the Complainant’s TENARIS mark and the term “Tenari”, which is a generic Italian word as well as a surname; and
(ii) the generic nature of the term "Tenari" prevents it from being confusingly similar to the Complainant's TENARIS mark.
(b) The Respondent does have rights or legitimate interests in the Disputed Domain Name:
(i) the Respondent has a bona fide offering of goods and services associated with the Disputed Domain Name, namely the offer of email and web services for surnames, of which Tenari is one such surname in New Zealand; and
(ii) such service has been supported as a fair use of surnames, as evidenced in various UDRP decisions.
(c) The Disputed Domain Name has not been registered and is not being used in bad faith:
(i) the Respondent has never met nor established any relationship with the individual Mr. Grogan or Domain Security Experts, who are not authorised to broker sales of any nature on the Respondent’s behalf, and online Google searches for Mr. Grogan and Domain Security Experts refer to them as spammers / scammers;
(ii) the Respondent had never heard of the Complainant or visited its site until receipt of the Complaint;
(iii) the Disputed Domain Name was not registered nor has it been used in bad faith and the typosquatting cases (finding in favour of the relevant complainants) as cited in the Complaint are not comparable because Tenari is a surname and a generic Italian word;
(iv) in one UDRP case involving the Respondent (Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No. FA1002001309793), the disputed domain name was identical to the complainant’s mark but the respondent still prevailed as the disputed domain name was registered in good faith for the legitimate use of providing email services for individuals with the surname Riveron;
(v) the Complainant failed to show that the Respondent is benefiting from the confusion of the Website with the Complainant, as the screenshot of the Website provided by the Complainant shows that nothing on the site has anything to do with the Complainant and that the Respondent is not profiting from ads related to the Complainant’s business; and
(vi) the Respondent is not trying to sell the Disputed Domain Name to the Complainant. 6. Discussion and Findings A. Late Response
The Panel notes that the Response was submitted three days after the deadline stipulated in accordance with the Rules, but accepts that such delay does not constitute a default where exceptional circumstances, such as the alleged medical conditions cited by the Respondent, exist, and that in instances of technical default, the Panel has discretion to choose whether or not to proceed (Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No. FA1002001309793; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022). In the absence of any evidence of undue prejudice to the Complainant and given that the delay on the part of the Respondent was not inordinate, the Panel in accordance with paragraph 10 of the Rules chooses to exercise such discretion in the present case and accept the Respondent’s Response.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. B. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of TENARIS trade mark on the basis of its registrations for the TENARIS mark (as described in the Factual Background above), which date from 2002.
It is well-established in UDRP proceeding that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case ”.com”, should be disregarded (Rohde & Schwartz GmbH & Co. KG v. Pertshire Marketing Ltd,WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the TENARIS mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s mark is the omission of the letter “s” in the former. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is a common or obvious misspelling of such mark, such variation or instance of typosquatting will not negate the confusing similarity between the disputed domain name and the mark (see Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; and Fuji Photo Film USA, Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971). The Panel accordingly finds that “tenari” remains to be the distinctive and prominent component of the Disputed Domain Name, such that the omission of the letter “s” does nothing to distinguish the Disputed Domain Name from the Complainant’s TENARIS trade mark.
The Respondent’s contention that the word “Tenari” is generic in nature, on the basis that it is a generic Italian word, is rejected by the Panel as this is a bare contention unsupported by any evidence submitted by the Respondent and independent research conducted by the Panel does not confirm such allegation.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the TENARIS mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its TENARIS mark. Further, the Complainant submits that the Respondent is not and has not been commonly known by the TENARIS mark incorporated in the Disputed Domain Name, which is uniquely associated with the Complainant, being a “fantasy and coined term” developed for use by the Complainant in 2001. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests.
As the Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the TENARIS trade mark, the Respondent needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services, becoming commonly known by the domain name, or through legitimate, noncommercial or fair use of the Disputed Domain Name.
The Respondent contends that the fact that it has used the Disputed Domain Name in connection with a bona fide offering of services (namely the offer of email and web services for surnames, of which Tenari is one such surname in New Zealand) indicates that it has rights and legitimate interests in the Disputed Domain Name. However, the Respondent offers no evidence to demonstrate the existence of such bona fide offering of services. On the contrary, a screenshot of the Website as contained in the Complaint shows a page displaying a non-descript search function, albeit the date of such screenshot cannot be ascertained. Further, the Panel notes that as at the date of this decision, the Disputed Domain Name, and two other domain names cited by the Respondent in the Response to demonstrate other instances of bona fide offerings of services (namely and ), resolve to a parking page that contains numerous sponsored links. Previous UDRP panels have found it proper to infer from the existence of such “link farms” that the relevant website operator collects financial remuneration for every sponsored link that is activated by Internet users, and such panels have established that such practice may constitute bad faith in certain cirsumstances (see several UDRP cases that involved the Respondent as a respondent, including Novartis AG v. Jordan Smith / Stanley Pace,WIPO Case No. D2009-1738; Starkey Laboratories, Inc. v. Stanley Pace,WIPO Case No. D2010-0774; and Viacom International Inc. v. Stanley Pace / M Smurth Waite,WIPO Case No. D2010-1149). The Panel concurs with such inferences, the drawing of which precludes a finding that any offering of services by the Respondent on the Website was bona fide (see Madonna Ciccone p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847; and Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253, which support such principle), and also precludes a finding that the Respondent's use of the Disputed Domain Name constitutes noncommercial or fair use.
The Respondent contends that the email and web service offered through the Website have been upheld in various UDRP decisions as a fair use of surnames. However, the Respondent failed to provide any evidence supporting the contention that he used the Disputed Domain Name for such purposes. Accordingly, the issue of fair use in this context does not arise.
The Panel has not been provided with sufficient evidence to support the Respondent's contention that it has rights or legitimate interests in the Disputed Domain Name, and accordingly finds that element 4(a)(ii) of the Policy is satisfied. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
This Panel accepts that there is a clear pattern of conduct on the part of the Respondent in registering domain names in order to prevent owners of the relevant trade marks from reflecting such mark in a corresponding trade name, and finds that this (along with the other circumstances of this case) supports a finding that the Respondent acted in bad faith. Such pattern of conduct is clearly evidenced by the numerous UDRP case decisions that have found against the Respondent for similar instances of unjustified domain name registration (see Flow Companies, LLC v. Stanley Pace,WIPO Case No. D2010-0651; Kayak Software Corporation v. Stanley Pace and Micah Smurthwaite,WIPO Case No. D2010-1178; Novartis AG v. Jordan Smith / Stanley Pace,WIPO Case No. D2009-1738; Starkey Laboratories, Inc. v. Stanley Pace,WIPO Case No. D2010-0774; Viacom International Inc. v. Stanley Pace / M Smurth Waite,WIPO Case No. D2010-1149; and Weil Cadillac-Hummer, Inc. v. Stanley Pace,WIPO Case No. D2010-1711). The Panel particularly notes that in two such cases (namely Novartis AG v. Jordan Smith / Stanley Pace,WIPO Case No. D2009-1738; and Weil Cadillac-Hummer, Inc. v. Stanley Pace,WIPO Case No. D2010-1711), the relevant panels found that the Respondent registered the disputed domain names for the purpose of selling such domain names to the complainants (who were the owners of the relevant trade mark).
This case can be distinguished from the decision in the case of Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No. FA1002001309793, upon which the Respondent relies to prove that the Disputed Domain Name was registered in good faith for legitimate use. In that case, the panel found no bad faith on the part of the respondent on the basis that the complainant had no rights, registered or otherwise, in the relevant trade mark at the time of the domain name registration, such that the Respondent could not have had notice of the complainant's (then non-existent) rights upon registering the domain name. In the present case, the Complainant's registered rights in the TENARIS mark date from 2002 (in the case of its community trade marks), which predates the date of registration of the Disputed Domain Name by nearly 3 years. In the case of the Complainant's registrations for the TENARIS mark in the USA, the Panel notes that such registrations were only assigned to the Complainant (by an affiliated company of Tenaris) in 2008, after the Disputed Domain Name was registered, but accepts that the fact that such registrations were maintained by an affiliate company since 2003 / 2004, that the Complainant continually used the "Tenaris" name in relation to its goods and services since 2001, is sufficient basis to establish that the Complainant had the requisite rights in the TENARIS mark at the time that the Disputed Domain Name was registered by the Respondent, such that no issues to preclude a finding of bad faith registration arise.
The Panel finds that there is insufficient evidence linking Mr. Grogan with the Respondent, and therefore has not taken Mr. Grogan's offer to sell the Disputed Domain Name into account when considering whether the Disputed Domain Name was registered and used in bad faith. Nor has the Panel taken the Respondent's offer to sell the Disputed Domain Name into account, as this offer was to sell the Disputed Domain Name for cost, and there is no evidence that the Respondent intended to sell the Disputed Domain Name for a profit.
Given the global repute of the TENARIS mark and the circumstances of this case, the Panel considers it likely that the Respondent is using the Disputed Domain Name to capitalise on the Complainant’s reputation and goodwill for commercial gain, by attracting to the Website Internet users (who the Panel believes would be drawn to the Website on the mistaken assumption that the Website was authorised by or connected with the Complainant) and thereby benefitting from such confusion by generating revenue from sponsored advertising links. The Panel accepts that the Respondent's prior pattern of conduct, as ascertained from the six UDRP decisions (cited above), each of which found bad faith on the basis of the Respondent's use of the relevant disputed domain name as a click-through directory or parking page containing sponsored links, is persuasive evidence of the Respondent's intentional attempt to use the Website to make bad faith commercial gains within the meaning of paragraph 4(b)(iv) of the Policy, and thus persuasive evidence of the Respondent's bad faith use of the Disputed Domain Name (see Hermes International SCA v. Cui Zhenhua,WIPO Case No. D2010-1743; Control Techniques Ltd. v. Lektronix Ltd.,WIPO Case No. D2006-1052; and TAG HEUER SA v. JBlumers Inc./Jerlad Blume,WIPO Case No. D2004-0871). The factually inaccurate statements alleged by the Respondent in the Response in respect of the generic nature of the (Italian) word "tenari" and that a Google search for the same word produces no results relating to the Complainant, further evidence bad faith on the part of the Respondent.
In these circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Name in bad faith, and element 4(a)(iii) of the Policy has been satisfied. 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.
Gabriela Kennedy
Sole Panelist
Dated: October 14, 2011
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