The Complainant is Tenaris Connections BV of Amsterdam, Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Heartland Construction Inc. of Casper, Washington, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2018. On June 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 5, 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 July 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2018.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 8, 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. 4. Factual Background
The disputed domain name was registered on May 13, 2018. At the time of filing the Complaint, the disputed domain name resolved to a webpage promoting the services of a web designer.
The Complainant is the intellectual property holding company for the Tenaris group of companies (the Tenaris Group) which are suppliers of pipe products to the oil and gas, power, construction, and manufacturing industries. The Tenaris Group operates in more than 20 countries throughout The Americas, Europe, Africa, Asia and Oceania. The name and trade mark TENARIS was coined and adopted in 2001. Its launch was accompanied by worldwide publicity and it has been extensively promoted worldwide through media and online since that date. The Complainant owns trade mark registrations for TENARIS in over 100 countries including registrations in the United States (where the Respondent appears to be based) dating from January 21, 2003 (registration No. 2679032) and April 10, 2012 (registration No. 4124173). It has been the successful Complainant in three previous decisions under the Policy and the Complainant’s rights in the TENARIS trade mark has been recognised in each of those cases.
From on or about May 3, 2018 the accounts department of the Complainant, using its supplier extra-net at entered into email correspondence with one of the Complainant’s licensees regarding payment of an account. On May 14, 2018, one day after the registration of the disputed domain name, the Respondent inserted itself into the chain of email correspondence. Using the disputed domain name and replicating the Complainant’s name and logo, the Respondent addressed correspondence to the licensee using the names and forged signatures of individuals within the Complainant organisation to notify the licensee of an alleged change of banking details and requesting the licensee to make payment to an alternate account in a bank in Turkey. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions may be summarized as follows:
- The disputed domain name wholly incorporates the Complainant’s well-known TENARIS trade mark in which it has well and widely established trade mark rights and also imitates the Complainant’s extranet sub-domain from which it differs only by the omission of the letter “r” and the substitution of a hyphen (-) for a dot (.) which the Complainant asserts is a further attempt to create confusion by “typo-squatting”.
- The Respondent has no rights or legitimate interests in the disputed domain name. It has not been licensed or otherwise authorised to use the disputed domain name and has no trademark or other rights in the disputed domain name. The Respondent’s use of the disputed domain name is fraudulent and is not in the bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name and its use is clearly in an attempt to obtain commercial gain.
- The Complainant’s trade mark is an invented word having no other meaning than to designate the Complainant’s group of companies and the goods and services which they provide.
- At the time of registration of the disputed domain name, the Respondent must have been aware of the Complainant’s trade mark rights and accordingly made a false representation to the Registrar in providing the required warranty that the disputed domain name was not intended for use in breach of the rights of another person.
- The Respondent is engaged in typo squatting and spoofing.
- Immediately after registration of the disputed domain name, the Respondent used it in an attempt to divert payment from the Complainant’s licensee to a false bank account controlled by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has clearly established rights in the trade mark TENARIS. The disputed domain name wholly incorporates that trade mark and is confusingly similar to it. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.7). The addition of the word “supplies” does not negate such confusing similarity. B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise authorised the Respondent to use the disputed domain name and there is no evidence or other indication that the Respondent can claim rights under paragraph 4(c) of the Policy.
The Respondent had an opportunity to answer and rebut the Complainant’s evidence and contentions but it did not do so. The Complainant has established an uncontested prima face case and accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The evidence provided by the Complainant shows that the Complainant’s TENARIS trade mark is an invented word which has received worldwide publicity. There is no credible reason to believe that the Respondent chose the disputed domain name in ignorance of the Complainant’s rights. Further, the disputed domain name comprises not only the Complainant’s trade mark but also a near identical copy of the Complainant’s sub-domain . Absent any evidence to the contrary, the Panel finds that the disputed domain name was registered in bad faith. That finding is reinforced by the circumstances of the Respondent’s use of the disputed domain name discussed below.
Immediately after registration of the disputed domain name, the Respondent proceeded to use it to insert itself into a chain of correspondence between the Complainant and a licensee and, using the disputed domain name, a replica of the Complainant’s stationary and the names and forged signatures of the Complainant’s personnel, attempted to defraud the Complainant by seeking to divert payments from a licensee of the Complainant to a bank account controlled by the Respondent. It is difficult to contemplate a more egregious example of bad faith use and registration of a domain name. Such conduct falls clearly within the circumstances of bad faith registration and use exemplified in paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name was registered and has been used in bad faith. 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 be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Date: August 20, 2018
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