The Complainants are Techint - Compañia Técnica Internacional S.A.C.I. of Buenos Aires, Argentina; Siderca S.A.I.C of Buenos Aires, Argentina, and Tenaris Connections B.V. of Amsterdam, the Netherlands (the “Complainants”), represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Domain Admin., Privacy Protect, LLC (PRIVACYPROTECT.ORG), of Burlington, Massachusetts, United States of America (the “United States”) / Agustina, PAMPATECH of Lima, Peru (the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2019. On February 19, 2019, the Center submitted to the Registrar an emailed request for registrar verification in connection with the disputed domain name. On February 20, 2019, the Registrar sent the Center, by email, 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 to the Complainants on February 20, 2019, providing the registrant and contact information disclosed by the Registrar and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 20, 2019.
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 compliance with paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2019. Pursuant to paragraph 5 of the Rules, the deadline for the Response was March 13, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 14, 2019.
The Center appointed Carolina Pina-Sánchez as the sole panelist in this matter on March 20, 2019. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainants are part of the Techint Group, the largest steel-making company in Latin America and one of the world’s largest manufacturers of steel raw material, mainly used in the oil industry. The Techint Group’s business was founded in 1945 by Agostino Rocca to provide engineering and construction services to clients in Europe and Latin America. It is now a multibillion dollar engineering and construction business with a workforce of over 70,000.
The Complainants are the owners of multiple word trademark registrations that protect the denomination TECHINT and SIDERCA, as evidenced in Annex 7 of the Complaint (hereinafter jointly, “Complainants’ Word Trademarks”). Those trademarks include the following:
(a) For the denomination TECHINT: (i) Argentine trademark registration No. 2270437 to distinguish goods in class 26, registered on February 21, 2008; (ii) Argentine trademark registration No. 2226404 to distinguish goods in class 23, registered on August 16, 2007; (iii) Argentine trademark registration No. 2373283 to distinguish goods in class 33, registered on May 31, 2010; (iv) Argentine trademark registration No. 2226406 to distinguish goods in class 30, registered on August 16, 2007; and (v) Argentine trademark registration No. 2226428 to distinguish goods in class 32, registered on August 16, 2007.
(b) For the denomination “SIDERCA”: (i) Argentine trademark registration No. 2327695 to distinguish goods in class 43, registered on November 10, 2009; (ii) Argentine trademark registration No. 2686846 to distinguish goods in class 6, registered on October 17, 2014; (iii) Argentine trademark registration No. 2400818 to distinguish goods in class 44, registered on October 12, 2010; (iv) Argentine registration No. 2327696 to distinguish goods in class 40, registered on November 10, 2009; and (v) Argentine trademark registration No. 2327697 to distinguish goods in class 37, registered on November 10, 2009.
The Complainants also own figurative trademarks that protect the graphic consisting of a square with horizontal pink, green and blue lines. Those trademarks include: (i) Mexican trademark registration No. 1238108 to distinguish goods in class 42, registered on September 13, 2011; (ii) United States trademark registration No. 4134052 to distinguish goods in class 6, 16 and 39, registered on May 1, 2012; and (iii) Brazilian trademark registration No. 903389975 to distinguish goods in class 39, registered on February 17, 2011 (hereinafter jointly, the “Complainants’ Figurative Trademarks”).
The Complainants own several domain names containing the denomination TECHINT and SIDERCA (vid. Annex 8 of the Complaint). These domain names include: (i) registered on February 3, 2000; and (ii) registered on November 9, 2009 (hereinafter jointly, “Complainants’ Domain Names”).
The disputed domain name was registered on October 16, 2018, as evidenced by the Complainants (vid. Annex 2 of the Complaint).
The disputed domain name resolves to a website for the sale of used cars. 5. Parties’ Contentions A. Complainants
The Complainants submit that they own registered trademark rights in the TECHINT and SIDERCA marks as set out above and that the disputed domain name is confusingly similar to their trademarks.
In addition, the Complainants consider that the Respondent lacks rights or legitimate interests on the disputed domain name and the registration of the disputed domain name was in bad faith because the disputed domain name is being used to benefit from the possible confusion with the Complainant’s trademarks, leading Internet users to its disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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.
The disputed domain name comprises the Complainants’ Word Trademarks and the generic Top-Level Domain (“gTLD”) “.com”, which may be ignored for the purposes of assessing identity and confusing similarity under this element of the Policy.
The mere addition of the gTLD suffix “.com”, having no meaning by itself or in combination with the Complainants’ Word Trademarks, does not have the capacity to distinguish the disputed domain name from the Complainants’ Word Trademarks and is disregarded when comparing the disputed domain name with the Complainants’ Word Trademarks. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080, and VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269.
The disputed domain name is a combination of the Complainants’ Word Trademarks that protect the terms “TECHINT” and “SIDERCA”. As a result, the disputed domain name is identical to Complainants’ Word Trademarks.
As stated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights; the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See Tinynova LLC v. Chris Edwards, Orion Interactive,WIPO Case No. D2016-0804.
The result is that the Complainants have shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights.
Consequently, the Panel finds that the Complainants succeed under the first element of the Policy. B. Rights or Legitimate Interests
Once the Complainants have 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)). See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149.
In the present case, the Complainants alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name (vid. page 16 of the Complaint).
The Panel finds the Complainants have established such a prima facie case inter alia due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the Complainants’ Word Trademarks, 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 Complainants 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 Complainants submitted evidence showing that the Respondent registered the disputed domain name after the Complainants registered the Complainants’ Word Trademarks. According to the evidence filed by the Complainants and the trademark search performed by the Panel, the Complainants owned registrations for the Complainants’ Word Trademarks at least since 2008.
Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be considered to exist if the respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name is resolved, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name is resolved.
From the evidence submitted by the Complainants, the Panel finds that, until recently, the disputed domain name led Internet users to a website that advertised and provided information on a company selling used vehicles, which appear to come from the Complainants’ business group.
For this Panel, there is no doubt that the Respondent, by using the disputed domain name, intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants as to the source, sponsorship, affiliation, or endorsement of its site. The evidence includes the following: (i) the webpage hosted with the disputed domain name incorporates the Complainants’ Word Trademarks and reproduces entire portions of the Complainants’ official website, making it confusing for Internet users and potential customers; (ii) the disputed domain name reproduces the “look and feel” of the Complainants’ official website (i.e. its general presentation, the position of the Complainants’ Word Trademarks, the pink and black colors to distinguish the titles and the texts, the favicon reproducing the Complainants’ Figurative Trademarks, etc.); (iii) the contact details given on the disputed domain name include the Complainants’ address; and (iv) some of the products sold through the disputed domain name have incorporated the Complainants’ Word Trademarks without authorization, specifically, the Respondent offers for sale several vehicles allegedly from the Complainants’ fleet.
In light of the Complainants’ distinctive registered trademarks 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 use the disputed domain name to lead consumers to a website offering products that Internet users would likely confuse and mistakenly identify with the Respondent, as either associated or affiliated with the Complainants.
Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name 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, Siderca S.A.I.C.
Carolina Pina-Sánchez
Sole Panelist
Date: April 4, 2019
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