Complainant is Techint - Compañia Técnica Internacional S.A.C.I., Argentina, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
Respondent is Oneandone Private Registration, 1&1 Internet Inc., United States of America (“United States”) / Luis Contreras, United States, represented by Patents on Demand, P.A, United States.1 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 IONOS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019. On May 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2019, 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 Complainant on May 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 16, 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 accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2019. The Response was filed with the Center on June 10, 2019.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 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 the Rules, paragraph 7.
On July 4, 2009, the Panel issued Administrative Panel Procedural Order No. 1 (“Procedural Order No. 1”) requesting the Registrar to clarify several points noting the discrepancy between the creation date for the disputed domain name reflected in the WhoIs and the date indicated by the Registrar in its original email of May 10, 2019, and extending the decision due date to July 31, 2019. The Center received the Registrar’s reply and clarification on July 7, 2019, and on July 12, 2019. 4. Factual Background
Complainant is a company domiciled in Argentina that is a subsidiary of the Techint Group S.p.A. (together with other subsidiaries, collectively referred to as “Techint group of companies”) providing engineering, procurement, and construction services in many countries worldwide.
Complainant has provided evidence that it together with the Techint group of companies is the registered owner of numerous trademarks relating to the designation “Techint”, including, inter alia, the following with protection for the territory of the United States:
- Word-/device mark T TECHINT, United States Patent and Trademark Office (USPTO), Registration No. 4031168, registered September 27, 2011, currently active, registered in the name of Techint Compagnia Tecnica Internazionale S.p.A.;
- Word-/device mark T TECHINT, USPTO, Registration No. 4787789, registered August 11, 2015, currently active, registered in the name of Techint Compagnia Tecnica Internazionale S.p.A.
- Word mark TECHINT, registered in Argentina, Registration No. 2373283, registered on May 26, 2010, currently active, registered in the name of Complainant.
Complainant, furthermore, together with the Techint group of companies owns a number of domain names relating to its (T) TECHINT trademarks, e.g., the domain name which is being used on the Internet to promote the Techint Group S.p.A.’s worldwide business.
Respondent is domiciled in the United States. According to the WhoIs and the Registrar’s replies to the Procedural Order No. 1, the disputed domain name was registered on December 3, 2005, and was owned by Respondent since then. The disputed domain name apparently has not been used on the Internet ever since.
Complainant requests that the disputed domain name be transferred to Complainant. Respondent does not consent to that remedy. 5. Parties’ Contentions A. Complainant
Complainant points to the fact that it was founded already back in 1945 and soon named “Techint” after the original telex code; its trademarks and the products/services associated thereto are extensively advertised and promoted worldwide through different means. Furthermore, Complainant purports that the denomination “Techint” is neither a generic nor a descriptive or common term, but a fantasy word strictly associated to Complainant.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s T TECHINT trademark as it incorporates the latter in its entirety combined with the Spanish term “grupo” for English “group” which clearly refers to the Techint group of companies. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) the Parties are not associated to each other in any way, (2) Respondent was never authorized to use Complainant’s trademark in any way, (3) so far, the disputed domain name has never been used e.g., in connection with a bona fide offering of goods or services or in any other way, and (4) Respondent is not commonly known under the disputed domain name. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) T TECHINT is a distinctive and well-known trademark and the use of the Spanish word “grupo” alongside Complainant’s trademark confirms that Respondent knew Complainant, (2) Respondent is concealing its identity using a Privacy WhoIs Service, and (3) it is clearly implausible that the disputed domain name is put to use with good faith without the intention to target Complainant and its business activities. B. Respondent
Respondent sets out to be a Venezuelan-born entrepreneur who moved to the United States during the 1990’s with now more than 20 years of experience in diverse fields like electronics, information technology, etc. Respondent claims to have registered the disputed domain name already in 2005 and to maintained it with the intent to use it for business and consulting groups related to technological intelligence. Also, Respondent has provided evidence that the term “techint” is a commonly used abbreviation generally associated with “technological intelligence” and well recognized as such.
Respondent argues that Complainant has not satisfied the burden of proving own rights in the disputed domain name and that the latter is neither identical nor confusingly similar to any known trademark owned by Complainant. The record calls into question whether the Complainant (Techint – Compañia Técnica Internacional S.A.C.I.) actually owns United States trademarks identified as USPTO Registration Nos. 4031168 or 4787789, which are registered to a different entity, namely Techint Compagnia Tecnica Internazionale S.p.A. Furthermore, Respondent disputes that Complainant has prima facie shown that Respondent lacks rights or legitimate interests in the disputed domain name as there has been no evidence presented on any cybersquatting activities by Respondent or other attempts to e.g., sell or ill-use the disputed domain name; on the contrary, Respondent still intends to utilize the disputed domain name for military contracts related to the denomination “Techint”. Finally, Respondent claims not to have registered and not to use the disputed domain name in bad faith since (1) the disputed domain name was registered by Respondent already 14 years ago, (2) Respondent in all these years never attempted to target Complainant, but still aims at using the disputed domain name in connection with technological intelligence business which Respondent is about to establish. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has demonstrated to enjoy rights in the trademark T TECHINT within the meaning of the first element of the UDRP. It is well established among UDRP panels that a trademark owner’s affiliate, such as a subsidiary of a parent or of a holding company, is considered to have rights in a trademark under the UDRP at least for purposes of standing to file a UDRP complaint (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1). Accordingly, Complainant’s provision of evidence relating to rights of the Techint group of companies as such in the T TECHINT trademark is sufficient to fulfill these prerequisites.
Moreover, the Panel concludes that the disputed domain name is confusingly similar to the T TECHINT trademark in which Complainant has rights. The disputed domain name incorporates Complainant’s T TECHINT trademark in its entirety, at least as far as all straight forward word elements are concerned. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can already be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (WIPO Overview 3.0, section 1.8), that the addition of another term to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the Spanish term “grupo” for English “group” to Complainant’s trademark does not dispel the confusing similarity arising from the incorporation of said trademark in the disputed domain name.
Finally, the mere fact that the disputed domain name was registered by Respondent already in 2005, while the above mentioned T TECHINT trademarks were registered only in 2011 and 2015, respectively, does not by itself preclude Complainant’s standing to file this UDRP case, but needs to be evaluated in connection with the finding below whether or not Respondent acted in bad faith (see WIPO Overview 3.0, section 1.1.3).
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
As far as the second element under the Policy (paragraph 4(a)(ii)) is now concerned, the Panel notes that Respondent has not been authorized to use Complainant’s T TECHINT trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with e.g., the term “techint” on its own. Finally, Respondent according to its own contentions so far has not yet used the disputed domain name since its registration in 2005 in any way. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). In this context, Respondent has come forward with rather general contentions claiming to have registered the disputed domain name already in 2005 and to have maintained it with the mere intent to use it for business and consulting groups related to technological intelligence, possibly in connection with military contracts. The Response, lacks any more concrete information e.g., as to the intended time frame of such building business and final making use of the disputed domain name, especially given the fact that Respondent’s passive holding of the latter already lasts since about 14 years. Against this background, the Panel has decided to leave it open whether Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy, since this Complaint yet fails for the reasons set out under Section C. below. C. Registered and Used in Bad Faith
The Panel finds that Complainant did not succeed to demonstrate that Respondent registered and made use of the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. There is a consensus view among UDRP panels that bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark with the burden of proof resting with the complainant (see WIPO Overview 3.0, section 3.1).
It is undisputed between the Parties that Respondent registered the disputed domain name already back in 2005 and never attempted in all these years to target Complainant.
The Panel notes that Respondent claims to have an [sic] “engineering background”, and that Complainant provides engineering services. Complainant, in turn, knowing from the WhoIs for the disputed domain name that it was created even back in 2005, has yet nothing brought forward at all in relation to the timing of the registration of the disputed domain name and the accrual of Complainant’s trademark rights in the term “techint” which according to Complainant’s own contentions apparently took place significantly later, namely e.g., in 2011 and 2015, respectively.
While Complainant claims that it was founded in 1945 and [sic] “soon named TECHINT”, there is no evidence in the case file showing that Complainant was using its (T) TECHINT trademark before the registration of the disputed domain name, except for the domain name , registered on February 3, 2000 (although according to the WhoIs currently registered by Techint E&C S.A).
The Panel may not follow Complainant’s allegation that the term “techint” is neither a generic nor a descriptive or common term, but a fantasy word strictly associated to Complainant. “Techint” is obviously composed of the element “tech”, which in many languages including in English is a common abbreviation of “technic” or “technology”, and the element “int” which may stand for a variety of terms such as e.g., “international”, “intelligence”, “integration”, and the like. While Respondent claims that he registered the disputed domain name [sic] “for a company that provides technological intelligence”, the Panel notes that there is no further relevant evidence suggesting this claim. In fact, the disputed domain name has not been used for such purpose since its registration 14 years ago. In addition, there is no reasonable explanation as to why Respondent chose to add the term “grupo” in the disputed domain name except maybe with the unsupported allegation that “place himself and his companies at a forefront of this significant field” and when he claims that “grupo” is a descriptive term. Still and in any case, it would have been up to Complainant to provide sufficient evidence (noting that the burden of proof relies on the Complainant) as to why it is at least more likely than not that Respondent registered the disputed domain name even back in 2005 with Complainant’s (trademark) rights in the term “techint” in mind and with the bad faith intent to somehow profit therefrom. In fact, and especially in light of this timing aspect, Complainant has failed to address this and other issues relating to a concrete kind of ill‑use of the disputed domain name by Respondent at all, but rather aimed at creating a very general picture of Respondent’s bad faith behaving which hardly fits in the overall picture which this case presents. It is correct that the disputed domain name has never been used by Respondent since its registration in 2005; this fact alone still does not sufficiently demonstrate any bad faith intent by Respondent in registering the disputed domain name already back that time when Complaint’s trademark rights (T) TECHINT according to Complainant’s own contentions apparently had not yet accrued, at least not in the United States where Respondent is located; besides, the case file does not contain any concrete contentions made on the part of Complainant e.g., relating to the existence of unregistered trademark rights in the relevant time period. In this context, the Panel has also noted that Complainant could have easily anticipated from the WhoIs for the disputed domain name alone that this timing aspect would be raised by Respondent and, therefore, should have addressed this likely plausible Respondent’s defense in the one other the way (see WIPO Overview 3.0, section 3.1) - which Complainant, however, failed to do.
Finally, the Panel has also well noticed the making use of a privacy service by Respondent; still, UDRP panels agree that there are recognized legitimate uses of privacy and proxy registration services (see e.g., WIPO Overview 3.0, section 3.6) and the present case file lacks any additional circumstances (such as the running of a trademark-abusive website or the provision of false contact information by Respondent) which would have pointed into the direction of a bad faith acting on Respondent’s part when using such privacy service.
To sum up, the Panel finds that Complainant has not met its burden of proof and has not established the third element under the Policy set forth by paragraph 4(a)(iii) and that, therefore, this Complaint must fail. 7. Decision
For the foregoing reasons, the Complaint is denied.
Stephanie G. Hartung
Sole Panelist
Date: July 19, 2019
1 It is evident from the case file that Oneandone Private Registration, 1&1 Internet Inc. is a privacy protection service and that Luis Contreras of the United States is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
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