The Complainants are Siderca S.A.I.C, Argentina and Tenaris Connections B.V., Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Domain Admin., Privacy Protect, LLC (privacyprotect.org), United States of America (the “United States”) / Rafaela Delbonis, Soft Bon, Peru. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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 the Complainant on the same day, 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 October 11, 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 the Respondent of the Complaint, and the proceedings commenced on October 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2019. The Center appointed Daniel Peña as the sole panelist in this matter on November 14, 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. 4. Factual Background The Complainants are Siderca S.A.I.C, a corporation organized and existing under the laws of Argentina, and Tenaris Connections B.V., a corporation organized and existing under the laws of The Netherlands. The Respondent has engaged in common conduct that has affected the Complainants in a similar way. The Complainants are companies controlled by the international holding company Tenaris S.A., organized in Luxembourg, which, through its affiliates, has a very strong presence in practically all countries in the world. Tenaris S.A. has unified under its name the ownership of industrial and intellectual property rights belonging to Tenaris Group. Tenaris S.A.is a leading global manufacturer and supplier of steel pipe products and related services used in the drilling, completion and production of oil and gas, in process and power plants, specialized industrial and other industrial applications such as automotive and high performance mechanical and structural applications. Siderca S.A.I.C.’s main activity is the manufacturing of seamless steel pipes. Siderca S.A.I.C. is one of the eight mills of Tenaris S.A. Tenaris S.A. itself began with the formation of Siderca S.A.I.C., the sole Argentine producer of seamless steel pipe products. The Complainants are the owners of multiple trademark registrations which cover the expressions “Siderca” and “Tenaris” in several jurisdictions including United States and Argentina, for example Argentinian trademark No. 2566144, SIDERCA, registered on November 10, 2009, and United States trademark No. 4124173, TENARIS, registered on April 10, 2012. The Complainants respectively own several domain names which contain the terms “Siderca” and “Tenaris”, for instance, The disputed domain name was registered on July 5, 2019 and has been used for sending emails impersonating the Complainant. 5. Parties’ Contentions A. Complainant The disputed domain name The disputed domain name is the complete association of both trademarks and trade names, which are used and owned by the Complainants. Since SIDERCA and TENARIS trademarks are fantasy and coined terms, it is impossible that the Respondent randomly registered the disputed domain name without knowing the Complainants. The Complainants consider that the Respondent lacks rights or legitimate interests in the disputed domain name and the registration and use 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. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to evidence 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’ trademarks SIDERCA and TENARIS 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 is viewed as a standard registration requirement 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’ trademarks that protect the expressions “siderca” and “tenaris”. As a result, the disputed domain name is identical to the combination of the Complainants’ trademarks SIDERCA and TENARIS. As stated in section 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 to the combined trademarks 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 Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants bear the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainants to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainants and has not received any license or consent, express or implied, to use the Complainants’ trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademarks is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. Besides infringing the Complainants’ trademarks SIDERCA and TENARIS, the Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant. The Respondent is using the disputed domain name through an email address to offer for sale several vehicles alleged to be from Complainants’ fleet. The sale of vehicles is not comprised within the Complainants’ core business. UDRP Panels have already decided regarding similar cases and ordered the transfer of the disputed domain name to the complainant, see Munchkin, Inc. v. brosecowas,WIPO Case No. D2014-1215; Roper Industries, Inc. v. Roper Industries, Inc., David Willis,WIPO Case No. D2014-1039. As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the products offered for sale through email communications. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. The Panel concludes that the disputed domain name was registered and is being 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 Daniel Peña
Sole Panelist
Date: November 23, 2019
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