The Complainant is Tenaris Connections BV, Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Hunter White, United States of America (“United States”). 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 22, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 October 23, 2019 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 24, 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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2019. The Center appointed Daniel Peña as the sole panelist in this matter on November 28, 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 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 Complainant is a leading global manufacturer and supplier of steel pipe products and related services. The Complainant adopted the name and trademark TENARIS 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 trademark registrations for TENARIS in over 100 countries including registrations in the United States, among which: - United States Trademark Registration No. 2,679,032 for TENARIS, registered on January 21, 2003; The Complainant operates on the Internet at several websites, among which “www.tenaris.com”, “www.tenaris.net”, “www.tenaris.org”, “www.tenaris.info”, “www.tenaris.biz”, “www.tenaris.us”. The disputed domain name was registered on August 23, 2019 and has been used for sending emails impersonating the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name incorporates the trademark TENARIS in its entirety, (no matter the repetition of the latter “a”), in relation to which the Complainant has the full right, title and interest. The Complainant does not have any relationship or association with the Respondent, and neither their former nor their subsidiary or affiliated companies have ever authorized the Respondent nor otherwise given permission to use in any way, any of its trademarks, or to apply for or use any domain name incorporating any term totally identical nor confusingly similar with the trademark TENARIS. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. Indeed, the Respondent registered the disputed domain name in order to send emails impersonating the Complainant. The Complainant argues that the main reason of the registration of the disputed domain name was to spoof the Complainant’s communications and fraudulently take advantage of the situation to obtain illegally sensitive information and/or money. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant 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 Complainant has 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 The Panel holds that the disputed domain name The Panel is satisfied that the disputed domain name 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 Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears 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 Complainant 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 Complainant and has not received any license or consent, express or implied, to use the Complainant’s 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 online 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 TENARIS is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name. The Panel finds that the Respondent has registered as a domain name the same expression registered previously by de the Complainant, merely adding a letter “a”. This kind of conduct is considered an act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. Paragon Gifts, Inc. v. Domain.Contact,WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini,WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach. Regarding the use of the disputed domain name, the Panel finds that the Respondent is attempting to deceptively used the email address “[...]@tenaaris.com” to attempt to trick the Complainant’s customers. The Respondent has also sent phishing emails for fraudulent purposes. The Complainant has provided evidence of such use enclosing copy of a deceitful email requesting urgent payments of fictitious invoices in his name. According to section 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that the Respondent registered and is using the disputed domain name 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
- United States Trademark Registration No. 4,124,173 for TENARIS, registered on April 10, 2012.
Sole Panelist
Date: December 12, 2019
Full & Egal Universal Law Academy