The Complainant is Tenaris Connections B.V, Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Contact Privacy Inc. Customer 1248154559, Contact Privacy Inc. Customer 1248154559, United States of America (“United States”) / Tomasz Butryn, 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 8, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 1010, 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 12, 2020, 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 14, 2020. 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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2020. The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 17, 2020. 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 Tenaris Connections B.V., responsible for the protection and management of the intellectual property of the international group organized under the Luxembourg holding company, Tenaris, S.A. The Complainant is a leading global manufacturer and supplier of steel pipe products and related services in a wide range of areas related to the oil and gas, power plants or other industrial applications. The Complainant is the owner of a number of trademarks worldwide. For example, in the United States the Complainant is the owner of the following trademark registrations before the United States Patent and Trademark Office: - TENARIS with registration number 2679032 for class 6, registered on January 21, 2003; and - TENARIS with registration number 4124173 for classes 16 and 39, registered on April 10, 2012. Besides, the Complainant is the owner of a large portfolio of domain names comprising its TENARIS trademark. The disputed domain name was registered on September 8, 2020 and it was used to send emails to Complainant’s clients. In such messaging the Respondent represented itself to be a Complainant’s employee. The Respondent did not answer the Complaint. 5. Parties’ Contentions A. Complainant The Complainant’s trademark and tradename, but with a very common typographical error, as letters “n” and “a” were rotated, are to be considered identical or confusingly similar with the disputed domain name. For the Complainant it is a clear case of intentional “typosquatting”. In reference to the second element, the Complainant denies any relation with the Respondent. The Complainant also negates to have authorized the Respondent or, to have otherwise given permission to use in any way its trademarks, trade names, or domain names or, to apply for, or use, any domain name reproducing TENARIS. The Respondent’s use of the disputed domain name is an attempt to impersonate the Complainant. The Respondent used the disputed domain name to send fake emails to Complainant’s clients, and to obtain illegal payment with false invoices from Complainant’s customers. Accordingly, with such a practice the Respondent tried to impersonate the Complainant. Indeed, the Respondent used “mtkachova@teanris.com” and “sscinvoicing@teanris.com” email addresses to request payment of dubious invoices. Therefore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also asserts that the Respondent is not and has not been commonly known by the disputed domain name. The Complainant provides a Google search for the term “tenaris” where the results appear to refer only to the Complainant. Further, the Complainant alleges that the Respondentis not making a legitimate noncommercial or fair use of the disputed domain name since the only goal appears to have been to obtain money fraudulently. With regard to the third element the Complainant highlights the well-known character of its trademarks, trade name and domain names. Thus, Respondent purposely decided to register the disputed domain name without Tenaris’ authorization. The Complainant also notes that “tenaris” is a coined term with no meaning given in the Spanish or English dictionaries. The Complainant further produces a Google search for the term “teanris” and “tenaris” where the results of the searches refer only to the Complainant’s activities and products. The Complainant concludes that the Respondent registered the disputed domain name being aware of the Complainant. The Respondent is obviously engaging in typosquatting and spoofing. While using fake Tenaris employees’ email addresses the Respondent also included the extension “@tenaris.com”. With such a practice the Respondent increased the possibilities of confusion and the Complainant submits this evidently shows the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the complainant must satisfy the Panel that: (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 was registered and is being used in bad faith. There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. The Panel will also take into consideration the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A. Identical or Confusingly Similar For the purposes of the Policy paragraph 4(a)(i) the Complainant must prove both that the disputed domain name is identical or confusingly similar to a trademark or service mark and that the Complainant has rights on such trademark or service mark. Here, the Complainant has shown trademark rights under United States registrations. Accordingly, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The word “tenaris” is on the evidence a coined term with no meaning except in relation to the Complainant. According to section 1.9, WIPO Overview 3.0: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Indeed, the disputed domain name contains sufficiently recognizable aspects of the TENARIS mark which satisfies the test for the first element of the Policy. It is well established that generic Top-Level Domains “(gTLDs”), in this case “.com”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name, section 1.11 WIPO Overview 3.0. To the satisfaction of the Panel the first requirement is met under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Effectively, such a finding is based on the Complainant’s submissions that the Respondent does not have any connection with the Complainant, that the Respondent is not commonly known by the term “tenaris” or “teanris” nor the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel also notes that the Respondent has not advanced rights or legitimate interests. To the contrary, the use of the domain name appears to be in order to collect payments, thus, allegedly for a fraudulent and spoofing scheme. The Panel finds that the composition of the disputed domain name, with the minor misspelling, is such that the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. This finding is strengthened by the use of The Panel also notes that according to the WIPO Overview 3.0, section 2.1: “...where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. As mentioned, the Respondent did not answer the Complaint. The Complainant has, therefore, demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Panel finds, on the evidence recorded on the case file, that the Respondent had precise knowledge of the Complainant at the time of registration of the disputed domain name. Noting that the Respondent sent fake emails the same day the disputed domain name was registered, in this Panel’s opinion, depicts full and accurate knowledge of the Complainant, its trademarks and activities. See Société Air France v. Domain Administrator, See PrivacyGuardian.org / Domain Admin, Whois Privacy Corp. / Natasha Gupta,WIPO Case No. D2019-0348. The Policy sets in paragraph 4(b) examples of bad faith registration and use which are not meant to be exhaustive of all circumstances from which such bad faith may be found. See section 3.4 WIPO Overview 3.0. As such, activating a phishing scheme by impersonating the complainant is tantamount to bad faith for the purposes of the Policy. In the present case, Respondent has impersonated the Complainant by sending fake emails. The Panel also finds that the Respondent’s use of a privacy service is a further indication of the Respondent’s bad faith. Finally, while the disputed domain name is currently inactive, the Panel finds appropriate to apply the passive holding doctrine. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. As such, use in bad faith is found for the following reasons: (i) the degree of distinctiveness and reputation of the Complainant’s mark; (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the Respondent’s concealing its identity; and (iv) the phishing scheme impersonating the Complainant. Consequently, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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, Manuel Moreno-Torres
Sole Panelist
Date: November 20, 2020
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