ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Tenaris Connections BV v. Host Master, Transure Enterprise Ltd Case No. D2022-3907 1. The Parties Complainant is Tenaris Connections BV, Netherlands, represented by SILKA AB, Sweden. Respondent is Host Master, Transure Enterprise Ltd, United States of America ("USA"). 2. The Domain Name and Registrar The disputed domain name is registered with Above.com, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2022. On October 19, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2022, 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 October 26, 2022, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 27, 2022. 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 November 1, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 24, 2022. The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 2, 2022. 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. page 2 4. Factual Background Complainant, Tenaris Connections BV, is a subsidiary from the international holding company Tenaris S.A., a global manufacturer and supplier of steel pipe products and related services used in the drilling, completion and production of oil and gas, process and power plants and other industrial applications such as automotive and high performance mechanical and structural applications. Complainant's history dates back to 1909, and today it provides its products and services over 25 countries and employs approximately 23,000 people. Complainant owns a wide portfolio of trademark registrations internationally containing the word mark TENARIS. Some examples of Complainant's trademark registrations can be found below: Registration No. Trademark Jurisdictions International Classes Application Date Registration Date 78037449 TENARIS USA 6 December 1, 2000 January 21, 2003 0119850479003 TENARIS Mexico 6 April 2, 2001 July 26, 2001 1527190 TENARIS Canada 6, 16, 39 May 10, 2011 October 22, 2012 986735 TENARIS Chile 6 January 3, 2012 January 25, 2012 Furthermore, Complainant owns 86 domain names containing the word "tenaris". The disputed domain name was registered on September 13, 2022, and resolves to a webpage displaying a parking page containing links to third party websites. 5. Parties' Contentions A. Complainant Complainant pleads that the disputed domain name is confusingly similar to its registered trademark TENARIS, since it fully incorporates Complainant's trademark TENARIS with the addition of the term "today" and the generic Top-Level Domain ("gTLD") ".net". Complainant affirms that Respondent creates a confusion, considering specially that the disputed domain name uses the well-known trademark TENARIS in its entirety with the addition of the term "today", as consumers may believe that this domain name is linked to Complainant, since Complainant provides services globally under the trademark TENARIS. Therefore, according to Complainant, the disputed domain name presents a high risk of confusion to consumers, who will likely believe it is linked with Complainant´s trademark TENARIS, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules. page 3 In addition, Complainant states that Respondent would not have any rights or legitimate interests in respect of the disputed domain name, nor is Respondent commonly known by the disputed domain name. Further, Respondent has not been authorized, or licensed to use Complainant's trademark TENARIS as a domain name nor is Respondent associated with Complainant. Complainant observes that the website, which resolves from the disputed domain name would be a pay-per-click ("PPC") parking website, which would not mean a noncommercial or fair use of the disputed domain name. Furthermore, Complainant notes that the combination of the word mark TENARIS and the word "today", which compose the disputed domain name, are commonly searched online for the viewing of Complainant's stock price for the day. Thus, Respondent would have intentionally chosen the disputed domain name to divert Internet users. Moreover, Complainant notes that there would be no credible evidence from Respondent that may prove that the disputed domain name is being legitimately used, nor that Respondent is commonly known by the disputed domain name. Complainant further argues that the trademark TENARIS has huge reputation internationally, and Respondent's sole intention would have been to take undue advantage of the well-known trademark - this way, the burden of proof would shift to Respondent to show that it owns rights or legitimate interest on the disputed domain name. This way, Complainant states that no legitimate use of the disputed domain name could be reasonably claimed by Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules has been fulfilled. Finally, Complainant states that (i) the fact that the disputed domain name contains the trademark TENARIS in its entirety would indicate bad faith, given that it is well-known internationally; (ii) the disputed domain name could not be registered by Respondent without knowledge of the existence of the well-known trademark TENARIS; (iii) the PPC links parking page which resolves from the disputed domain name would be further indication of Respondent´s bad faith; (iv) the use of a privacy service for the registration would also indicate bad faith; and (v) that the use of Complainant's well-known trademark TENARIS in its entirety at the disputed domain name would consist in opportunistic bad faith. Thus, the requirements for the identification of a bad faith use of the domain name would have been fulfilled, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. page 4 The burden of proving these elements is upon Complainant. Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel's decision shall be based upon the complaint. A. Identical or Confusingly Similar Complainant has duly proven that it owns prior trademark rights for TENARIS, and that the disputed domain name is constituted by the trademark TENARIS in its entirety with the addition of the term "today". The addition of the term "today" does not prevent a finding of confusing similarity with Complainant's trademark TENARIS, since the trademark TENARIS is fully integrated and recognizable in the disputed domain name. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark TENARIS, and so the requirement of the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") as follows: "[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, 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." In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant's contentions, the Panel has considered Complainant's unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain. Furthermore, Respondent has not used the disputed domain name in the context of a bona fide use that could demonstrate rights or legitimate interests, since the evidence shows that the disputed domain name resolves to a website which only displays PPC links to users, as duly proven by the Annex VI to the Complaint. Therefore, the Panel finds that the requirement of the second element of paragraph 4(a) of the Policy is also satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of registration and use of a domain name in bad faith. Respondent has registered the disputed domain name that fully incorporates Complainant's well-known trademark TENARIS, plus the addition of the word "today". The Panel finds that it was duly demonstrated that Respondent should be aware of Complainant's rights to TENARIS at the time of the registration, as Complainant's trademark is widely known and enjoys an international reputation. page 5 With that in sight, the Panel finds that Respondent registered the disputed domain name with the intention of attracting Internet users in search of authentic Complainant services - considering specially that an Internet search for the combination of the words "tenaris" and "today" is common for checking daily stock market values. In addition, the registration of the disputed domain name in the present circumstances allows a finding of bad faith registration and use, since the evidence indicate that Respondent uses the disputed domain name to display a parking page with multiple PPC links. As concluded by the Panel in Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181, the use of a domain name to park pay-per-click advertisements suggests a finding of bad faith: "6.12 As the phrase 'pay-per-click' suggests, if Internet users click on the links supplied, this is likely to generate revenue for the operators of the algorithm and/or the entity that operates the pay per click page. Usually, the owner of the domain name will receive a proportion of the revenue, but this is not invariably the case. Further, sometimes registrars will by default use domain names that have been registered with them in a 'pay-per-click' manner, unless and until the domain name registrant instructs them otherwise. [.] 6.17 The pay-per-click use made of the Domain Name also falls within the scope of paragraph 4(b)(iv) of the Policy. Internet users are likely to be drawn to the pay-per-click page by reason of the similarity and resulting confusion between the Domain Name and the RADIO MARIA marks. The Complainant contends that the Respondent has obtained a financial advantage by such activity. That may well be the case, but ultimately it does not matter. Some entity is likely to commercially benefit and provided that that commercial advantage is intended, then paragraph 4(b)(iv) is satisfied (see V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301 as followed in numerous cases including PepsiCo, Inc. v. Ali Khan WIPO Case No. D2004-0292 and Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857). 6.18 Whether it was specifically with pay-per-click use in mind that the Domain Name was registered, or whether this is simply a temporary placing (by the registrant or the Registrar) pending some other use, is unclear. Nevertheless, in the absence of any credible explanation or evidence to the contrary, it seems more likely than not that it was with some similar intent to take unfair advantage of the reputation of the Complainant's marks that the Domain Name was registered. That is sufficient for a finding of bad faith registration. 6.19 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii)." Further, the Respondent appears to be a serial cybersquatter, considering its repeated feature as a respondent in over 70 UDRP cases. See, for instance, Société des Produits Nestlé S.A. v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2020-0745; VKR Holding A/S v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2021-1312. Thus, considering that (i) the disputed domain name is formed by Complainant's well-known trademark TENARIS with the addition of the word "today"; (ii) according to Annex VI of the Complaint, the disputed domain name is used to divert to a website in which PPC links are displayed, enabling Respondent to obtain illegitimate and unauthorized commercial gain from accesses to the links; and (iii) the Respondent has seemingly engaged in a series of bad faith domain name registrations; this Panel concludes that Respondent is trying to obtain profit from Complainant's trademark TENARIS reputation by diverting its clientele into accessing the PPC links, and this leads to the conclusion of bad faith in Complainant´s actions. In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the requirement of the third element of paragraph 4(a) of the Policy is satisfied. page 6 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 Complainant. /Gabriel F. Leonardos/ Gabriel F. Leonardos Sole Panelist Date: December 16, 2022
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