The Complainant is Tenaris Connections BV of Amsterdam, Netherlands, represented by Mitrani Caballero Ojam & Ruiz Moreno, Argentina.
The Respondent is Cristian Liviu Panea, BisonMedia of Bihor, Romania. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2017. On September 1, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On September 4, 2017, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 6, 2017.
The Respondent sent a communication to the Center on September 7, 2017. The Complainant sent a communication to the Center on September 12, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2017. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was October 26, 2017. The Respondent submitted a communication to the Center on September 14, 2017. On October 30, 2017 the Center notified the Respondent that such communication was not compliant with the ADR Rules. The due date to cure the Response deficiencies was November 6, 2017. The Respondent did not submit a compliant Response. Accordingly, the Center notified the Respondent’s default on November 7, 2017.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 16, 2017. 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 ADR Rules, Paragraph B(5). 4. Factual Background
The Complainant is part of the Tenaris Group, which 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 and specialized industrial, mechanical and structural applications. The Tenaris Group has operations in more than twenty countries in North and South America, Europe, Asia and Africa, and employs more than 19,000 people.
In the European Union (“EU”), the Complainant has, inter alia, the following trademark registrations for TENARIS (the “TENARIS trademark”):
- the EU trademark TENARIS with registration No. 002163335, registered on June 14, 2002 for goods and services in International Classes 16 and 39;
- the EU trademark TENARIS with registration No. 9708629, registered on July 21, 2011 for goods and services in International Classes 6, 16 and 39; and
- the Romanian trademark TENARIS with registration No. R046187, registered on February 11, 2001 for goods and services in International Class 6.
The Complainant is also the registrant of the domain name , registered on October 6, 2000.
The disputed domain name was registered on July 12, 2017. It displays an offer for sale of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant submits that the mark TENARIS is a coined term that was created and used by it for the first time in 2001.
According to the Complainant, the disputed domain name is identical to the Complainant’s TENARIS trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no relationship or association with the Respondent, and has not authorized the Respondent to use the TENARIS trademark and the Complainant’s trade name. The Complainant received from the Respondent an offer for sale of the disputed domain name on the day of its registration. The Respondent is not commonly known by the disputed domain name and is not using it in connection with the offering of goods or services, or making a legitimate noncommercial or fair use of it without the intent for a commercial gain.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. Being aware of the Complainant’s rights in the TENARIS trademark and trade name, the Respondent registered the disputed domain name without authorization from the Complainant. On July 12, 2017 the day when the disputed domain name was registered, the Respondent offered it for sale to the Complainant. According to the Complainant, this shows that the disputed domain name was registered and acquired primarily for the purpose of selling, renting, or otherwise transferring its registration to the Complainant with the intention of making a profit on its sale.
Lastly, the Complainant submits that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent. B. Respondent
In the present proceeding, the Respondent was given a fair opportunity to present its case. However, it did not submit a formally compliant Response to the Complaint, although required to do so under Paragraph B(3) of the ADR Rules.
The only statements on the substance of the dispute made by the Respondent in this proceeding were the following: “I would like to inform you that I bought this domain legally from Goddady and I can proof it with the receipt and I can provide any other documentation”, “[s]ince Godaddy made available I don’t see any illegal action to buy a domain even if it’s an investment or for a private projects”, and “[w]e are not ‘intimidating’ anyone, we don’t have any other disputes in our history of activity - we opened the 1st dispute by offering tenaris the chance to have their .eu domain and not deciding to build anything on this domain). I haven’t received any email or reply from them for a long while so we decided to list the domain for sale. Everyone is free to trade anything they want a car, a house etc. Using the word “intimidating” (by ) is too strong. The ‘childish’ version of mcolex decided to pay more for a dispute rather than making us an offer under 900$ which we would accept! If the court will decide that should be transfered to mcolex its fine for us but if the answer will be ‘no’ this will be a great opportunity for all the small industries of brands to take a place and ‘play’ the game with the big companies.”
In a communication to the Complainant dated September 7, 2017, the Respondent additionally stated: “This domain was bought by me the CEO of BisonMedia on: Date: Jul 12, 2017 2:29 PM.
P.S Since we bought it its our property. Can you provide any documentation that proofs that you have the legal international trademark of .eu domain? The domain is for sell and if you are interested to buy it from us make us an offer and the resolution will be very short... if not we will continue the dispute and fight for ‘’ !” 6. Discussion and Findings
According to Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR preceding that:
(i) the domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) the domain name has been registered or is being used in bad faith.
In this ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances under ADR Rules, Paragraph B(11)(d)(1)(i), (ii) and (iii) above. The Panel notes that the ADR Rules list the issues under Paragraph B(11)(d)(1)(ii) and (iii) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Panel finds that the Complainant is the owner of the TENARIS trademark, registered in, inter alia, Romania and for the European Union, details of which are given above, and for which the Complainant has provided evidence which was not disputed by the Respondent. These trademark registrations give rise to rights of the Complainant in the name TENARIS within the meaning of Paragraph 10(1) of the Commission Regulation (EC) 874/2004, i.e., rights established by the Romanian law (since Romania is a Member State of the European Union) and European law.
Furthermore, it is widely accepted that elements such as the country-code Top-Level Domain (“ccTLD”) suffix “.eu” are not relevant for the purposes of the test for identity or confusing similarity under art. 21(1) of Commission Regulation (EC) No 874/2004. Therefore, the dominant element of the disputed domain name, which has to be analyzed for the purpose of this test is the element “tenaris”. This element is identical to the dominating word element of the TENARIS trademark.
In view of the above, the Panel finds that the disputed domain name is identical to the TENARIS trademark, in respect of which a right of the Complainant is established by the Romanian and Community law. Therefore, the condition set forth under Paragraph B(11)(d)(1)(i) of the ADR Rules is fulfilled. B. Rights or Legitimate Interests
Under the ADR Rules, the burden of proof for the lack of rights and legitimate interests of Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent (including any potential evidence of rights and legitimate interests) is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.
The Complainant contends that it has no relationship or association with the Respondent, and has not authorized the Respondent to use the TENARIS trademark and that the Respondent is not commonly known by the disputed domain name and is not using it in connection with the offering of goods or services, or making a legitimate noncommercial or fair use of it without the intent for a commercial gain. Rather, the Complainant received from the Respondent an offer for sale of the disputed domain name on the day of its registration. Thus, the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name.
If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has failed to contend that any of the circumstances described in Paragraph B(11)(e) of the ADR Rules is present in its favor. The only arguments advanced by the Respondent are that the disputed domain name was freely available for registration, that the Respondent has registered and paid for its registration to the Registrar and that the Respondent does not see anything illegal in doing so, that it is legal to offer domain names for sale and to sell them, that it was unreasonable for the Complainant to pay more for carrying out of the proceeding than to pay to the Respondent to obtain the disputed domain name, and that if the Respondent was allowed to retain the disputed domain name that would allow it “to play the game with the big companies”.
None of these arguments establishes any rights or legitimate interests of the Respondent in the disputed domain name. If a domain name is identical to a third party’s trademark, the fact that it is available for registration does not mean that a party is allowed to register and sell it without authorization from the trademark holder. The same applies to the use of such domain name – if the registrant is allowed to “play the game with the big companies” by using it, that would effectively mean that the registrant is allowed to confuse consumers and to unfairly compete with the trademark holder by benefitting from its goodwill.
In view of the above and taking into account that the Respondent admits to have offered to the Complainant the disputed domain name for sale for an amount that significantly exceeds the normal expenses for its registration on the very day when it was registered, the Panel is prepared to accept that the registration of the disputed domain name was deliberately made by the Respondent in attempt to extract a profit from selling it to the Complainant. In the Panel’s view, this conduct of the Respondent does not appear to have been carried out in good faith and does not give rise to a legitimate interest of the Respondent in the disputed domain name under Paragraph B(11)(e) of the ADR Rules. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the condition under Paragraph B(11)(d)(1)(ii) of the ADR Rules is satisfied. C. Registered or Used in Bad Faith
Under Paragraph B(11)(f)(1) of the ADR Rules, the existence of circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognized or established by national and/or Community law, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith.
As discussed above, the Complainant has established its rights in the TENARIS trademark, registered, inter alia, in Romania and the European Union, and has thus proven that it has rights under the Romanian and European law. The Complainant has also submitted a copy of the letter it received from the Respondent on September 7, 2017. This letter contains an offer by the Respondent to sell the disputed domain name to the Complainant.
The Respondent was given a fair opportunity to respond to the Complaint and to present its case. The Respondent has not challenged the evidence submitted by the Complainant and has not provided evidence or arguments to rebut any of the contentions of the Complainant.
The disputed domain name is identical to the Complainant’s TENARIS trademark, so consumers may easily regard it as an official domain name of the Complainant. For this reason, it could well be expected that the Complainant would be interested in acquiring the disputed domain name for its own business if it was registered by another person. The Respondent offered the disputed domain name for sale to the Complainant on the day when it was registered.
The above circumstances satisfy the Panel that the Respondent chose the disputed domain name with the Complainant’s name and trademarks in mind and with speculative purposes – in view of the attractiveness of the disputed domain name for the Complainant and with the expectation to extract profit out of this sale to the Complainant.
Taking all the above into account, and in the lack of any rebuttal by the Respondent or evidence to the contrary, the Panel accepts that the registration of the disputed domain name was carried out by the Respondent primarily with the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant, which has rights in the TENARIS trademark that are recognized or established by, inter alia, the Romanian and European law, which supports a finding of bad faith registration under Paragraph B(11)(d)(1)(iii) of the ADR Rules.
Therefore, the Panel finds that the disputed domain name was registered in bad faith, and that the condition under Paragraph B(11)(d)(1)(iii) of the ADR Rules is satisfied.
For the above reasons, the Panel finds that Complainant has established the prerequisites under Paragraph B(11)(d)(1) of the ADR Rules for the transfer of the disputed domain name. 7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the Complainant1 .
Assen Alexiev
Sole Panelist
Date: December 13, 2017
1 The remedy sought by the Complainant is the transfer of the disputed domain name to the Complainant. As the Complainant has its seat in the Netherlands - within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No.733/2002. Therefore, the Complainant is entitled to request the transfer of the disputed domain name.
Full & Egal Universal Law Academy