Complainant is Tigre S.A. Tubos e Conexões, Joinville, Santa Catarina, Brazil.
Respondent is Tubo Forte S.A.C., Lima, Peru.
The disputed domain name, <tigreperu.com>, is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2008. On September 2, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On the same date, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 7, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 15, 2008. 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.
Complainant is a well-known Latin American corporation engaged in the field of plastic (PVC) piping, tubes, and fitting market. Complaint, Annexes 8 and 9. Complainant has plants in Brazil, Argentina, Bolivia, Ecuador, Chile, Paraguay, Peru, and the United States of America. Headquartered in Brazil, Complainant has registered trademarks for the mark TIGRE in that country issued in 1966 and 1978. Complainant also has registered trademarks for the mark TIGRE in Argentina, Bolivia, Chile, Colombia, Costa Rica, Ecuador, Jordan, Lebanon, Malaysia, Mozambique, Paraguay, Oman, Saudi Arabia, Ukraine, the United Arabs Emirates, Uruguay, Yemen, the Bolivarian Republic of Venezuela, and the United States of America, which date back as far as 1978. Complaint, Annexes 30 to 50. Complainant exports pipes, tubes, and other goods to more than eighteen countries, including Peru. Complaint, Annexes 10 to 27. Complainant holds registrations for the TIGRE mark in Peru which date from 2005.
Respondent registered the domain name at issue on May 7, 2007. Respondent is not licensed or otherwise authorized to use the TIGRE mark. The domain name at issue is used to resolve to a web site that offers plastic and PVC pipes and tubes for sale, at an address that is the address of Interplast Peruana S.A. This entity has applied for a trademark with the Patent and Trademark office of Peru. Complainant filed an opposition, which opposition and a cease and desist letter relative to the domain name at issue were sent to Interplast Peruana S.A. Complaint, Annexes 66 to 69. Interplast Peruana S.A. is a direct competitor of Complainant and the goods offered on the web site to which the domain name at issue resolves are directly competitive to those offered by Complainant.
Complainant alleges that the domain name at issue is confusingly similar to its TIGRE mark, that Respondent has no rights and legitimate interest in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
Confusing similarity has routinely been found by panelists where a geographic or political identifier has been added in the second level domain to a trademark held by a complainant. Wal-Mart Stores, Inc. v: Walmarket Canada., WIPO Case No. D2000-0150 (<wallmartcanada.com>).
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its TIGRE mark. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent identifies its address in the Whois as that of one of Complainant's direct competitors located in Peru. As Complainant has offices in Peru, exports products to Peru, has had trademarks which date back to the 1970's and registered trademarks in Peru that precede the registration of the domain name at issue, and is one of the most prominent companies in Latin America, it is impossible to believe that Respondent was unaware of Complainant when it registered the domain name. Moreover, Respondent is using the domain name at issue to resolve to a web site at which goods directly competitive to those of Complainant are offered for sale. This is a direct violation of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the domain name at issue has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <tigreperu.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: October 29, 2008