WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tesar Industrial Contractors, Inc. v. Boris Santana
Case No. D2014-0960
1. The Parties
Complainant is Tesar Industrial Contractors, Inc. of Cleveland, Ohio, United States of America, represented by Taft, Stettinius & Hollister, LLP, United States of America.
Respondent is Boris Santana of Margate, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tesarindustrial.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 5, 2014. On June 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 7, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 7, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 9, 2014. On July 9, 2014, Respondent sent several emails to the Center and Complainant. Complainant sent an additional submission to the Center on July 10, 2014.
The Center appointed Christopher S. Gibson, as the solo panelists in this matter on July 21, 2014. 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.
The Panel has decided that it will consider the additional emails and submissions of the parties sent on July 9 and 10, 2014, respectively.
4. Factual Background
Complainant originally registered the Domain Name <tesarindustrial.com> on March 29, 1998. The registration for the Domain Name lapsed when Complainant inadvertently failed to make a renewal payment.
The Domain Name was registered by Respondent on May 9, 2014.
5. Parties' Contentions
(i) Identical or confusingly similar
Complainant states that it has common law service mark rights in the names TESAR and TESAR INDUSTRIAL. Under United States trademark law, common law rights in a trademark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. Here, Complainant claims it has common law service mark rights stemming from its 95-year presence in the industrial contracting industry. The Tesar family name has been used in the title of the company since it was founded in 1919. The company was originally named "Tesar Trucking, Inc." and was ultimately changed to "Tesar Industrial Contractors, Inc." on January 1, 1987. Complainant provides rigging services, moving and installation, millwright services, warehousing, lift truck rentals, and specialty fabrications. Complainant asserts that it established a common law service mark in the names "Tesar" and "Tesar Industrial" about 95 years before Respondent registered the identical Domain Name, <tesarindustrial.com>, on May 9, 2014.
Complainant claims that it operated the Domain Name for a period of over 16 years before Respondent's alleged interference. During that period, Complainant advertised its business and services extensively on the website linked to <tesarindustrial.com> and through its company brochure. Though an accidental oversight, on March 27, 2014, Complainant missed a renewal payment and one month later, on April 27, 2014, the website at <tesarindustrial.com> was shut down and Respondent subsequently registered the Domain Name on May 9, 2014.
Complainant states that there is no need for the Panel to undertake an analysis of whether Respondent's Domain Name is confusingly similar to Complainant's mark, because the Domain Name is identical to Complainant's mark, which has been established through over 95 years of continuous operation and 16 years of prior continuous use of the Domain Name by Complainant.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interest with respect to the name or service mark TESAR or TESAR INDUSTRIAL. Respondent's name is Boris Santana, thus bearing no relationship to the name "Tesar." Respondent is in no way associated with the Domain Name. Complainant's research has unveiled nothing resembling Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
(iii) Registered and used in bad faith
Complainant argues that Respondent's registration of the Domain Name bears all of the signs of cybersquatting, an act which would clearly constitute bad faith use. Complainant continuously used the Domain Name for 16 years. After a one time occurrence of administrative oversight, Complainant failed to pay its renewal fee in order to retain ownership of the Domain Name. As such, it was placed for sale on April 27, 2014 and purchased almost immediately on May 9, 2014. Ever since, the Domain Name has led to a page with no content except for garbled code and a link connecting to similarly garbled webpage.
Complainant states that multiple attempts have been made to resolve the issue with Respondent. On May 23, 2014, an employee of Complainant sent a letter via mail, certified mail, and email to Respondent. The letter sent to Respondent was returned as undeliverable. To date, Respondent has not responded to any of the communications sent by Complainant.
"Tesar" is the last name of the founders of Tesar Industrial Contractors, Inc. The name is therefore unique to Complainant and has been in use by the company and its affiliates since 1919. Complainant argues that Respondent can point to no set of facts showing that he has legitimate reasons to use the name "Tesar" or "Tesar Industrial" in the Domain Name.
The Respondent did not reply to the Complainant's contentions. Respondent did submit an email to the Center on July 9, 2014, as follows:
"Regarding to: TesarIndustrial.com
I'm Boris Santana, and I'm the Legal owner of the Domain: TesarIndustrial.com.
I bought this Domain at Goddady.com Domain Auction on May 3, 2014 so this Domain belongs to me and it is in My Godaddy account.
Bellow I added an image of the Purchase Receipt.
If anybody is interested on Buying this Domain from me, I'm willing to sell it. Contact me at: [redacted]@hotmail.com with your offer.
C. Complainant's Additional Submission
Complainant submitted an additional submission on July 10, 2014. Complainant states that after several months of unreturned emails, phone calls, rejected attempts at certified mail, and a failure to respond to the Complaint in a timely fashion, Respondent finally responded by email as quoted above. Complainant argues that Respondent's email itself represents evidence of bad faith in registering the Domain Name. Paragraph 4(b)(i) of the Policy provides that evidence of bad faith is present where circumstances indicate that Respondent registered or acquired the domain "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark." Complainant urges that UDRP cases have been unequivocal in finding bad faith stemming from such conduct; that it is now established that the act of registering a trademark as a domain name and then offering to sell the name to the rightful trademark owner constitutes commercial use; and that the act of registering and then offering to sell a domain name supports a determination of bad faith.
Complainant has also indicated that the Domain Name has undergone a change since this case was filed on June 5, 2014. When the case was filed, the website linked to the Domain Name contained only garbled code. Now, the site is advertising various weight loss and dietary supplements.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it has unregistered common law rights for its TESAR and TESAR INDUSTRIAL marks, which have been used in commerce for over 95 years. It is well settled that the term "trademark or service mark" as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516. In this case, the mark TESAR is a distinctive identifier for Complainant's business, and the fact that the secondary meaning may only exist in a certain geographical area does not limit Complainant's rights in its common law trademark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case. Complainant did not license or otherwise authorize Respondent to use its TESAR or TESAR INDUSTRIAL marks in the Domain Name. Further, Respondent is not commonly known by the Domain Name, and Complainant's research has not revealed Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Instead, at the time of filing, the website linked to the domain Name contained unintelligible content. There is nothing in the record to show that Respondent has any rights or legitimate interests in the Domain Name.
In response to Complainant's prima facie case, Respondent has asserted only that he bought the Domain Name at auction "so this Domain belongs to me" and that "[i]f anybody is interested on [sic] Buying this Domain from me, I'm willing to sell it."
Under these circumstances, the Panel finds that Respondent has failed to show that he has any rights or legitimate interests in respect of the Domain Names. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith.
Here, Respondent registered the Domain Name, <tesarindustrial.com>, which is distinctive and virtually identical to Complainant's long-used TESAR INDUSTRIAL trademark. The Domain Name is very specific to Complainant's name and mark. Respondent has not provided any plausible reason for why it chose this Domain Name, and the Panel cannot think of any possible reason except that Respondent was targeting Complainant and its TESAR INDUSTRIAL mark. The TESAR mark has been used by Complainant for 95 years and the Domain Name had been used by Complainant for 16 years prior to the inadvertent failure by Complainant to make a payment to maintain its registration. Respondent, without any connection to the TESAR or TESAR INDUSTRIAL marks or names, appears to have opportunistically taken advantage of this lapse in registration, registered the Domain Name, and has not put it to any legitimate use. Moreover, Respondent failed to respond to any of Complainant's attempts to contact Respondent, and has failed to submit a Response in this case. The only communication from Respondent in the record is an email sent to the Center during the pendency of this administrative procedure offering to sell the Domain Name.
In view of the particular circumstances in this case, the Panel finds that it is highly probable that Respondent was aware of Complainant and its TESAR INDUSTRIAL mark when it registered the Domain Name. Accordingly, the Panel is of the view that Respondent knew or should have known of Complainant and its TESAR INDUSTRIAL mark when it registered the Domain Name. Paragraph 2 of the UDRP is particularly apt as it provides guidance to domain name registrants: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Moreover, from the circumstances surrounding the registration of the Domain Name, the Panel determines, on the balance of the evidence, that Respondent registered and is using the Domain Name for the bad faith purpose of frustrating Complainant, by preventing Complainant from using its TESAR INDSUTRIAL mark as a domain name, as Complainant had previously done so for the last 16 years. The fact that Respondent has not been using the Domain Name for an active website does not preclude a determination of bad faith; on the contrary, Respondent's passive use further confirms that Respondent's purpose is to deprive Complainant of the use of the Domain Name, and to seek payment from Complainant for it, rather than to serve any legitimate, independent interest of the Respondent. See The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516.
The Panel therefore concludes that Respondent's registration of the Domain Name was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.
Accordingly, the Panel finds that Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <tesarindustrial.com>, be transferred to Complainant.
Christopher S. Gibson
Date: August 7, 2014