WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nelson Stud Welding, Inc. v. Ernesto Claudio Durazo Ortiz, Rooster Steel Manufacturing SA de CV
Case No. D2014-1099
1. The Parties
The Complainant is Nelson Stud Welding, Inc. of Elyria, Ohio, United States of America (the "USA"), represented by Clark Hill PLC, USA.
The Respondent is Ernesto Claudio Durazo Ortiz, Rooster Steel Manufacturing SA de CV of Mexico D.F, Mexico.
2. The Domain Name and Registrar
The disputed domain name <pernosnelson.com> is registered with Interplanet, S.A. de C.V. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2014. On June 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, July 7 and 15, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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" 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 the Respondent of the Complaint, and the proceedings commenced on August 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2014.
The Center appointed Alejandro Garcia as the sole panelist in this matter on September 1, 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.
As a preliminary issue, according to information that the Center received from the Registrar, the language of the registration agreement for the disputed domain name is Spanish. Accordingly, the Center requested that the Complainant: 1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Spanish; or 3) submit a request for English to be the language of the administrative proceedings.
The Complainant pursued the third option and, on July 23, 2014, it submitted a request for English to be the language of the administrative proceedings. In summary, the Complainant contends that these proceedings should be conducted in English because: 1) the registration agreement obtained by the Complainant is in English, which would evidence that both the Registrar and the Respondent had an understanding of the English language and therefore they have evidenced an ability to communicate in English; and 2) if the proceedings are conducted in Spanish, the Complainant will have to incur the added expense of translating documents while delaying the proceedings as necessary to complete the translations.
The Panel notes that the Respondent did not participate in these proceedings and thus did not comment on the Complainant's submissions in this respect. On the basis of the arguments put forward by the Complainant and the uncontroverted evidence produced, the Panel considers appropriate for these proceedings to be conducted in English.
4. Factual background
A. The Complainant
The Complainant, an entity established in 1944, is a leading international manufacturer and distributor of construction materials, including fastening materials such as studs and bolts, concrete anchor and shear connectors, threaded studs and refractory anchors. The Complainant's construction materials have been used in significant projects, such as the Petronas Towers in Kuala Lumpur, Malaysia, the Guggenheim Art Museum in Bilbao, Spain, and the aircraft carrier USS Ronald Reagan.
B. The Complainant's Trademarks
In respect of construction materials, the Complainant holds a number of registrations for the trademark NELSON around the world, including three U.S. federal trademark registrations (Registration Nos. 726,203, 726,143 and 3,391,847) and a long-standing trademark registration for NELSON in Mexico (Registration No. 296498), where the Respondent is located. These trademark registrations predate the registration of the disputed domain name.
C. The Complainant's Domain Name
The Complainant has registered the domain name <nelsonstud.com>, which also predates the registration of the disputed domain name.
D. The Respondent
The Respondent did not participate in these proceedings. The disputed domain name was registered on January 24, 2011.
5. Parties' contentions
A. The Complainant
Identical or Confusingly Similar
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's trademark NELSON.
In particular, the Complainant submits that the disputed domain name <pernosnelson.com> consists, in first part, of the Complainant's trademark NELSON. The second part of the disputed domain name, this is, "pernos" means either "studs" or "bolts" in English. The Complainant adds that the terms "pernos" translated as "studs"or "bolts" in English are descriptive language describing the Complainant's goods offered under the trademark NELSON.
Accordingly, the Complainant avers that the disputed domain name consists of the Complainant's registered trademark and the generic name for a product which the public knows to be manufactured by the Complainant under the Complainant's registered trademark. The Complainant adds that the Respondent has attempted to capitalize on this association by registering a domain name consisting of the NELSON trademark coupled with a term referring to the Complainant's products (in English, "studs" and in Spanish "pemos").
The Complainant makes reference to a number of previous UDRP cases under which the combination of a registered trademark with descriptive terms describing the goods with which the trademark is used has been found to be confusingly similar to the registered trademark (e.g. Nikon, Inc. and Nikon Corporation v. Technilab, Inc. WIPO Case No. D2000-1774 (making such a determination, with among other domain names, the respondent's improper use of "www.nikoncamera.com"), Roche Products Limited v. Anatoliy Koshkin / Domain ID Shield Service Co., Limited, WIPO Case No. D2012-0289, citing America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004).
Finally, under this head, the Complainant contends that the NELSON trademark is well-known throughout the construction industry.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known by the disputed domain name and is using the trade name of the Complainant to promote and sell competitive goods.
The Complainant submits that the Respondent is not related to, affiliated with, or licensed by the Complainant and has never received permission to use Complainant's trademark NELSON in connection with the sale of any goods, or for any other purpose.
Furthermore, the Complainant claims that the Respondent has apparently used a website linked to the disputed domain name to sell both, the Complainant's fasteners and studs, as well as "fake" and/or non-Nelson fasteners and studs, which compete directly against the Complainant.
The Complainant contends that the Respondent's use of the NELSON trademark is intended to divert Spanish-speaking customers to the Respondent's website under the mistaken belief that the Respondent is affiliated with the Complainant, and thereafter "trick" visitors to the website into purchasing knock-off products.
Registered and Used in Bad Faith
Under this head, the Complainant argues that by registering the disputed domain name, the Respondent has intentionally attempted to cause confusion between the Complainant's well-known trademark and the Respondent's alleged product offerings.
The Complainant adds that the disputed domain name should be considered to be registered and used in bad faith because the Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website.
The Complainant also submits that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant. This purpose, in the words of the Complainant, would involve the sale of "fake" products.
The Complainant seeks the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
A. Identical or Confusingly Similar
The Complainant has established to the Panel's satisfaction that it has rights in respect of the trademark NELSON.
The dominant part of the disputed domain name is the term "Nelson". This term is identical to the NELSON trademark registered by the Complainant. The addition of generic or descriptive terms to the disputed domain name (in this case, "pernos" in Spanish, stud/bolt in English) is insufficient to prevent the existence of confusion with the Complainant's trademark. In particular, as contended by the Complainant, the use of the term "pernos", a generic term in Spanish, is likely to create confusion among Spanish-speaking Internet users who might erroneously conclude that the disputed domain name is connected to, or affiliated with, the business of the Complainant.
In this respect, paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") indicates:
"The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]"
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark NELSON within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
"(i) Before any notice […] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [The respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain[,] to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In this case, the Complainant's (uncontroverted) evidence annexed to the Complaint shows that the disputed domain name has resolved to a website selling what appeared to be, according to the Complainant, "fake" goods. The website furthermore featured the Complainant's banner trademark and logo, apparently intended to lead Internet users to believe that the Respondent and its website are affiliated with or sponsored or endorsed by the Complainant. The Panel concludes that the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant's contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
On the basis of the evidence before it and in particular the fact that the disputed domain name resolved to a website that appeared to be selling "fake" or unauthorized goods according to the Complainant's (uncontroverted) submission, the Panel finds that the Respondent has engaged in bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. This finding, in turn, leads to the conclusion that the disputed domain name has been registered and is being used in bad faith.
Thus, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <pernosnelson.com> be transferred to the Complainant.
Date: September 15, 2014