WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yamana Gold Inc. v. Don Puxxo
Case No. D2017-1470
1. The Parties
The Complainant is Yamana Gold Inc. of Toronto, Canada, represented by Norton Rose Fulbright LLP, Canada.
The Respondent is Don Puxxo of Washington, New Zealand.
2. The Domain Name and Registrar
The disputed domain name, <yamanamines.com> (the “Domain Name”), is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2017. On July 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 31, 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 Rules, paragraph 7.
4. Factual Background
The Complainant is a mining company based in Canada and operating throughout parts of North and South America. It operates a website at “www.yamana.com”. The Complainant is the registered proprietor of Swiss and European Union trade mark registrations of the mark YAMANAGOLD, the earlier of the two being Swiss Registration No. 700902 registered April 6, 2017 (application filed November 17, 2016) for mining and related services in classes 37 and 42.
The Domain Name was registered on July 19, 2016 and is connected to a website which appears to replicate the Complainant’s website. The Complainant has produced in evidence email traffic between the Respondent and third parties in June/July 2017 in which the Respondent appears to be impersonating the Complainant and offering non-existent jobs. Moreover, the Complainant has also produced evidence to suggest that the New Zealand address given for the Respondent on the Registrar’s WhoIs database is false.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the name, “Yamana”, the word “mines” and the “.com” generic Top-Level Domain (“gTLD”) identifier. It being permissible for UDRP panels to ignore the gTLD identifier for this assessment where, as here, it serves no purpose other than the technical one, the comparison to be undertaken is between “Yamanamines” and the Complainant’s trade mark YAMANAGOLD.
“Yamana” being the dominant element of both the Domain Name and the Complainant’s trade mark and the additional wording in both cases referring to the Complainant’s field of activity, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
As can be seen from Section 4 above, the Complainant has produced evidence in support of its contentions that the Respondent registered the Domain Name with knowledge of the Complainant and with the intention of impersonating the Complainant for the purpose of obtaining personal information such as passport details from people responding to the Respondent’s job offers made in the name of the Complainant.
On the face of it the Complainant has made out a strong prima facie case calling for an answer from the Respondent and the Respondent has not answered the Complainant’s allegations. It may, of course, be that the Respondent has not received notification of this proceeding, having supplied what appears to be a false address to the Registrar, but the Panel is satisfied that the Center has done everything required of it to see that the Respondent was notified. If notification has not got through to the Respondent, the Respondent has only himself to blame.
However, a potential issue for the Complainant is that its trade mark registrations only came through in 2017 and the applications all post-date the date of registration of the Domain Name. The Complaint contains no information as to why the Respondent should have been aware of the Complainant as at the date of registration of the Domain Name on July 19, 2016. Ordinarily one would have expected a complainant in this situation to have come forward with information to demonstrate a pre-existing reputation and goodwill, but the Complaint contains no such information.
On the evidence in the Complaint it is theoretically possible that the Domain Name was registered “innocently” and that the Respondent’s bad faith intent all commenced at a later date after he became aware of the Complainant’s trade mark registrations. However, in the particular circumstances of this case, that seems a most unlikely scenario. The Panel has visited the Complainant’s website and learns from the various financial reports published there that it has been trading under the “Yamana” name since at least as early as 2005. It seems probable therefore that as at the date of registration of the Domain Name the Complainant will have been well known to the Respondent. Moreover, if the Respondent’s intentions at date of registration of the Domain Name were innocent, why did he use a false address?
The Panel concludes on the balance of probabilities that the Complainant’s contentions are well-founded and that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
On the same basis the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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, <yamanamines.com>, be transferred to the Complainant.
Date: September 5, 2017