WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tenaris Connections BV v. Whoisguard, Inc. / Eleven Xie
Case No. D2018-1121
1. The Parties
The Complainant is Tenaris Connections BV of Amsterdam, Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Whoisguard, Inc. of Panama, Panama / Eleven Xie of Columbus, Ohio, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <tenariss.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2018. On May 18, 2018, 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 disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 28, 2018.
The Center verified that the Complaint together with the amended 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 May 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on July 6, 2018. 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 the intellectual property-owning subsidiary of the international holding company Tenaris S.A. (together “Tenaris”) based in Luxembourg. Tenaris 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, process and power plants and other industrial applications such as automotive and high performance mechanical and structural applications. Its global business has industrial operations in North and South America, Europe, Asia and Africa and locations in more than 20 countries.
“Tenaris” is a fantasy, coined term created and used for the first time by Tenaris in 2001. The Complainant is the registered proprietor of the trademark TENARIS in more than a hundred territories around the world, including United States trademark number 2679032 TENARIS registered on January 21, 2003.
The Domain Name was registered on March 28, 2018. It resolves to a parking page of the Registrar.
On the same day on which the Domain Name was registered, it was used to send a fraudulent email to a supplier of Tenaris, purporting to be sent by an employee of Tenaris, requesting that a very substantial sum due to be repaid to Tenaris by the supplier be paid to a bank account operated by or on behalf of the sender. The sender had apparently intercepted an email to the [employee]“@tenaris.com” and responded using the email address [employee]“@tenariss.com”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its TENARIS trademarks (the “Marks”), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Marks, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its use of the Marks over several years since it coined the word “tenaris” in 2001. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name is identical to the Marks save only for the addition of the letter “s”. In the view of the Panel, this addition does not detract from the confusing similarity between the Domain Name and the Marks. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but to send fraudulent emails purporting to be from Tenaris with a view to deceiving a supplier of Tenaris into diverting a very substantial payment to the Respondent or those acting in concert with it. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the Domain Name comprises the Complainant’s mark slightly misspelt by the addition of a further “s”, and in light of the use to which the Respondent has put the Domain Name, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Marks in mind when it registered the Domain Name. The Respondent has used the Domain Name to send fraudulent emails, purporting to be emails from an employee of the Complainant group, with a view to obtaining a very substantial sum by deception. Needless to say, the Panel considers that this amounts to paradigm bad faith registration and use for the purposes 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 <tenariss.com> be transferred to the Complainant.
Date: July 10, 2018