WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ternium México, S.A. de C.V., Hylsa S.A. de. C.V. v. Alejandro Lascurain
Case No. D2019-1479
1. The Parties
The Complainants are Ternium México, S.A. de C.V. and Hylsa S.A. de. C.V. (hereinafter “the Complainant”), Mexico, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Alejandro Lascurain, Mexico.
2. The Domain Name and Registrar
The disputed domain name <hylsamexico.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2019 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 July 5, 2019.
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 July 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2019.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 6, 2019. 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 Mexican subsidiary of Ternium, a leading flat steel producer with manufacturing facilities in the United States of America, Mexico, Brazil, Argentina, Colombia and Guatemala, 21,300 employees, and a crude steel production capacity of 12.4 million tons.
In Mexico, the Complainant has 8 industrial centers, 11 distribution centers, and mining operations in Colima, Jalisco, and Michoacán.
The Complainant holds numerous Mexican trademark registrations for HYLSA, the earliest of which (Reg. No. 140323) was registered on January 1, 1968, in connection with goods comprised in international class 6.
On November 13, 2018, the Respondent registered the disputed domain name, which resolved, prior to the filing of the Complaint, to a website passing off as the Complainant’s home page.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
i) “Hylsa” is a coined term that comes from the first letters of “Hojalata y Lámina S.A.”. As such, the mark HYLSA can only be associated with the Complainant;
ii) The disputed domain incorporates the Complainant’s HYLSA mark in its entirety plus the term “mexico” which is the country where the Complainant operates and carry out its activities;
iii) According to Bayer AG v. Maria Guadalupe Arellano Sanchez, WIPO Case No. D2014-1991, Osram AG v. Execom, WIPO Case No. D2012-0948, and Société des Produits Nestlé S.A. v. Pedro Flores, WIPO Case No. D2014-2220, the word “mexico” does not differentiate the disputed domain name from the Complainant’s HYLSA mark;
iv) The Complainant does not have any relationship with the Respondent;
v) Given that “hylsa” is a fantasy term, it is impossible that the Respondent registered the disputed domain name without targeting the Complainant;
vi) The Respondent is using the disputed domain name to sell products falsely claiming to originate from the Complainant, which excludes the possibility of showing rights or legitimate interests under the Policy;
vii) The Respondent registered the disputed domain name to impersonate the Complainant through the use of its trademark and trade name with the purpose of making a profit out of it;
viii) The website at the disputed domain name reproduced the HYLSA logo, in violation of the Complainant’s trademark rights;
ix) The website at the disputed domain name references an address corresponding to Las Encinas, one of the Complainant’s mining centers in Mexico;
x) The Respondent pulled out pictures of the Complainant’s products from the Complainant’s website at “mx.ternium.com”;
xi) The Respondent’s website includes the email address […]@hylsamexico.com which also appears on the web address “hylsadivision.com” that is currently the subject of a parallel UDRP proceeding brought by the Complainant.
The Respondent did not reply to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The first element has a low threshold for it merely serves as a standing requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name).
The Complainant is the holder of Mexican trademark registration No. 140323 for HYLSA (word mark) with a grant date of January 1, 1968, which predates registration of the disputed domain name by more than 50 years.
The Complainant’s mark is easily recognized within the disputed domain name despite the addition of the geographical term “mexico”. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The “.com” generic Top-Level Domain is a standard registration suffix and as such is to be disregarded from the instant comparison.
Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark on which the Complaint is based.
The Complainant has passed the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant avers to not have authorized the incorporation of its HYLSA mark in the disputed domain name. The Complainant also submits that the Respondent is not commonly known by the disputed domain name.
The Complainant has put forward a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name, while the Respondent did not allege, much less prove, that it has rights or legitimate interests under the Policy.
The Panel regards the above factual submissions to be credible in light of the evidence on file, and particularly considering that the term “hylsa” was coined by the Complainant to identify the Complainant only. At any rate, those submissions remain uncontested by the Respondent.
It bears noting that the Respondent’s use of the disputed domain name to host a website masquerading as the Complainant’s official portal negates, as a matter of course, rights or legitimate interests under the Policy. See section 2.13.1 of the WIPO Overview 3.0 (use of a domain name for illegal activity such as impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent).
In sum, there is no doubt in the Panel’s mind that the Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of the Policy.
The Complainant has fulfilled the second limb of Policy paragraph 4(a).
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or acquired the domain name 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 or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Panel deems plausible the Complainant’s explanation that it coined the term “hylsa” by joining the first letters of “Hojalata y Lámina S.A.”, the Complainant’s primitive predecessor. In addition to its inherent distinctiveness, the Complainant’s mark has been in use in the Mexican market for over 50 years.
Against this backdrop, the registration of the disputed domain name denotes opportunistic bad faith because the Respondent took unfair advantage of the goodwill and reputation attaching to the HYLSA mark. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark).
The Complainant has also produced screen captures of the Respondent’s sham portal presenting itself as the Complainant’s hosting portal by using the Complainant’s trademarked logo and copyrighted pictures without the Complainant’s consent, and also by using the email account [...]@hylsamexico.com to receive queries from potential buyers of the Complainant’s products. This deceptive use of the disputed domain name conclusively shows bad faith use within the meaning of the Policy since the Respondent’s website seeks to mislead Internet users into believing they have accessed the Complainant’s portal, presumably to defraud them, and obtain their personal information for illicit purposes (phishing).
As noted by the Complainant, the email account […]@hylsamexico.com is also found within the website at “hylsadivision.com” which is the subject of WIPO Case No. D2019-1315, Ternium México S.A. De C.V. and Hylsa S.A. De C.V. v. Jose Luis Fernandez Mendoza. The Panel considers that WIPO Case No. D2019-1315 reveals the very same fact pattern as the instant case. The link between these two cases is corroborated by the fact that, when typing the disputed domain name on Google, the address www.hylsadivision.com, instead of www.hylsamexico.com, is listed on top of the search query results.
For the reasons stated above, the Panel holds that the disputed domain name was registered and has been used in bad faith under the Policy.
The Complainant has discharged its burden in relation to paragraph 4(a)(iii) 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 <hylsamexico.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: August 25, 2019