WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ternium Internationaal B.V. v. Domains by Proxy, LLC/Anette Guadalupe Cruz Trapala
Case No. D2019-1927
1. The Parties
Complainant is Ternium Internationaal B.V., Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
Respondent is Domains by Proxy, LLC, United States of America (“United States”) / Anette Guadalupe Cruz Trapala, Mexico.
2. The Domain Name and Registrar
The disputed domain name <terniumsacv.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 August 8, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 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 Complainant on August 12, 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 August 16, 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 Respondent of the Complaint, and the proceedings commenced on August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 9, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 19, 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
Complainant is a multinational company based in Amsterdam, Netherlands, and is affiliated with a group of companies under the umbrella of Ternium S.A., Luxembourg. Complainant was established in 2005, and is a global leader in steel production and in mining, including in Mexico, where Respondent lists an address of record. Complainant has a market capitalization of USD 7.8 billion and over 20,000 employees. Complainant owns several trademark registrations for TERNIUM in various countries, including, among others, United States Registration No. 3334585 (registered 2007); Mexican Registration No. 917035 (registered 2006); and Argentinian Registration No. 3553121 (registered 2017).
Complainant, via its affiliated companies, owns various registrations for domain names, including <ternium.com> (registered 2006), from which it hosts a website, which provides consumers information about the company and its products. Complainant and its affiliates also own domain name registrations with the Top-Level Domain “.mx”, and including corporate abbreviations. These include <ternium.mx>, <ternium.com.mx>, and <terniumimsa.com>.
The disputed domain name <terniumsacv.com> appears to have been registered by Respondent on January 30, 2019. Respondent has no affiliation with Complainant. Respondent has set up a website at the URL associated with the disputed domain name, which includes references to the TERNIUM name and mark, and which references business opportunities in franchising. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name <terniumsacv.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it has trademark registrations for TERNIUM, including in Mexico, where Respondent lists an address of record, as well as domain name registrations for variations on this term. Complainant contends that the company designation, S.A. de C.V, indicates a type of corporation, namely Sociedad Anonima de Capital Variable, and that indeed Complainant and its affiliates operate via a subsidiary known as Ternium Mexico S.A. de C.V. Thus, consumers would expect a domain name with this abbreviation, and including Complainant’s registered mark TERNIUM, to refer to Complainant.
Complainant contends that Respondent does not have rights or legitimate interest in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in registering a domain name with Complainant’s well-known mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <terniumsacv.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly and fully incorporates Complainant’s well-known, registered trademark, TERNIUM, and merely adds the terms “sa” and “cv”, which are descriptive of a business entity such as that used by Complainant and its affiliates in Mexico, where Respondent lists an address of record.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>). See also section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not respond to the allegations in the Complaint however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has set up a website associated with the disputed domain name, apparently to divert Internet users for the purpose for Respondent’s own financial gain.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in the disputed domain names in accordance with paragraph (4)(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a website at the URL associated with the disputed domain name, which includes use of the term “Ternium”, which is Complainant’s registered mark, and from which Respondent offers business and franchising services. Moreover, the Panel finds that the terms “sa” and “cv” in the disputed domain name would be perceived by Internet users as descriptive of a website where they could find information about sales of Complainant and its products. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, considering the degree of renown of Complainant’s TERNIUM mark, including in Mexico, where Complainant has an affiliate, and where Respondent lists an address of record, it may be presumed that Respondent was aware of Complainant’s rights in Complainant’s marks when registering the disputed domain name. See Ternium Mexico S.A. de C.V., Ternium Internationaal B.V. v. Russia Italia, WIPO Case No. D2019-0010 (transferring <terniumhyml.com.mx>). Accordingly, this too, evidences bad faith by Respondent.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name <terniumsacv.com> be transferred to Complainant.
Dated: October 3, 2019