WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tenaris Connections BV v. Whois Privacy Protection Foundation / Hunter white
Case No. D2019-2570
1. The Parties
The Complainant is Tenaris Connections BV, Netherlands, represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Hunter White, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <tenaris-usa.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2019. On October 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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 October 23, 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 October 24, 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 October 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019.
The Center appointed Daniel Peña as the sole panelist in this matter on November 26, 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 the intellectual property holding company for the Tenaris group of companies (the Tenaris Group) which are suppliers of pipe products to the oil and gas, power, construction, and manufacturing industries. The Tenaris Group operates in more than 20 countries throughout Americas, Europe, Africa, Asia and Oceania.
The Complainant is a leading global manufacturer and supplier of steel pipe products and related services.
The Complainant adopted the name and trade mark TENARIS in 2001. Its launch was accompanied by worldwide publicity and it has been extensively promoted worldwide through media and online since that date.
The Complainant owns trademark registrations for TENARIS in over 100 countries and regions including registrations in the United States, among which:
- United States Trademark Registration No. 2,679,032 for TENARIS, registered on January 21, 2003;
- United States Trademark Registration No. 4,124,173 for TENARIS, registered on April 10, 2012.
The Complainant operates on the Internet at several websites, among which “www.tenaris.com”, “www.tenaris.net”, “www.tenaris.org”, “www.tenaris.info”, “www.tenaris.biz”, and “www.tenaris.us”.
The disputed domain name <tenaris-usa.com> was registered on August 31, 2019, according to the WhoIs records, and when the Complaint was filed the website at the disputed domain name was not active. The disputed domain name has used to send deceptive emails for fraudulent purposes.
5. Parties’ Contentions
The Complainant contends that disputed domain name incorporates the trademark TENARIS in its entirety, no matter the addition of a middle dash and the acronym “USA”, in relation to which the Complainant has the full right, title and interest.
The Complainant does not have any relation or association with the Respondent, and neither its former nor its subsidiary or affiliated companies have ever authorized the Respondent nor otherwise given permission to use in any way, any of its trademarks, or to apply for or use any domain name incorporating any term totally identical or confusingly similar with the trademark TENARIS.
The Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Indeed, the Respondent registered the disputed domain name in order to intercept emails exchanges between the Complainant and its customers.
The Complainant argues that the main reason of the registration of the disputed domain name was to spoof the Complainant’s communications and fraudulently take advantage of the situation to obtain illegally sensitive information and/or money.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel holds that the disputed domain name <tenaris-usa.com> is confusingly similar to the Complainant’s trademarks. The Complainant has clearly shown that it has rights in the TENARIS trademarks.
The disputed domain name incorporates the whole of the trademark TENARIS to which there is added the suffix “usa”, the generic Top-Level Domain (“gTLD”) “.com” and a hyphen.
The Panel considers that the addition of the suffix “usa” and a hyphen does not diminish in any way the confusing similarity between the Complainant’s TENARIS trademarks and the disputed domain name. See section 1.8 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A gTLD, in this case “.com”, may be ignored when assessing the confusing similarity between a trademark and a domain name since it is a technical registration requirement (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607 and WIPO Overview 3.0, section 1.11).
Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
"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 your 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."
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out an unrebutted prima facie case that the respondent has no rights or legitimate interests in the disputed domain name.
In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the TENARIS trademark preceded the registration of the disputed domain name by years; (2) the Complainant has not licensed or otherwise authorized the Respondent to use its TENARIS trademarks or to incorporate them into a domain name; (3) given the extensive use of the Complainant’s marks and the fact that they are uniquely linked to the Complainant, the Respondent must have been aware of TENARIS when it registered the disputed domain name; and (4) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure in accordance with the Rules, paragraph 14(b).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
In the Panel’s view a finding of bad faith registration may be made where the Respondent “knew or should have known” of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark TENARIS is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name. The Complainant has demonstrated that its trademarks are widely recognized and that the disputed domain name incorporates in full its trademarks. Further, the Panel finds that the disputed domain name carries the risk of false association as Internet users may wrongly believe that the disputed domain name is related to any of the Complainant’s activity located or linked to United States, which is also the place of origin of the Respondent.
As to the use in bad faith, the Panel notes that the disputed domain name has been used by the Respondent in order to intercept emails exchanges between the Complainant and its customers. The Respondent has sent phishing emails for fraudulent purposes. The Complainant has provided evidence of such use enclosing a copy of a deceptive email purportedly being sent from the Complainant requesting urgent payments of fictitious invoices in the name Complainant with the Respondent’s bank information.
According to section 3.4 of the WIPO Overview 3.0 “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 <tenaris-usa.com> be transferred to the Complainant.
Date: December 4, 2019