WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tenaris Connections BV v. Rahman Suleman
Case No. D2021-4396
1. The Parties
Complainant is Tenaris Connections BV, Netherlands, represented by SILKA AB, Sweden.
Respondent is Rahman Suleman, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <tenarisuae.com> (“Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 30, 2021, 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 Complainant on January 3, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 4, 2022.
The Center verified that the Complaint together with the amendment of 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 2, 2022.
The Center appointed Marina Perraki as the sole panelist in this matter on February 7, 2022. 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
Per Complaint, Complainant is the intellectual property-owning subsidiary of the international holding company Tenaris S.A. based in Luxembourg, which 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 30 countries and employs more than 19,000 people. Complainant’s group also maintains its main website at “www.tenaris.com”.
Complainant owns trademark registrations for TENARIS around the world, including:
- Unites States of America trademark registration No. 78037449, TENARIS (word), filed on December 1, 2000 and registered on January 21, 2003, for goods in international class 6;
- International trademark registration No. 837600, TENARIS (word), registered on February 23, 2011 for goods in international class 6; and
- United Arab Emirates trademark registration No. 153395, TENARIS (word), filed on February 22, 2011 and registered on July 8, 2012, for goods in international class 6.
The Domain Name was registered on October 17, 2021, and leads to a website (the “Website”) which reproduces Complainant’s trademark and logo and uses a company name “Tenaris Oil & Gas LLC”. The Website has few active sub-pages, with few non-working (#) links. An active MX record has been configured on the Domain Name making use of ZOHO.com email services, using MX records – “mx.zoho.com”, “mx2.zoho.com” and “mx3.zoho.com”. Per Complaint, the said email services are being used to issue fraudulent job offers to Internet users by impersonating Complainant. The emails have the following content: “Greetings of the day from the Tenaris Oil and Gas Services - Abu Dhabi, After a careful evaluation of your application for the position mentioned in the attached contract agreement document, we are glad to inform you that you have been confirmed in our organization. Your monthly salary will be as stated in the enclosed contract agreement document”. The said emails are accompanied by an attachment with the name “TENARIS OIL AND GAS SERVICES OFFICIAL LETTER OF APPOINTMENT” purportedly of Complainant. The said emails were received by different people around the world and were brought to the attention of Complainant. Complainant made numerous attempts to take down the Website, mainly by reporting it to the domain registrar “Astra Corporation”.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Domain Name incorporates Complainant’s trademark TENARIS in its entirety. This is sufficient to establish confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
The addition of the letters “uae”, initials of United Arab Emirates in the Domain Name, does not prevent a finding of confusing similarity, as the trademark TENARIS remains clearly recognizable (WIPO Overview 3.0, section 1.7).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison as they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; and Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the TENARIS mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name is used to host the Website to impersonate Complainant and attempt to mislead Internet users into thinking that the goods and services purportedly offered on the Website originate from Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest of Respondent (Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502).
Furthermore, the Domain Name was used to create an email address and send emails with employment offers purportedly of Complainant in the context of a fraud scheme. Use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).
Lastly, the nature of the Domain Name carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Because the TENARIS mark had been used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also in view of the fact that TENARIS is a made up name.
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; and Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of TENARIS (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Lastly, the content of the Website gives the impression that it originates from Complainant, eminently displaying its logo and a company name “Tenaris Oil & Gas LLC”, thereby giving the false impression that the Website emanates from Complainant. This further supports registration in bad faith reinforcing the likelihood of confusion with Complainant’s trademark and business, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4 and 3.2.1).
The above further removes any doubt that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).
As regards bad faith use, Complainant demonstrated that the Domain Name was employed to host a Website, which appeared falsely to be that of Complainant and to create an email address to send fraudulent emails.
The Panel considers the following factors:
(i) the use of the Domain Name in an email fraud scheme which involved impersonating Complainant and sending emails purportedly sent by Complainant, with offers of employment;
(ii) the failure of Respondent to submit a response;
(iii) the fact that the Domain Name leads to the Website impersonating Complainant; and
(iv) the fact that active MX records are present on the Domain name.
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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 <tenarisuae.com> be transferred to the Complainant.
Date: February 21, 2022