The Complainants are Ternium México S.A. De C.V., Mexico and Hylsa S.A. De C.V., Mexico, (jointly referred to as “the Complainant”), represented by Mitrani, Caballero & Ruiz Moreno Abogados, Argentina.
The Respondent is Jose Luis Fernandez Mendoza, Mexico.
The disputed domain name <hylsadivision.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 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 June 14, 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 June 19, 2019. In response to a request for clarification issued by the Center, the Complainant filed an amendment to the Complaint on June 21, 2019.
The Center verified that the Complaint together with its amendment 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 June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2019.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on July 29, 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.
The proceeding is conducted in English, this being the language of the registration agreement for the disputed domain name, as confirmed by the Registrar.
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 included in international class 6.
On October 25, 2018, the Respondent registered the disputed domain name, which prior to the filing of the Complaint resolved to a fake website passing off as the Complainant’s home page.
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;
iii) The addition of the descriptive term “division” actually increases the likelihood of confusion between the disputed domain name and the Complainant’s mark because Internet users will regard said term as an indication of the Complainant’s business structure within Ternium;
iv) The Complainant does not have any relationship with the Respondent;
v) As “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 Complainant’s mining centers in Mexico;
x) The Respondent pulled out pictures of Complainant’s products from the Complainant’s website at “www.mx.ternium.com/productos/ternium-varilla”;
xi) The Respondent is publicly offering sales and preparing quotes under Complainant’s name, which is damaging the Complainant’s reputation.
The Respondent did not contest the Complainant’s contentions.
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.
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 holds 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 descriptive term “division”. 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 (“gTLD”) is viewed here as a standard registration suffix and as such is disregarded for comparison purposes.
Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark on which the Complaint is based.
The Complainant has fulfilled the first threshold of paragraph 4(a) of the Policy.
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 [p]aragraph 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 not to 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. Moreover, those submissions remain uncontested by the Respondent.
Notably, the disputed domain name’s hosting of a website masquerading as the Complainant’s portal negates rights or legitimate interests under the Policy as a matter of course. 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, the Panel is convinced that the Respondent has no 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).
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 accepts the Complainant’s explanation that the Complainant coined the term “hylsa” by joining the first letters of “Hojalata y Lámina S.A.”, the Complainant’s most ancient predecessor. In addition to its inherent distinctiveness, the Complainant’s mark has been in use in the Mexican market for over 50 years. In that context, the registration of the disputed domain name denotes opportunistic bad faith as the Respondent took unfair advantage of the goodwill and reputation attaching to the HYLSA mark. See paragraph 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 produced screen captures of the Respondent’s sham portal palming itself off as the Complainant’s hosting portal, and reproducing the Complainant’s trademarked logo and copyrighted pictures without the Complainant’s consent. In the Panel’s view, this use of the disputed domain name may well entail consumer fraud, criminal fraud, phishing, copyright infringement, and trademark infringement, all of which are illegal activities.
The Panel found one entry for the disputed domain name in the Internet Archive showing the use of “robot.txt”, which prevented the Panel from reviewing the historic content of the website at the disputed domain name. The Panel infers bad faith from the use of “robot.txt” in this instance. See section 3.11 of the WIPO Overview 3.0 (the use of “robots.txt” on the Internet Archive at <archive.org> may support an inference that a respondent has sought to prevent access to trademark-abusive or otherwise incriminating content).
In consideration of the above circumstances, 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 disputed domain name <hylsadivision.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: August 18, 2019
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