Teck Resources Limited and Teck Operaciones Mineras Chile Limitada v. Amexa Ltda.
Claim Number: FA1112001420960
Complainant is Teck Resources Limited and Teck Operaciones Mineras Chile Limitada (collectively “Complainant”), represented by Robert J.C. Deane of Borden Ladner Gervais LLP, Canada. Respondent is Amexa Ltda. (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teckchile.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2011; the National Arbitration Forum received payment on December 21, 2011.
On December 21, 2011, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <teckchile.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@teckchile.com. Also on December 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <teckchile.com> domain name is confusingly similar to Complainant’s TECK mark.
2. Respondent does not have any rights or legitimate interests in the <teckchile.com> domain name.
3. Respondent registered and used the <teckchile.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Teck Resources Limited and Teck Operaciones Mineras Chile Limitada, operate a globally diversified mining, mineral processing, and metallurgical processing company. Tech Resources Limited, operates its business in the country of Chile through its affiliate Teck Operaciones Mineras Chile Limitads. The Panel determines that there is a sufficient nexus between Complainants and therefore will refer to Complainants collectively as “Complainant” throughout the remainder of this decision. Complainant owns several trademark registrations for the TECK mark with worldwide trademark authorities as follows: Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1,074,683 registered September 29, 2008); Chile’s National Institute of Industrial Property (“NIIP”) (e.g., Reg. No. 847.704 registered March 5, 2010); IP Australia (“IPA”) (Reg. No. 1264327 registered September 25, 2008); and the European Union Office for Harmonization of the Internal Market (“OHIM”) (e.g., Reg. No. 7258866 registered July 29, 2010), among others.
Respondent, Amexa Ltda., registered the <teckchile.com> domain name on November 1, 2010. Respondent’s domain name previously failed to resolve to an active website. Since July 12, 2011, the disputed domain name has redirected Internet users to several commercial websites that are not affiliated with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence to show that it owns many trademark registrations worldwide for the TECK mark, including the MIIP (e.g., Reg. No. 1,074,683 registered September 29, 2008); NIIP (e.g., Reg. No. 847.704 registered March 5, 2010); IPA (Reg. No. 1264327 registered September 25, 2008); and the OHIM (e.g., Reg. No. 7258866 registered July 29, 2010), among others. The Panel finds that these registrations establish Complainant’s rights in the TECK mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <teckchile.com> domain name is confusingly similar to Complainant’s TECK mark. The Panel notes that the domain name contains Complainant’s TECK mark entirely while adding geographic identifier “chile” and the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s TECK mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has never had rights or legitimate interests in the <teckchile.com> domain name as evidenced by its usage of the domain name. Policy ¶ 4(a)(ii) requires Complainant to produce a prima facie case supporting its accusations so that the burden of proof may be properly shifted to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Complainant has submitted sufficient evidence to establish a prima facie case that Respondent lacks rights and legitimate interests in the domain name at issue. Due to Respondent’s failure to respond, the Panel may accept as true all of Complainant’s assertions that are not contradicted by the evidence in the record. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). In order to determine whether or not Complainant’s assertions are contradicted by the evidence in the record, the Panel will evaluate all of the evidence in accordance with the Policy ¶ 4(c) factors.
Complainant argues that Respondent is not affiliated with Complainant and has not been authorized to use the TECK mark in any way. Further, Complainant asserts that there is no evidence available to show that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies the registrant of the <teckchile.com> domain name as “Amexa Ltda.” Based on the foregoing, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Further, Complainant argues that Respondent’s usage of the disputed domain name does not confer it rights in the domain name. Complainant submits that it attempted to contact Respondent on June 7, 2011 about its registration of the domain name. Since that date, the disputed domain name has redirected Internet users to three different commercial websites located at <tecnoparis.cl>, <sitios.cl>, and, finally, <tekchile.com>. Complainant has asserted that none of these websites are affiliated with Complainant or even involved in the same industry. Respondent has not offered any explanation for its use of the disputed domain name. Therefore, the Panel finds that Respondent is not using the <teckchile.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Lastly, Complainant argues that between the time the domain name was registered on November 1, 2010 and July of 2011, Respondent did not have the domain name resolve to a website with active content. Complainant contends this failure to actively use the domain name is also evidence of Complainant’s lack of rights and legitimate interests in the domain name. The Panel agrees and finds that, under Policy ¶ 4(a)(ii), Respondent’s failure to make an active use of the domain name is further evidence that Respondent does not possess rights and legitimate interests in the <teckchile.com> domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has argued, and submitted evidence to show, that Respondent has used the disputed domain name to redirect Internet users to at least three different commercial websites since July 2011. Complainant alleges that Respondent receives commercial gain from the websites to which it is redirecting Internet users. Respondent has not come forward to contest this claim. The Panel finds that Respondent is using the confusingly similar domain name in order to enhance its web presence due to the nature of Complainant’s mark. In so doing, Respondent is profiting from its use of the TECK mark which it has not been authorized to use. Therefore, the Panel finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally using Complainant’s mark to attract Internet users to the various websites by creating confusion on the part of Internet users as to Complainant’s affiliation with the resolving websites. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Further, Respondent failed to make an active use of the disputed domain name from November 1, 2010 until July of 2011. The Panel finds that this non-use of the disputed domain name is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teckchile.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 27, 2012
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