The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
a) Registration of the disputed domain name in bad faith
The Respondent registered the disputed domain name many years after the registrations of the Complainant’s GLENCORE trademarks. The GLENCORE trademark is a widely known trademark (see Glencore International AG v. Domain Administrator, See PrivacyGuardian.org / Alanna Wisozk, Fisher LLC, WhoisGuard Protected, WhoisGuard, Inc. / Edswe Henry, Hassan Benda, dgt, Mark David, Donald Ugbebor, Dsenator.club and Leo Smart, Dsenator.club, WIPO Case No. D2020-2908), registered many countries and the Complainant enjoys a strong online presence. The Complainant is also very active on social media (Twitter, Facebook, Instagram) to promote its mark, products and services. The Complainant is followed by 173,757 on Facebook and 158,800 people on Twitter (See, Laboratoires M&L v. Zhaoxingming, CAC Case No. 102277). By conducting a simple online search regarding the term “Glencore” on popular search engines, the Respondent would have inevitably learnt about the Complainant, its trademark and business (see Intesa Sanpaolo S.p.A. v. Abayomi Ajileye, CAC Case No. 102396). Moreover, the Respondent owns several domain names, some of which incorporate third-party company names. The fact that the Respondent owns 17 domain names shows that it is familiar with the Internet system and search engines tools. It therefore inconceivable that the Respondent was unaware of the existence of the Complainant when it registered the disputed domain name.
The Respondent is based in Peru, country where the Complainant’s associated company and subsidiaries are located.
Furthermore, the disputed domain name alongside the Complainant’s trademark includes the country name “Peru” and the generic term “minera”. The Glencore group has three subsidiaries and one associated company based in Peru (Compania Minera Antapaccay S.A., Volcan Compania Minera S.A.A., Empresa Minera Los Quenuales S.A., Compania Minera Antamina S.A.), conducts mining operations in several sites in Peru and contributes to social programmes. The term “minera” in several languages refers either to minerals or the activity of mining. Moreover, the company names of subsidiaries or associated companies of the Glencore group in Peru as well as in other countries – such as Glencore Minera AG in Switzerland – comprise the term “minera”. As mentioned above, the Complainant also owns domain names incorporating the GLENCORE trademark and the terms “minerals”, “metals” or “peru” (<glencoreminerals.com>, <glencoremetals.com> and <glencoreperu.pe>). Given that the Complainant is part of the Glencore group which has an active business presence in Peru as well as many subsidiaries having the term “minera” in their company name and owns several domain names to which the disputed domain name is similar, it appears that the Respondent registered the disputed domain name having the Complainant in mind. Hence, the Respondent knew the Complainant and its trademark GLENCORE at the time it registered the disputed domain name. The inclusion in the second level portion of the disputed domain name of the Complainant’s trademark GLENCORE with the generic term “minera” and the geographical term “Peru” reflects the Respondent’s clear intention to create an association, and a subsequent likelihood of confusion, with the Complainant’s trademark in Internet users’ mind. By reading the disputed domain name, the Internet users may believe that it is connected or authorized by the Complainant, which is not the case.
In view of the above, the Respondent registered the disputed domain name in bad faith.
b) Use of the disputed domain name in bad faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is currently passively held. Previous UDRP panels have considered, under the doctrine of passive holding, that “the non-use of a domain would not prevent a finding of bad faith” (see “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition”, section 3.3). More precisely, “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The circumstances of the case may indeed be such that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law” (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the present case, several factual considerations are clear indicators of the Respondent’s behaviour and use in bad faith of the disputed domain name, under the passive holding doctrine.
The disputed domain name entirely comprises the Complaint’s widely known trademark GLENCORE which is registered and has been used for many years in Peru, country where the Respondent is located. In similar circumstances, the high degree of distinctiveness or reputation of the Complainant's trademark is considered as an indication of bad faith registration and use of the disputed domain name by the Respondent (see Compagnie Générale des Etablissements Michelin v. Le Van Dong, WIPO Case No. D2018-1522; Carrefour v. Ye Mao, WIPO Case No. D2018-0719). Moreover, as mentioned above, the Respondent could not ignore the Complainant and its GLENCORE trademark when it registered the disputed domain name because the Complainant has a strong online presence and four companies associated to the Glencore group have been established in Peru for many years.
The disputed domain name is currently passively held. It resolves to Webmail login page. It is not associated to an active website. There is therefore no evidence of any actual or contemplated good-faith use of the disputed domain name, as previous UDRP panels held (see British Airways Plc. v. David Moor, WIPO Case No. D2006-1224; Boehringer Ingelheim Pharma GmbH & Co.KG v. Raju Khan, CAC Case No. 101517).
The Complainant sent a cease and desist letter to the Respondent informing of the Complainant’s rights with respect of the GLENCORE trademark. The Respondent chose not to reply to the cease and desist letters sent by the Complainant which infers bad faith (see Arla Foods Amba v. Mlanie Guerin, CAC case No. 101640; Medela AG v. Donna Lucius, CAC case No. 101808).
Moreover, the disputed domain name is associated with an active MX record. Furthermore, the fact that the disputed domain name resolves to a Webmail login page implies that the Registrant has access to the Webmail hosting server parameters related to <mineraglencoreperu.com> and could set up corresponding e-mail addresses (“[…]@mineraglencoreperu.com”). Hence, a risk exists that the disputed domain name might have been incorporated in an e-mail address and used to send fraudulent e-mails, making recipients believed that the e-mail address is connected to the Complainant or the Glencore group (see Crédit Industriel et Commercial S.A. v. Atin, Miguel, WIPO Case No. D2020-0086; Boursorama S.A. v. Osaki Kyle, WIPO Case No. D2014-1522; Dewberry Engineers Inc. v. Peggy Cumberledge, Island Service, WIPO Case No. D2020-0346).
The overall described circumstances are clear demonstration of the registration and use of the disputed domain name is in bad faith.
In view of the above, the Complainant’s conduct falls within the meaning of Paragraph 4(a)(iii) of the Policy.
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