The Complainant is Arcelormittal, of La Plaine Saint-Denis cedex, France, represented by Nameshield, France.
The Respondent is info@, of Puerto Rico, United States of America, represented by Myriam E. Maldonado Castro, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2010. On August 23, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Disputed Domain Name. On August 23, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on September 7, 2010 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 September 14, 2010 at the Center. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2010. The Response was filed with the Center on September 28, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on October 12, 2010. 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 Arcelormittal which was formed in 2006 resulting from the merger of Arecelor S.A. and Mittal Steel Company N.V. The Complainant owns two relevant Community Trade Mark registrations, including for the word mark MITTAL under registration number 004592382 dating from 16/08/2005 and a logo mark registration comprised of the word mark in fancy script under registration number 004507471 which was registered on 23/06/2005.
The Respondent registered the Disputed Domain Name on July 29, 2007. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s MITTAL Community Trademark registration. It contends that the trademark is included in its entirety within the Disputed Domain Name and that numerous WIPO panels have found that the fact that a disputed domain name wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy for example the panels The Ritz Hotel Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially (UK) Limited v Mark Schnorrenberg/Quintessentially Concierge,WIPO Case No. D2006-1643.
The Complainant submits that the Disputed Domain Name is in fact identical or confusingly similar to “Vanisha Mittal Bathia” the name of the daughter of the CEO of the Complainant, who is also a director of the Complainant. The website to which the Disputed Domain name resolves features Arcelor Mittal’s logo without the Complainant’s authority and the following text: “V is for sale; Vanisha Mittal is THE RICHEST WOMAN IN THE WORLD; Vanisha Mittal is THE BIGGEST CELEBRITY IN THE INDIAN; Vanisha Mittal is THE MOST EXPENSIVE WEDDING IN THE HISTORY OF THE WORLD; VanishaM – break the record of B? We’ll see!” Part of this money will go to Church La Senda Antigua and children who have no food …and others”. The Complainant says that it has never authorised the use of the Disputed Domain Name by the Respondent and has no affiliation or business with the Respondent and that this unauthorized usage of its logo on the website and the references to the CEO’s daughter is evidence of the Respondent’s bad faith and is intended to incite offers to buy the Disputed Domain Name from the purchaser. Accordingly, the Complainant says that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant submits that the Respondent MITTAL mark registered the Disputed Domain Name as described by paragraph 4 (b)(i) of the Policy, primarily for the purpose of selling or transferring it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name. The unauthorized usage of the Complainant’s logo on the website and the text referring to the CEO of the Complainant’s daughter, as set out above, is evidence of the Respondent’s intentions. The Complainant further notes that on June 12, 2009, the Respondent registered the domain name which is identical to the name of the CEO’s daughter, but which has subsequently been deleted by the Respondent. As a result the Complainant maintains that the Disputed Domain Name was registered and used by the Respondent in bad faith under the third element of the Policy. B. Respondent
The Respondent has herself filed various email correspondence and a partially completed formal response. Based on these communications she appears to submit that she registered the Disputed Domain Name to incorporate the first part of her daughter’s name which is said to be “Vanisha Mittal Maldonado”.
The Respondent further submits that the name Vanisha Mittal is not a singer, actress or artist with a commercial reputation and is not a brand and therefore cannot be protected under the Policy. She notes that “Vanisha Mittal” is a commonly used name in Facebook pages and that various domain names are available for registration incorporating this name. She further notes a prior case concerning a domain name identical to the Disputed Domain Name in which the complaint was denied in , Vanisha Mittal v. info@,WIPO Case No. D2010-0810 and ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, Aditya Mittal v. All Illumination, Vanisha Mittal, info@,WIPO Case No. DME2010-0006.
The Respondent submits that the Disputed Domain Name is not for sale but offers no explanation of the comments set out above noted on the website to which the Disputed Domain name resolves. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns a Community Trade Mark registration for the word mark MITTAL being also the name and a mark of the Mittal Steel Company before it merged to form ArcelorMittal. The Panel finds that the Complainant clearly has trademark rights in its MITTAL mark for the purposes of the Policy and that MITTAL falls into a category of marks that is inherently highly distinctive therefore functions as a “strong” mark. Is the Disputed Domain Name confusingly similar to the Complainant’s trademark?
The Complainant submits that it is confusingly similar on the basis of a line of decisions which find that the inclusion of the entirety of a trademark within a domain name may in appropriate circumstances support a finding of confusing similarity. The Complainant relies in particular on the decisions in, The Ritz Hotel Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137, and Quintessentially (UK) Limited v. Mark Schnorrenberg/Quintessentially Concierge,WIPO Case No. D2006-1643. The” appropriate circumstances” referred to in these and subsequent decisions generally focus on the addition of descriptive or generic words which do nothing to distinguish the Disputed Domain Name from the Complainant’s trademark on a side-by- side comparison.
In this case however the additional word is “Vanisha” which is added as a prefix to the Complainant’s MITTAL trademark. This addition is clearly not a common or generic word and in the Panel’s view is a quite distinctive word or name. Does the addition of this name adequately distinguish the Disputed Domain name from the Complainant’s trademark?
For clarification purposes only, it is important to point out that the matter at issue here does not require a finding concerning the existence of trademark rights in the name “Vanisha Mittal” as was the case in the recent decision in Vanisha Mittal v. infor@, WIPO Case No. D2010-0810. In that case Vanisha Mittal was herself the complainant and the panel found that she had not demonstrated a commercial reputation attaching to her name in order to support a finding of trademark rights under the Policy.
In any event, the current case is similarly brought by the well-known Arcelormittal company on the basis that it owns registered trade mark rights in the MITTAL mark which was previously owned by Ms Mittal’s family’s company. Therefore the relevant test for confusing similarity is to apply a side-by-side independent comparison of MITTAL and “vanishamittal” and the consensus view among panels has generally been that website content is irrelevant to a finding of confusing similarity.
However, this remains an unusual case in several respects. Firstly, the modifying term “Vanisha” appears to be a christian name and not a dictionary word, but is not in the Panel’s view a commonly used name or word and is quite distinctive, particularly when used as a prefix in the manner in which it is used in the Disputed Domain Name. Secondly, the key elements of the Disputed Domain Name equate to the name of a real person of some social repute, namely “Vanisha Mittal” but the mark on which the relevant comparison must be made is not a name or mark in which this person claims an independent commercial reputation, but rather the Complainant’s corporate trademark which also happens to be Ms Mittal’s family name.
In this Panel’s view, the addition of the modifying term “Vanisha” to the Complainant’s trademark MITTAL could in theory serve to distinguish the Disputed Domain Name from the Complainant’s trademark and some Internet users who have no knowledge of the Complainant or of the Mittal family might not consider that “vanishamittal” is confusingly similar to MITTAL. On the other hand, in the Panel’s view, anyone who is at all aware of the well-known Arcelormittal group of companies, or indeed of the Mittal family is likely to associate the Disputed Domain Name with the MITTAL name being either the Complainant, or in the alternative, with Ms Mittal and the Mittal family. A key question in relation to this latter group of Internet users is therefore whether they are likely to make an association with the MITTAL trademark and the reputation and goodwill attaching to it, or rather with the Mittal family? In other words would those who know of the Complainant and the Mittal family assume that the Disputed Domain Name has some connection with the Complainant company, or rather with Ms Mittal’s family? In the Panel’s view this distinction is to all practical purposes artificial in the circumstances or present case as the reputation in the Mittal family’s name is necessarily intertwined with that of the family company and the MITTAL name and trademark which is now owned by the Arcelormittal group. In any event, it has been recognised by panels in numerous prior UDRP decisions, including for example Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227, that the test for “confusing similarity” under the first element of the Policy may be regarded as being of a lower threshold nature, which operates essentially as a standing requirement, and given that the distinctive MITTAL trademark is clearly recognizable as such within the Disputed Domain Name, the Panel would have little hesitation in concluding that such requirement has indeed been met in this particular instance.
Accordingly the Panel thinks that on the balance of probabilities it is more likely than not that this group of Internet users would associate the Disputed Domain Name with the Complainant’s MITTAL trademark and therefore considers that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
This approach is consistent with a previous decision concerning the Complainant in which the Complainant succeeded in establishing that the trademark MITTAL may be regarded as confusingly similar to the domain name . In ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, Aditya Mittal v. All Illumination, Vanisha Mittal, info@,WIPO Case No. DME2010-0006 the panel noted as follows:
“...a significant number of Internet users who were aware of the MITTAL mark, but not necessarily aware of...Vanisha Mittal or [her role] within the ArcelorMittal group, would be likely to associate [the Domain Name] with the commercial activities carried on under the MITTAL mark with which they were familiar. If they assumed anything at all about [the Domain Name], those Internet users would likely assume that...“vanisha” [was a reference to a person] associated with the Mittal business in some way. Other Internet users, aware of the names of individual members of the Mittal family and the roles they play within ArcelorMittal, would be even more likely to associate the [Domain Name] with the Mittal family business.
On balance, the Panel is satisfied that the use in full of the MITTAL trademark within the [Domain Name] ...renders [that Domain Name] confusingly similar to the MITTAL trademark owned by the Complainant ArcelorMittal.”
As a result the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
The Complainant asserts that it has never authorised the Respondent’s use of its MITTAL trademark in the Disputed Domain Name or the use of its logo on the website to which the Disputed Domain name resolves. It submits further that considering the text on the website the only reasonable conclusion that can be made is that the Respondent is attempting to incite offers for the purchase of the Disputed Domain Name.
The Respondent has not submitted that she wished to use the Disputed Domain Name for any bona fide business, but rather that it reflects her daughter’s name and that she has no wish to sell the Disputed Domain Name and did not make the registration in bad faith.
The combination of use the text as described above together with the Complainant’s logo on the website to which the Disputed Domain Name resolves suggests to the Panel, as further set out below, that the Disputed Domain Name was registered in order to re-sell it at a profit. The Respondent’s failure to provide any reasonable explanation as to a bona fide interest in the Disputed Domain Name, except to suggest that it reflects her daughter’s name and that she does not want to sell it, is in the Panel’s view insufficient to rebut the prima facie case made out by the Complainant. The Panel notes that there is no suggestion here that the Respondent’s website comprises a legitimate criticism site and in any event the site does not appear to the Panel to function as such.
As a result the Panel considers that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complaint succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant submits that the Respondent MITTAL mark registered the Disputed Domain Name as described by paragraph 4 (b)(i) of the Policy, primarily for the purpose of selling or transferring it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
The website to which the Disputed Domain Name resolves features the Complainant’s logo together with the text: “V is for sale ; Vanisha Mittal is THE RICHEST WOMAN IN THE WORLD; Vanisha Mittal is THE BIGGEST CELEBRITY IN THE INDIAN; Vanisha Mittal is THE MOST EXPENSIVE WEDDING IN THE HISTORY OF THE WORLD; VanishaM – break the record of B? We’ll see!” A footnote at the bottom of the website page suggests that “Part of this money will go to Church La Senda Antigua and children who have no food …and others”. The clear inference here is that owner of the Disputed Domain Name intends to sell the Disputed Domain name at a substantial profit and that part of the proceeds will go to charity.
As noted above, the Respondent baldly denies in her Response that she wishes to sell the Disputed Domain Name. She says that all she has done is to register a domain name reflecting her daughter’s name and that she has not therefore registered or used the Disputed Domain Name in bad faith.
The Panel finds that the Respondent’s explanation lacks credibility and fails to rebut the very strong inference based on the website text that this is a contrived scheme intended to solicit substantial offers for the Disputed Domain Name considerably in excess of the Respondent’s out-of-pocket costs. Whether the intention is to solicit offers from the Complainant, from Vanisha Mittal herself, or from some third party, is of little importance. On the one hand the elements of paragraph 4 (b)(i) are made out and on the other the Panel finds that the overwhelming inference is that the Respondent both registered the Disputed Domain Name and subsequently used it to resolve to this website in bad faith purely for the purposes of extracting a substantial sale price.
Accordingly the Complaint succeeds in relation to the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: November 10, 2010
Full & Egal Universal Law Academy