The Complainant is ArcelorMittal SA of Luxembourg, Luxembourg, represented by Nameshield, France.
The Respondent is WhoIs Privacy Services Pty Ltd / 21562719 Ont Ltd of Queensland, Australia and Ontario, Canada, respectively. 2. The Domain Name And Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2011, F. 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 February 20, 2011 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 February 22, 2011.
The Center verified that the Complaint together with the amended 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 March 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2011.
The Center appointed Ian Blackshaw as the sole panelist in this matter on April 4, 2011. 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 was created in 2006, following the merger of Arcelor SA and Mittal Steel Company N.V.
The Company Mittal Steel Company N.V. was owned by the Mittal family (before the merger), which was one of the world's largest steel producers by volume, and also one of the largest in turnover.
Sir Lakshmi Niwas Mittal (also known as Lakshmi Mittal) is the chief executive officer of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions:
i.. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
Arcelormittal owns several registrations for and incorporating the trademarks MITTAL and MITTAL STEE such as:
Region
Registration number
Trademark
Date of registration
European Union
No. 4592382
MITTAL
registered on August 16,2005
European Union
No. 4233301
MITTAL STEEL
registered on January 7, 2005
European Union
No. 4507471
MITTAL
registered on June 23, 2005
European Union
No. 3975786
MITTAL
registered on August 9, 2004
European Union
No. 4397841
MITTAL STEEL
registered on April 20, 2005
Australia
No. 1058338
MITTAL
registered on June 1, 2005
Evidence of the above registrations has been provided to the Panel.
The Complainant contends that the trademark MITTAL is known worldwide.
The notoriety of the MITTAL trademark has been demonstrated in prior WIPO UDRP decisions i.e. Arcelormittal v. Mesotek Software Solutions Pvt. Ltd. ,WIPO Case No. D2010-2049; Mittal Steel Technologies Limited, Mittal Steel Company NV and Arcelor SA v. Jean Frederic Serete,WIPO Case No. D2006-1353; ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, Aditya Mittal v. All Illumination, Vanisha Mittal, info@,WIPO Case No. DME2010-0006.
In Arcelormittal v. info@,WIPO Case No. D2010-1417, the panel had found that the Complainant clearly has trademark rights in the MITTAL mark for the purposes of the Policy and that MITTAL falls into a category of marks that is inherently highly distinctive and, therefore, functions as a “strong” mark.
The disputed domain name is confusingly similar to the trademark MITTAL STEEL and identical to the trademark MITTAL. The Complainant also contends that the trademark is included in its entirety within this domain name.
The disputed domain name is identical to Lakshmi Mittal, a member of the Complainant’s board and chief executive officer, evidence of which has been provided to the Panel.
According to The Ritz Hotel Limited v Damir Kruzicevic,WIPO Case No. D2002-0782, and Quintessentially (UK) Limited v Mark Schnorrenberg/Quintessentially Concierge,WIPO Case No. D2006-1643, numerous UDRP 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.
ii. The Respondent has no rights or legitimate interests in respect of the domain name. (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
According to Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Complainant contends the disputed domain name is confusingly similar to the trademark MITTAL. The Complainant also contends that the disputed domain name is identical to the name of the Complaint’s CEO Lakshmi Mittal.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with, the Respondent. Neither a license nor authorization has been granted to the Respondent to make any use, or apply for registration of the disputed domain name by the Complainant.
The website associated with the disputed domain name displays information regarding the sale of the disputed domain name for an amount of USD 5,000.00, evidence of which has been provided to the Panel.
Considering that the use of the MITTAL trademark has not been authorized or licensed to the Respondent and the disputed domain name does not correspond to the Respondent's name by which it has become commonly known and the website at the disputed domain name includes several links to the websites of the competitors of the Complainant, the Complainant contends that the Respondent cannot be regarded as using the disputed domain name in connection with a bona fide offering of goods or services.
iii. The domain name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Complainant contends that the disputed domain name is confusingly similar to the trademark MITTAL, which is known worldwide. The disputed domain name is identical to the name of the Complainant’s CEO Lakshmi Mittal. Moreover, the addition of term “lakshmi” is not sufficient to establish a distinction with the Complaint, and its trademark MITTAL and its products.
The website associated with the disputed domain name displays information regarding the sale of the disputed domain name. The disputed domain name is on sale for an amount of USD 5,000.00
According to paragraph 4(b) of the Policy, to acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant which is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name, is considered as a bad faith See Air Group v. Pat Reinhardt,WIPO Case No. D2000-0482.
On the above described facts, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. 6. Discussion And Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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
(ii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, a panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainants’ well-known registered trademark MITTAL. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant’s company and its products marketed under its well-known registered trademark MITTAL.
Further confusion is generated by the fact that the disputed domain name also incorporates the name of the CEO of the Complainant, Lakshmi Mittal, who is a well-known businessman internationally.
The addition of a top level domain (gTLD) here, “.com”, to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known registered trademark MITTAL, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and commercial use of the same for several years. The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the 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 before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark MITTAL. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known registered trademark MITTAL inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below). Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and, therefore, valuable trademark MITTAL and also the valuable goodwill that the Complainant has established in this trademark through advertising and commercial use of the same over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the record, the Panel considers that the Respondent, by registering the disputed domain name, is trading unfairly on the Complainants’ valuable goodwill established in its well-known registered trademark MITTAL.
By registering and using the disputed domain name incorporating the well-known registered trademark MITTAL, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith. The fact that the disputed domain name is stated to be for sale, as mentioned above, is also evidence of bad faith pursuant to the provisions of Paragraph 4(b)(i) of the Policy.
Finally, the failure also of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: April 7, 2011
Full & Egal Universal Law Academy