The Complainant is ArcelorMittal of Luxembourg, represented by Teissonnière Sardain Chevé A.A.R.P.I., France.
The Respondent is ArcelorMittal SpA SteelConstructionGroup of Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2011. On July 8, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. a request for registrar verification in connection with the disputed domain name. On July 9, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2011.
The Center appointed Daniel Kraus as the sole panelist in this matter on August 9, 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
Complainant in this administrative proceeding is ArcelorMittal, a public limited company, with a capital of EUR 6.428.005.991,80, headquartered in Luxembourg since June 2001. ArcelorMittal is a successor to Mittal Steel, a business founded in 1989 by Mr. Lakshmi N. Mittal. It operates in more than 60 countries.
According to the Whols database, Respondent in this administrative proceeding is ArcelorMittal SpA SteelConstructionGroup, located in Rome, Italy.
Respondent registered the disputed domain name on November 21, 2010. 5. Parties’ Contentions A. Complainant
Complainant first states that it benefits from prior rights. Those include in particular the following trademarks:
The word international trademark ARCELORMITTAL filed on March 8, 2007, under number 947686 in classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42;
The word trademark ARCELOR filed on February 26, 2002, registered in France, under number 3150239 in classes 6, 7 and 12. Such trademark, which was initially filed by Arcelor S.A, was assigned to ArcelorMittal on May 31, 2010;
The word community trademark ARCELOR filed on February 25, 2002, under number 778212 in classes 1,6,7,9,12,37,40 and 42;
The word international trademark ARCELOR filed on February 25, 2002, under number 778212 in classes 1, 6, 7, 9, 12, 37, 40 and 42;
The word community trademark MITTAL filed on August 16, 2005, under number 4592382 in class 39;
The word community trademark MITTAL filed on August 9, 2004, under number 3975786 in classes 6 and 40;
A semi-pictorial community trademark MITTAL filed on June 23, 2005 under number 4507471 in classes 6, 39 and 40.
Complainant also states that it has rights in the ArcelorMittal trade and corporate names such as:
ArcelorMittal Piombino S.p.A;
ArcelorMittal Italy Holding;
ArcelorMittal Verderio S.R.L;
ArcelorMittal Distribution Solutions Italia S.R.L;
ArcelorMittal Commercial Long Italia S.R.L;
ArcelorMittal Logistics Italia S.R.L;
ArcelorMittal FCE Italy S.R.L.
Complainant further alleges that it is the owner of several ARCELORMITTAL domain names notably, the generic top level domain name registered on January 27, 2006 and the country code top level domain registered on February 10, 2010.
In Complainant`s view, the disputed domain name is confusingly similar to its prior rights, in particular to the widely known trademarks ARCELORMITTAL, ARCELOR and MITTAL and the domain name , that are entirely reproduced in the disputed domain name registered on November 21, 2010 by Respondent. The addition of the suffix "spa”, the Italian designation for the corporation "società per azioni", is of no consequence in assessing the similarity between Complainant's trademarks and the disputed domain name.
Complainant further argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has no registered trademark rights in the word Arcelormittal, and there is no evidence that Respondent is commonly known by the disputed domain name. Further, Respondent has not been licensed or otherwise authorized to use any of Complainant's trademarks or to apply for or use any domain name incorporating such trademarks.
Complainant finally argues that the disputed domain name has been registered and is being used by Respondent in bad faith. According to Complainant, Respondent was necessarily aware of the Complainant's well-known business and widespread reputation in its ARCELORMITTAL trademarks. According to Complainant, such finding is supported by the fact that the website at the disputed domain name presents to users a list of products and services for which Complainant is well known for, content which would not have been generated had Respondent not known the Complainant's activities or its official website when it registered it, several years after the beginning of Complainant’s activities. Further, same logos, trademarks, pictures and diagrams are being used by Respondent, which, according to Complainant, intentionally attempted to divert traffic intended for Complainant’s website to its own website, free-riding on its goodwill, intentionally creating a risk of confusion and hence proving its bad faith.
For all these reasons, Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following in order to obtain the transfer of the disputed domain name:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the disputed domain name, and
iii. The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy above.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) of the Policy above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
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 (b) 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 undisputed that the Complainant is the owner of the trademarks “ARCELORMITTAL”, “ARCELOR” and “MITTAL”. The mere addition by Respondent to Complainant’s trademark “ARCELORMITTAL”of the suffix "spa”, the Italian designation for the corporation "società per azioni" is of no consequence in assessing the similarity between the Complainant's trademarks and the disputed domain name. The addition of the suffix "spa" – a commonly used designation of a particular type of corporate organization in Italy - to Complainant's mark might even reinforce the strong association with Complainant and its prior mark (Sorgenia SpA of Mila v. Maurice Nathan,WIPO Case No. D2010-1049).
Accordingly, the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Respondent seems to be using the disputed domain name for commercial purposes, but, failing to reply, has failed to demonstrate that it has been making a bona fida offering of goods or services in the meaning of Paragraph 4(c) (i) of the Policy. Specifically, Complainant contends, without challenge, that Respondent only offers a poor replica of the products and services of the Complainant, thereby benefiting from ArcelorMittal’s reputation. Thus, Respondent only tries to confuse the consumer through a false offer of goods and services. Secondly, the Respondent seems to have no registered trademark rights in the word "arcelormittal", and there is no evidence that the Respondent is commonly known by the disputed domain name. Further, Respondent has not been licensed or otherwise authorized to use any of the Complainant's trademarks or to apply for or use any domain name incorporating such trademarks.
It is well established that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name, unless it was seeking to create a mistaken impression of identification or association with the particular Complainant.
In similar circumstances, panels have considered that no bona fide or legitimate use of the disputed domain name could be claimed by the respondent (Guerlain SA v. Peikang,WIPO Case No. D2000-0055, Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258).
That is also the case in the present proceedings.
Accordingly, Respondent lacks rights or 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, which 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 in the case file, the Panel considers that the Respondent, by registering the disputed domain name , is trying to free-ride on Complainant’s valuable goodwill established in particular in its trademark ARCELORMITTAL. This seems even more so true considering that Respondent fully incorporated Complainant’s trademark into the disputed domain name, presenting users with the same logo, similar products, and some identical pictures and diagrams.
In view of the above, the Panel considers that the disputed domain name was registered and is being used in bad faith. 7. Decision
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 be transferred to the Complainant.
Daniel Kraus
Sole Panelist
Dated: August 23, 2011
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