Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
Respondent is Viraat Datatech Pvt Ltd., Sachin Patil of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2016. On May 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 21, 2016, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2016. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2016.
On June 23, 2016, Respondent filed a late Response with the Center.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 30, 2016. 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.
On July 4, 2016, the Panel issued Procedural Order No. 1, stating substantively as follows:
“First, the Panel hereby orders the Parties to submit to the Center (and to each other), on or before July 15, 2016, the following information and documentation:
(1) Complainant shall provide evidence of any trademarks registered in India, during or prior to 2004, for the trademark MITTAL (not ARCELOR MITTAL or any other mark, simply MITTAL).
(2) Complainant shall provide evidence of its use of the mark MITTAL (again, simply MITTAL) in India during or prior to 2004, including, if possible, evidence of the extent of such use.
(3) Respondent shall provide evidence of its relationship, if any, with the company “Mittal Investments and Agencies Private Limited” (hereinafter “MIAPL”).
(4) Respondent shall describe the operations, if any, of MIAPL.
(5) Respondent shall provide evidence of MIAPL advertising or trading under the name or mark “Mittal Investments.”
(6) Respondent shall indicate whether MIAPL has an Internet site and, if it does, shall provide the web address.
Second, the Panel hereby permits each of the Parties to submit to the Center (and to each other), on or before July 25, 2016, a response to the other Party’s information and evidence as indicated above.”
Complainant provided a timely submission in connection with items (1) and (2) above. Respondent made no submission in connection with items (4) through (6). 4. Factual Background
Complainant is a multinational steel manufacturer, and claims to be the largest steel producer in the world, operating in more than 60 countries, including India (Respondent’s country). Complainant is the result of the 2006 acquisition by Mittal Steel of Arcelor. According to Complainant, the mark MITTAL (which is the surname of Complainant’s Chairman Lakshmi Mittal) was used in commerce for years prior to the acquisition of Arcelor.
Complainant’s predecessor registered the trademark MITTAL in India on November 8, 2004, in connection with products made of iron, steel, and so forth. The priority date for this mark is August 9, 2004. Complainant is also the owner of a European Community trademark for MITTAL, with an application date of August 9, 2004.
The Domain Name was registered on August 24, 2004. The Domain Name currently resolves to an inactive website. As of July 7, 2016, however, while this proceeding was pending, the Domain Name resolved to a gambling site in a Chinese language.
In a pair of June 23, 2016 emails to the Center, Respondent stated in relevant part: “We have all document regarding the Mittal Investment organization and we also have the proof that from last 12 years we are the owner of the mentioned [Domain Name]. … We hope you will understand the situation because nowadays in digital world domain name is the second identity of the organization and we want it’s ownership for future also.”
Respondent attached to the second email a pair of documents. The first appears to be a Certificate of Incorporation dated March 13, 1978 for Mittal Investments and Agencies Private Limited, sealed in Bombay. The second appears to be a computer printout of a web page from an India governmental website showing that Mittal Investment and Agencies Private Limited is an active corporation. Four directors of this company are indicated. None of the named directors is Mr. Sachin Patil, Respondent’s Chief Operating Officer (“COO”). There is nothing on either of these documents referring to either the Respondent company or Mr. Patil. 5. Parties’ Contentions A. Complainant
Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions with great specificity (see 6.B below), and has not disputed any of the allegations made by Complainant either in the Complaint or in the submission responding to Procedural Order No. 1. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has rights in the registered trademark MITTAL. The Domain Name incorporates this distinctive mark and adds the generic word “investment”. The Panel concludes that the Domain Name is confusingly similar to the MITTAL mark. The word “investment” could reasonably be understood as being related to Complainant, a major international corporation which, in addition to its core steel production operation, doubtless makes or considers investments in other ventures or securities.
The Panel concludes that Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted above, in its June 23, 2016 emails to the Center, Respondent appeared to suggest some form of relationship with a “Mittal Investment organization” and attached two documents to the emails. Because, however, neither the purported Certificate of Incorporation nor the government website describing Mittal Investment and Agencies Private Limited contained any reference to Respondent or its COO, Mr. Patil, the Panel gave Respondent an opportunity, through Procedural Order No. 1, to establish the purported link between Respondent and this “Mittal Investment organization.” Respondent made no response to Procedural Order No. 1, which leads the Panel to the inference that Respondent and its COO have no relationship with Mittal Investment and Agencies Private Limited.
Respondent has not otherwise attempted to explain why it registered the Domain Name. Other than the Domain Name apparently resolving to a Chinese gambling website on (at least) July 7, 2016, Respondent appears to have made no use of the Domain Name in the 12 years since Respondent registered it.
The Panel concludes that Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
In a recent case involving this Complainant and a domain name similar to the one at issue here, Arcelormittal S.A. v. Ram Mittal,WIPO Case No. D2016-0449, the panel transferred to Complainant. In its decision, the panel observed: “The Panel agrees that the Complainant is one of the world’s best-known steel manufacturers. Hence it is unlikely that the Respondent would not have been aware of the Complainant and its trademark when registering the disputed domain name.”
This Panel here reaches the same conclusion, based on the record here and the balance of probabilities. Complainant is a major international steel producer with extensive operations in India, Respondent’s country. Moreover, Respondent has never come forward to assert that it was ignorant of Complainant and the MITTAL mark when it registered the Domain Name. If Respondent’s motives had been innocent, the obvious reaction by Respondent would have been to explain itself.
Although it appears that Respondent made no use of the Domain Name for periods of time, there is also record evidence that Respondent linked the Domain Name to a gambling website for a time. A gambling site is a commercial enterprise, and it is reasonable to infer that Respondent linked the Domain Name to the gambling site either to derive per-click revenue or to attract an offer to purchase the Domain Name. The Panel concludes, on a balance of probabilities, that Respondent registered and used the Domain Name in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv).
The Panel concludes that Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: July 26, 2016
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