Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
Respondent is Robert Brouwers of St-Georges-sur-Meuse, Belgium. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2016. On December 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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, noting that the language of the Registration Agreement was French.
On December 8, 2016, the Center sent a communication to the Parties, inviting Complainant to either submit satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English, or to submit the Complaint translated into French, or to submit a request for English to be the language of the administrative proceedings. Respondent was also invited to submit comments. On December 8, 2016, Complainant submitted a request for English to be the language of the proceedings. Respondent did not comment on the language of the proceedings.
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, in English and in French, formally notified Respondent of the Complaint, and the proceedings commenced on December 15, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was January 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 6, 2017.
The Center appointed Bernhard F. Meyer as sole panelist in this matter on January 16, 2017. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center, to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted. 4. Language of the Proceeding
As to the language of the proceeding, paragraph 11(a) of the Rules provides the following: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
As mentioned above, the Registration Agreement of the disputed domain name in this case is in French, not English. But Complainant submitted its Complaint in English and requested that English be the language of the administrative proceeding when it was informed by the Center that the Registration Agreement was in French. In addition, there is a parallel and related UDRP case pending between the same Parties before the same Panelist regarding a very similar domain name (Arcelormittal S.A. v. Registration Private, Domains By Proxy, LLC / Robert Brouwers,WIPO Case No. D2016-2444), and in such other proceeding the Registration Agreement was in English. Accordingly, the other proceeding is carried out in that language. Because Respondent is not participating in this proceeding anyhow, and for convenience and consistency reasons, in order not to unduly delay the present proceeding the language in this proceeding shall therefore also be English as used by Complainant in the Complaint. 5. Factual Background
Complainant, ArcelorMittal S.A., is one of the world's largest steel producing companies and a significant producer of iron ore and coal. Seated in Luxembourg, it maintains and operates an extensive distribution network with operations around the globe.
Complainant is the owner of the trademark ARCELORMITTAL - international trademark registration number 947686, registered on August 3, 2007, and others. Moreover, Complainant is the holder of various domain names comprising its trademark.
The disputed domain name was registered on November 18, 2016. The disputed domain name appears to have been used in connection with a fraudulent email scheme. The disputed domain name does not resolve to any active website. 6. Parties' Contentions A. Complainant
Complainant claims, that despite the addition of the term "woiwer", the disputed domain name is confusingly similar to its trademark ARCELORMITTAL. According to Complainant, the term "woiwer" refers to a former subsidiary of Complainant, which until August 1, 2016 bore the name ArcelorMittal Woiwer S.A., and was specialized in the treatment of metal waste.
Furthermore, Complainant states that Respondent has no rights or legitimate interests in the disputed domain name.
Finally, Complainant claims that Respondent never actively operated a website under the disputed domain name. Instead, the disputed domain name was registered and used for the sole purpose of creating email addresses encompassing Complainant's trademark to misguide businesses. Respondent has registered and used the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, notwithstanding Respondent's default, Complainant must establish that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
- Respondent has no rights or legitimate interests with respect to the disputed domain name; and
The disputed domain name was registered and is being used in bad faith.
The Panel reviews the different elements in the following. A. Identical or Confusingly Similar
The disputed domain name consists of the element "woiwer", a hyphen "-", and Complainant's trademark ARCELORMITTAL.
It is the Panel's view that the mere addition of the two above features to Complainant's trademark are not sufficient to prevent the disputed domain name from being confusingly similar to that mark. Though the element "woiwer" may be considered to have some originality, the trademark remains the distinctive part of the disputed domain name when viewed as a whole. Moreover, Complainant's contention that it had a subsidiary with the name ArcelorMittal Woiwer S.A. until very recently remained uncontested. In line with previous UDRP decisions (see for instance Nikon Inc. and Nikon Corporation v. Technilab,WIPO Case No. D2000-1774), the Panel holds, that the disputed domain name is sufficiently similar to Complainant's trademark to justify moving on to the test of the remaining elements under the Policy.
The Panel holds that paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Complainant is required to make a prima facie case with regard to the lack of Respondent's rights or legitimate interests in the disputed domain name.
Complainant denies any connection whatsoever with Respondent and claims that Respondent intentionally registered a domain name with the sole purpose of disrupting Complainant's business. Moreover, Complainant asserts that the element "woiwer" refers to a former subsidiary of Complainant, ArcelorMittal Woiwer S.A.
Once Complainant sets forth a prima facie case, the burden of production of evidence of rights or legitimate interests in the disputed domain name shifts to Respondent. Respondent has made no attempt to demonstrate any of the defenses available under paragraph 4(c) of the Policy or to counter Complainant's assertions.
The Panel accepts that Complainant has established an unrebutted prima facie case and concludes that the requisites under paragraph 4(a)(ii) of the Policy are satisfied. C. Registered and Used in Bad Faith
Complainant submitted evidence that was forwarded to the Panel of substantial proof that Respondent registered and used the disputed domain name in bad faith. Specifically, seemingly fraudulent emails with false purchase orders attached have been sent to Complainant's suppliers from an email address that includes the disputed domain name. Respondent was using Complainant's logo and trade dress on the false purchase orders, apparently without authorization. Thus, the disputed domain name seems to have been registered only for the purpose of creating fraudulent email addresses. A website behind the disputed domain name was never actively operated.
In the attempt to contact the holder of said email address, Complainant received an email delivery error message, indicating that the respective email address did not exist. Likewise, the attempt to send written notice of the Complaint to Respondent by courier failed, due to an "incomplete/ wrong" address.
The above, in the Panel's view, is clear evidence of bad faith behavior of Respondent. It moreover indicates that Respondent was well aware of Complainant's rights with respect to its trademark when registering the disputed domain name. The addition of "woiwer" to the disputed domain name, in light of the foregoing, does not seem coincidental. Rather, it underlines the conclusion that Respondent's sole purpose seems to have been to mislead Internet users for commercial gain by misrepresenting itself via email as being associated with Complainant.
Such behavior constitutes bad faith registration and use of a domain name under paragraph 4(b)(iv) of the Policy. 8. 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 Complainant.
Bernhard Meyer
Sole Panelist
Date: January 30, 2017
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