The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / Dofasco Arcelormittal of Charlottesville, Virginia, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 14, 2017 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 16, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on March 30, 2017. 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 a global company which specializes in the production of steel for use in automotive, construction, household packaging and other products. It has operations in over 60 countries.
The Complainant is the owner of international trade mark number 947686 for ARCELORMITTAL, registered on August 3, 2007. Together with its subsidiaries, it also owns a number of domain names which include the word “arcelormittal”. These include which was registered on March 4, 2010.
The disputed domain name was registered on January 20, 2017. The disputed domain name does not point to an active website. However, it has been used to send emails purporting to come from the Complainant which claim to be directed at prospective recruits for the Complainant’s business. One such candidate forwarded the Respondent’s email to the Complainant asking it to let him know “whether this mail is genuine or fake.” 5. Parties’ Contentions A. Complainant
In support of its contention that the disputed domain name is confusingly similar to its ARCELORMITTAL trade mark, details of which are set out above, the Complainant says that the addition to its trade mark of the word “dofasco” followed by a hyphen does not prevent the disputed domain name from being confusingly similar to its trade mark. In fact, because the Complainant has a subsidiary in Canada called Arcelormittal Dofasco, the combination of the Complainant’s trade mark with the word “dofasco”’ serves to accentuate the likelihood of confusion rather than to reduce it, not least because the Complainant uses a domain name in which the same words, albeit in a reversed order, are used. Finally the Complainant says that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the disputed domain name being connected with the Complainant’s trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It draws attention to the decision in Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, in which the panel said that a complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name and that, if a respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant says that the Respondent is not affiliated with it nor is it authorized by it to use the trade mark ARCELORMITTAL, nor does it have any business connection or association with the Respondent. It says that, whilst the disputed domain name has not pointed to an active website since its registration, fraudulent emails attaching a false job application and preliminary interview forms which include the Complainant’s logo have been sent from an email address associated with the disputed domain name. The Complainant says that the disputed domain name was only acquired for the purpose of creating email addresses which would be perceived, incorrectly, as connected with the Complainant. It says that, as discussed by the panel in Tetra Laval Holdings & Finance S.A. v. VistaPrint Technologies Ltd,WIPO Case No. D2014-1387, such activity is scamming and is not indicative of any legitimate interest by the Respondent in the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. It draws attention to the decisions of earlier UDRP panels which have held that the incorporation of a well-known trade mark into a domain name coupled with an inactive website may be evidence of bad faith registration and use, including Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it says that the use of the disputed domain name for the purpose of sending fraudulent emails, which is the only known use to which the disputed domain name has been put, is another indication that the disputed domain name was registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that its international trade mark number 947686 for ARCELORMITTAL registered on August 3, 2007 gives it rights in ARCELORMITTAL.
When considering whether the disputed domain name is confusingly similar to the Complainant’s trade mark, it is usually appropriate to disregard the gTLD suffix, “.com”. The addition to the trade mark of the word “dofasco” followed by a hyphen does not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s trade mark. The Complainant’s trade mark is clearly recognizable in the disputed domain name. Internet users who are aware of the Complainant’s subsidiary, Arcelormittal Dofasco, are likely to assume that the disputed domain name has some connection with that subsidiary, notwithstanding that the word order is reversed. Accordingly, the addition of “dofasco” to the Complainant’s trade mark may even increase the likelihood that at least some Internet users will associate the disputed domain name with the Complainant or its subsidiaries.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. This says that the consensus view of UDRP panelists is that, “whilst the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
There is no evidence that the Respondent has at any point sought to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainant’s evidence suggests strongly that the Respondent’s intention is to use the disputed domain name to impersonate the Complainant for illegitimate purposes. Nor is there any evidence that the Respondent has ever been commonly known by the disputed domain name. Finally, there is no evidence to suggest that the Respondent has ever made any legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel accepts that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of production shifts to the Respondent to demonstrate to the contrary. As the Respondent has not submitted any evidence in an attempt to rebut the Complainant’s assertions, it has not discharged this burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Complainant’s submissions in relation to bad faith registration and use of the disputed domain name by the Respondent are brief. However, on the basis of the facts and matters set out in its Complaint, the position is clear. The disputed domain name was registered on January 20, 2017. The Complaint was filed with the Center on February 13, 2017. In the short period between those dates, the only known use by the Respondent of the disputed domain name has been to utilize an email address associated with it in order to send emails to third parties purporting to be from the Complainant, evidently for illegitimate purposes. The Respondent has not attempted to challenge the Complainant’s assertions in this respect.
Paragraph 4(b) of the Policy sets out a number of circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy provides that using a domain name in an intentional attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a complainant’s trade mark as to the source or affiliation of that website or location shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that the facts of the present case fall within these circumstances in that the Respondent has used emails which are associated with the disputed domain name, in order to create a likelihood of confusion with the Complainant’s trade mark.
For these reasons the Panel finds that the disputed domain name was registered and 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.
Antony Gold
Sole Panelist
Date: April 13, 2017
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