The Complainant is ArcelorMittal, S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Rubén Gómez of Navojoa, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2018.
The Center appointed Alejandro Touriño as the sole panelist in this matter on October 12, 2018. 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 one of the largest steel producing companies in the world and is a market leader in steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries.
The Complainant holds several ARCELORMITTAL trademarks since 2007. Among others, the Complainant is owner of the following trademarks:
Trademark
Registration date
Registration number
Nice classification
ARCELORMITTAL
August 3, 2007
947686
06, 07, 09, 12, 19, 21, 39, 40, 41, 42
ARCELORMITTAL
June 4, 2009
1103534
6
ARCELORMITTAL
August 29, 2008
1057993
12
ARCELORMITTAL
June 4, 2009
1103535
40
The Complainant has also registered a number of domain names containing the trademark ARCELORMITTAL, including the domain name on January 27, 2006.
The disputed domain name was registered by the Respondent on August 21, 2018. The disputed domain name resolved to a website which reproduced the Complainant’s website in connection with its subsidiary in Mexico and its trademarks. Currently, the disputed domain name does not resolve to any active webpage. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark ARCELORMITTAL, since the Respondent has just added the geographical term “Mexico” and the hyphen after the registered trademark of the Complainant in the disputed domain name. The Complainant states, among other things, that the addition of the generic Top-Level Domain (“gTLD") “.com” does not change the overall impression of the designation as being connected to the registered trademark ARCELORMITTAL of the Complainant.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and it 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 license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademarks ARCELORMITTAL, or apply for registration of the disputed domain name by the Complainant.
The Complainant’s trademark ARCELORMITTAL is widely known. The Respondent has registered and used the disputed domain name with full knowledge of the Complainant’s trademark ARCELORMITTAL, and with the only purpose of disrupting the business of the Complainant and preventing the Complainant from reflecting its trademark in a corresponding gTLD domain name. Indeed, the Respondent does not associate the disputed domain name with a good faith offering of goods and services, as long as it resolves to a website which reproduces the Complainant’s website in connection with its subsidiary in Mexico. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with 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 there from as it considers appropriate. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has demonstrated that it holds trademark registrations for its ARCELORMITTAL trademark.
The disputed domain name reproduces entirely the Complainant’s ARCELORMITTAL trademark with the addition of three non-significant elements, the geographical indication “Mexico”, a hyphen and the gTLD suffix “.com”. The Panel does not consider that the addition of said elements in this context in any way distinguishes the disputed domain name from the Complainant’s ARCELORMITTAL trademark.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the ARCELORMITTAL trademark in which the Complainant has rights and therefore succeeds under the first element of the Policy.
In view of the grounds above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark ARCELORMITTAL in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has asserted prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not provide any evidence to rebut the Complainant’s assertion that it does not own any registration concerning the trademark ARCELORMITTAL and has not been neither licensed nor authorized to use the trademark by the Complainant. There is no evidence that the Respondent has been known by the disputed domain name or that the Respondent’s website is a legitimate noncommercial or fair use. The Complainant further showed that the Respondent operates a website which reproduces the Complainant’s website in connection with its subsidiary in Mexico.
In the case at hand, by not submitting a Response, the Respondent has not discussed the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Considering the abovementioned, the Panel is satisfied by the evidence that any offering of services through the disputed domain name cannot be bona fide in the terms of paragraph 4(c)(i) of the Policy because the corresponding website is made to recreate an unauthorized Internet presence mimicking the Complainant.
The Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to evidence that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.”
In the case at hand, the Panel is satisfied to assert that the registration and use of the disputed domain name by the Respondent is in bad faith since it has undoubtedly registered the disputed domain name with full knowledge of the Complainant’s trademark in order to prevent the Complainant from reflecting the mark in a corresponding domain name, also attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ARCELORMITTAL trademark. In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the ARCELORMITTAL trademark in mind as the latest had already been registered for several years, is not generic, and the Respondent uses the website under the disputed domain name to host a website which reproduces the Complainant’s website in connection with its subsidiary in Mexico.
In addition, in the present case, the Respondent has provided no evidence of any good faith registration or use of the disputed domain name. Thus, the Panel is prepared to infer bad faith registration and use from the preceding facts.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the third element of paragraph 4(a) of the Policy is also met. 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.
Alejandro Touriño
Sole Panelist
Date: October 28, 2018
Full & Egal Universal Law Academy