Complainants are ArcelorMittal Brasil S.A. of Belo Horizonte, Brazil (“Complainant1”) and Belgo Bekaert Arames Ltda. of Contagem, Brazil (“Complainant2”), represented by Dannemann Siemsen, Brazil.
Respondent is Luis Felipez of Madrid, Spain. 2. The Domain Name and Registrar
The disputed domain name is which is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. On January 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2019, 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 Complainant on January 10, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 14, 2019. 1
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 Respondent of the Complaint, and the proceedings commenced on January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 6, 2019.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on February 17, 2019. This Panel finds that it was properly constituted. This 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
Complainant1 is the Brazilian branch of the multinational company ArcelorMittal S.A. and it has rights, among others, over the BELGO trademark for which it holds registration No. P00088943 in class 6, registered on May 26, 2003; the BELGO 60 trademark for which it holds registration No. P00220482 in class 6, registered on January 23, 2015; and the BELGO-PRONTO trademark for which it holds registration No. P00222384 in class 6, registered on February 11, 2015, all with the National Institute of Defense of Competition and Protection of Industrial Property of Peru.
Complainant2 operates in wire solutions and it has rights, among others, over the BELGO CERCAS trademark for which it holds registration No. 828.351.120 in class 6, registered on April 15, 2008; and the BELGO and design trademark for which it holds registration No. 901.380.660 in class 6, registered on April 12, 2011, all with the National Institute of Industrial Property of Brazil.
The disputed domain name was registered on February 13, 2017. At the time the Complaint was filed, the website associated to the disputed domain name showed, among others, “El mayor productor mundial de acero, en el Peru”, “ArcelorMittal tiene presencia en mas de 60 paises en los 5 continentes”, “Belgo, desde Septiembre del 2008, brinda soluciones en acero para la construcción civil, trabajando junto a las más grandes constructoras en el Perú. Somos parte del grupo Belgo y junto a ArcelorMittal, llevamos soluciones garantizadas a Bolivia, Colombia y Perú”, “BELGO PERU SAC, Empresa peruana que se dedica a la Comercialización, y el Servicio de Corte y Doblado de Fierro para el Mercado de la Construcción Civil”, “Nuestras soluciones”, “BELGO 60”, “BELGO PRONTO”, “Copyright © Belgo 2017”. 5. Parties’ Contentions A. Complainant
Complainants’ assertions may be summarized as follows.
Complainant1 is the Brazilian branch of the world’s largest steel producer, the multinational company ArcelorMittal S.A., which is located in 61 countries and has an annual crude steel production of around 100 million tons. Complainant1 is one of the largest Brazilian companies, responsible for the operation of all steel plants of the group in Brazil, with twenty units all over the country, being the sixth largest Brazilian exporter in 2017.
In the 1990’s, ArcelorMittal S.A. and the wire manufacturer N.V. Bekaert decided to form a joint venture to constitute the world’s largest wire solution company, and as result thereof Complainant2 was founded. In Brazil, Complainant2 has eight units and two logistic centers spread across three states.
Complainants are the owners of several registrations for the trademark BELGO and variations thereof, including in Peru and Brazil. The word “belgo” has no meaning in Portuguese, Spanish, or English, and as such it is a fanciful mark which deserves a high scope of protection. When the term “belgo” is searched online, the main results are related to Complainants and their activities, which prove that the word is ostensibly used among consumers in relation to them.
The disputed domain name is confusingly similar to Complainants’ trademark BELGO. The disputed domain name is formed by the words “fierro” and “belgo”. Fierro is the Spanish word for iron and is very similar to ferro, its Portuguese translation. Fierro is a descriptive term that cannot be trademark protected and gives no distinctiveness to “fierrobelgo”.
Respondent has no rights or legitimate interests in respect to the disputed domain name.
“Belgo” is a fanciful term that, from a linguistic perspective, has no relation with wire and steel services. Complainants have been using such term as trademark for years, which term has been registered as trademark since the beginning of the 2000’s. Due to Complainant2’s renown in the Brazilian market, BELGO is inevitably associated to it and its activities.
The user and the holder of the disputed domain name are not known as “belgo”, nor have been authorized to register BELGO as a domain name.
Complainants did not find any information regarding Belgo Peru SAC, the Peruvian company that is using the disputed domain name and supposedly provides steel services in Peru since 2008. Upon consulting the Peruvian official institutions, including the Tax Office, Complainants verified that there is no company enrolled with the name Belgo Peru SAC in that country. If Belgo Peru SAC indeed existed, supposedly incorporated in 2008, it entered in the market when Complainants were already developing their activities under the BELGO trademark (Complainant2 was founded in the 1990’s). Complainants have verified that Respondent and Belgo Peru SAC are not the owner of any trademark registration or application at the Peruvian Patent and Trademark Office.
Respondent and the real user of the disputed domain name lack legitimacy to use the term “belgo” in connection with the services provided. They have been using the disputed domain name to create an association with Complainants, taking a free ride on the goodwill developed over Complainants’ trademark, which does not constitute a legitimate use of the disputed domain name. Their attempt to create a fraudulent connection with Complainants is such that Belgo Peru SAC informs they are a branch of ArcelorMittal S.A. in Peru. However, ArcelorMittal S.A. has no branches in Peru, but only distributors who had never become aware of a company called Belgo Peru SAC in the region.
The use of BELGO as a domain name will inevitably mislead consumers to believe that the webpage associated to the disputed domain name is one of Complainants’ official websites. The company that uses the disputed domain name supposedly provides steel and iron services, which are also offered by Complainants. Consumers will certainly assume that Belgo Peru SAC is the branch of Complainant2 in Peru, which is not true.
The disputed domain name has been registered and is being used in bad faith. All the above scenario proves that the use and registration of the disputed domain name was not a random choice. It is evident that the use of Complainants’ trademark as non-authorized domain name exceeds any reasonable use and constitutes trademark infringement and unfair competition. The user of the disputed domain name is having a clear fraudulent advantage in relation to Complainants.
Due to the notable renown of BELGO and the fact that it is a fanciful term, with no linguistic relation with steel and iron services, it is extremely unlikely that someone in good faith would register the disputed domain name. Respondent had knowledge of BELGO and obtained the registration of the disputed domain name in bad faith. Respondent was definitely aware of the use of BELGO by Complainants.
The website associated to the disputed domain name shows that Belgo Peru SAC is the branch of ArcelorMittal S.A. in Peru, that it is part of the largest steel group in the world, which is present in more than sixty countries and in five continents. The user of the disputed domain name not only knows Complainants, but also claims to be part of their group, which is not true. Belgo Peru SAC has been using the disputed domain name to offer products/services overlapping those of Complainants and has been creating an association with the group ArcelorMittal S.A.
The disputed domain name is harming Complainants’ distributors in Peru. The disputed domain name diverts potential consumers towards Belgo Peru SAC. The user of the disputed domain name is supposedly engaged in the same field of activity as Complainants, while the word “belgo” is inevitably associated to Complainants and their activities.
All that scenario demonstrates the fraudulent intention of Respondent to mislead consumers to believe that Belgo Peru SAC has economic relations with Complainants, taking advantage of the well-known trademark BELGO and the disputed domain name.
Respondent has already figured in a similar dispute (Cemex, S.A.B. de C.V. v. WhoIsGuard Inc / Luis Felipez,WIPO Case No. D2018-1106) which reveals that Respondent is engaged in reproducing famous marks for the creation of domain names, in a clear attempt to cause confusion among Internet users. The conduct of registering third parties’ well-known marks can be considered, per se, as evidence of bad faith. In view of the strong appeal of Complainants’ trademark in the wire and steel market, it is not difficult to conclude that Respondent registered the disputed domain name with the intention to profit from it.
Complainants request that the disputed domain name be transferred to Complainant1. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards having multiple complainants filing a single complaint, although the Policy uses the term “complainant” throughout, it does not preclude the filing of a single complaint by several persons. This Panel considers that it is appropriate to have both Complainant1 and Complainant2 as Complainants in this procedure since both belong to the same corporate group, they hold registrations for the BELGO and the BELGO and design trademarks (and variations thereof) in several jurisdictions and have shown a common grievance against Respondent (see The Dow Chemical Company and E. I. du Pont de Nemours and Company v. Mario Rojas Serra,WIPO Case No. D2016-0595; Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo,WIPO Case No. D2013-0962; and section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The lack of response from Respondent does not automatically result in a favorable decision for Complainants (see Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465). The burden for Complainants, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) that 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. A. Identical or Confusingly Similar
It is undisputed that Complainants have rights over the trademarks referred to in section 4 above.
Since the addition of a generic Top-Level Domain (“gTLD”) suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark. Further, it is also well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative or device elements of a mark (see Park Place Entertainment Corporation v. Mike Gorman,WIPO Case No. D2000-0699; and Espire Infolabs Pvt. Ltd. v. TW Telecom,WIPO Case No. D2010-1092).
The disputed domain name entirely incorporates BELGO, albeit with the prefix “fierro”. It is clear to this Panel that the addition of the term “fierro” in the disputed domain name does not avoid a finding of confusing similarity with the BELGO and the BELGO and design trademarks of Complainants.
Thus this Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainants have alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainants contend that they have no relationship with Respondent, that have not authorized Respondent to use the BELGO trademark, and that Respondent is not commonly known by the term “belgo”.
Complainants assert that the website associated to the disputed domain name creates a false association with Complainants’ parent company as if forming part of the same group as Complainants. Complainants provided a screenshot of the website associated to the disputed domain name (see section 4 above), which on its face supports Complainants’ assertions. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
This Panel considers that Complainants have established prima facie that Respondent has no rights or legitimate interests in the disputed domain name. 2 In the case file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainants contend that Respondent has registered and used the disputed domain name in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainants’ registration and use of the BELGO trademark preceded the creation of the disputed domain name, and the content of the website associated to the disputed domain name (which makes specific reference to BELGO products and to Complainants’ parent company, and purports to be operated by an entity affiliated to the ArcelorMittal group), this Panel is of the view that Respondent should have been aware of the existence of the BELGO trademark at the time it obtained the registration of the disputed domain name.
Further, the fact that Respondent has hidden its identity and contact information through a privacy service has been indicative of bad faith under several UDRP decisions (see section 3.6 of the WIPO Overview 3.0).
In sum, the overall evidence in the file shows that Respondent deliberately targeted Complainants’ BELGO trademark at the time it obtained the disputed domain name, with the intention to benefit from it and to take an unfair commercial advantage, which denotes bad faith.
In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.
In light of the above, this Panel finds that Complainants have satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to ArcelorMittal Brasil, S.A.
Gerardo Saavedra
Sole Panelist
Date: March 3, 2019
1 The original Complaint was filed against the Registrar since the registrant of record in the corresponding WhoIs report appeared as WhoisGuard Protected. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar.
2 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact.” See also section 2.1 of the WIPO Overview 3.0.
Full & Egal Universal Law Academy