The Complainant is Arcelormittal (SA) of Luxembourg, Luxembourg, represented by Nameshield, France.
The Respondent is Admin Contact, PrivateName Services Inc. of Vancouver, British Columbia, Canada / Juan Jose of Toluca, Estado de Mexico, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 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 the Complainant on January 28, 2019 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 January 29, 2019.
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 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2019. An informal email communication from the Respondent was received by the Center on January 29, 2019. No further Response was submitted. Accordingly, the Center notified the Parties that it would proceed to panel appointment on February 22, 2019.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on March 6, 2019. 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 Arcelormittal (SA) is one of the largest steel producing companies in the world and a market leader in steel for use in automotive, construction, household appliances and packaging with operations in over 60 countries and extensive distribution networks.
The Complainant is the owner of the international trademark No. 947.688 ARCELORMITTAL registered on August 3, 2007, in classes 06, 07, 09, 12, 19, 21, 39, 40, 41 and 42.
The Complainant has also registered the ARCELORMITTAL trademark as a domain name under several generic Top-Level Domains (“gTLDs”) including registered and used since January 27, 2006.
The Complainant operates in Mexico through its affiliate company Arcelor Mittal Mexico.
The disputed domain name was registered on January 17, 2019, which resolved to a website which displayed the Complainant’s trademark ARCELORMITTAL and contained information regarding steel. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark ARCELORMITTAL, that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name to the Complainant.
More specifically, the Complainant contends that the disputed domain name resolved to a website which looked like the official website of the Complainant. Indeed, the Complainant’s trademark is used in the website and the Respondent identifies itself as “Aceros Arceromittal” established at the address: Avenida Francisco J. Mugica No.1A Col. Centro C.P. 60950 Cd.Lazaro Cardenas, Michoacan, which is the official address of the Complainant’s division in Mexico. Thus, the owner of the disputed domain name obviously tries to pass itself off as an affiliate of the Complainant in Mexico for its commercial gain. B. Respondent
An informal email communication from the Respondent was received by the Center on January 29, 2019. No further Response was submitted. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established that it has rights in the trademark ARCELORMITTAL.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the trademark is recognizable within the domain name.
In this case, the disputed domain name contains the Complainant’s trademark ARCELORMITTAL in its entirety. In the Panel’s opinion, the addition of the word “acero”, which means “steel” in Spanish, does not prevent a finding of confusing similarity.
As set forth in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) “in cases where the domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of the WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark ARCELORMITTAL in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with appropriate allegations and evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never granted the Respondent with the right to make any use or register the trademark ARCELORMITTAL or to apply for registration of the disputed domain name.
Previous panels under the Policy have found that a lack of rights or legitimate interests may exist where, as here, “Complainant asserts that it has not authorized Respondent to use the mark”. Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA,WIPO Case No. D2008-0144.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interest in the disputed domain name . The name of the Respondent is “Juan Jose” which does not resemble the disputed domain name in any manner.
The Panel considers that the Respondent’s use of the disputed domain name cannot be considered a bona fide offering but rather an attempt to capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complaint also succeeds on the second prong. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark ARCELORMITTAL when it registered the disputed domain name on January 17, 2019.
In line with the decisions of other panelists, this Panel has considered in a previous UDRP proceeding that the Complainant’s trademark ARCELORMITTAL is a highly distinctive trademark (Arcelor Mittal (SA) v. Fardi Salas,WIPO Case No. D2019-0103).
The trademark ARCELORMITTAL is also widely known. In this connection, the panel in ArcelorMittal SA v. Tina Campbell,WIPO Case No. DCO2018-0005 said: “the trademark ARCELORMITTAL is so well-known internationally for metals and steel production that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.”
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0).
The disputed domain name resolved to a website which displayed the Complainant’s trademark and looked like its official website.
Clearly, the Respondent has registered the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy. 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.
Miguel B. O'Farrell
Sole Panelist
Date: March 15, 2019
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