The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Daniel Mac?as-Barajas, Prime Domain Names, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 3, 2020, 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 sent an email communication to the Complainant on December 9, 2020, providing additional information regarding the registrant and contact information disclosed by the Registrar. 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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. The Respondent submitted an informal email on December 9, 2020. The Center acknowledged receipt of the communication sent by the Respondent on December 9, 2020. Accordingly, the Center notified the Commencement of Panel Appointment Process on December 31, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on January 11, 2021. 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 date of the Domain Name registration was confirmed by the Registrar to be September 26, 2020. The Complainant was formed in 2006 through the merger of Arcelor with Mittal Steel Technologies. It is currently one of the world’s leading steel and mining companies. The trademark ARCELORMITTAL serves as house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide. The Complainant provided evidence of multiple trademark registrations for the mark ARCELORMITTAL including, inter alia, United States Trademark Registration No. 3643643 (registered on June 23, 2009), that predates the date of the Domain Name registration for a variety of goods and services in the metal industry. The Complainant has provided evidence that the ARCELORMITTAL trademark has also had extensive coverage and use. The Complainant also provided evidence of a cease and desist letter that it sent to the Respondent, as well as copies of a chain of email correspondence between the Complainant and the Respondent that ensued thereafter. The Complainant also provided screenshots of the Respondent’s linked through website, that was raised in the correspondence. The Panel also conducted an independent search to determine that the Domain Name currently resolves to a GoDaddy webpage advertising the sale of the Domain Name. 5. Parties’Contentions A. Complainant The Complaint alleges that the Complainant, ArcelorMittal, was formed in 2006 through the merger of Arcelor with Mittal Steel Technologies. The Complainant is currently the worlds leading steel and mining company. The company is headquartered in Luxembourg, and is the largest steel producer, manufacturing steel in 18 countries around the world. In 2019, the Complainant produced over 89 million tons of crude steel globally. The Complainant employs over 191,000 employees globally, serving customers in 160 countries. In 2018, the Complainant was ranked the largest steelmaker in the world by The World Steel Association, with crude steel production of 96.4 million tons. “Arcelormittal” is not a dictionary term and does not have a generic meaning. The name refers to the two companies, namely Arcelor and Mittal Steel, who merged in 2006 to create the Complainant ArcelorMittal (Société Anonyme). The company name and trademark is, therefore, a direct reference to the company’s origins and history. Additionally, the Complainant has spent substantial time, effort and money in marketing and promoting its ARCELORMITTAL brand. The Complainant is the owner of the ARCELORMITTAL trademark. In creating the Domain Name, the Respondent has added the term “corporate” to the Complainant’s ARCELORMITTAL trademark, thereby making the Domain Name confusingly similar to the Complainant’s trademark and to the Complainant’s business, and this only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s trademark. The Respondent’s addition of hyphens in between “corporate”, “arcelor” and “mittal” does nothing to distinguish the Domain Name from the Complainant’s trademark. The Complaint contends that the Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization, or permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. In the present case, the pertinent WhoIs information identifies the Registrant as “Prime Domain Names”, which does not resemble the Domain Name in any manner. Further, in the Respondent’s emails to the Complainant’s representative, the Respondent appears to be using the name “International Camps Network”, which also does not resemble the Domain Name in any manner. The Respondent is currently using the Domain Name to direct Internet users to a website that resolves to GoDaddy’s “corporate-arcelor-mittal.com is for sale!” page. The Complainant argues that the Respondent may argue that the Domain Name was only listed for sale as a result of its dealings with the Complainant’s representative. The Domain Name is also being offered for sale at Afternic for USD 2,500, an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain, which serves as further evidence of the Respondent’s lack of rights and legitimate interests. According to the Respondent, the very high price was set to avoid other third parties from acquiring the Domain Name. The Complainant questions the Respondent’s intention, and argues that such strategy is in fact very common among fraudsters and cybersquatters – listing a domain name at a “Buy Now” price so that interested parties / buyers will immediately settle terms with the domain owner / seller in fear of the possibility that other third parties can snatch it. Moreover, prior to the Complainant’s representative contacting the Respondent, the Domain Name redirected to one of the Respondent’s websites found at “https://alt-www.com”. The Complainant argues that past Panels have determined that use of a disputed domain name to redirect Internet users to content unrelated to a complainant, even if the respondent does not derive commercial benefit from such use, does not automatically render the use of the disputed domain name legitimate. By registering the Domain Name that comprises the Complainant’s ARCELORMITTAL trademark in its entirety, with the mere addition of the term “corporate” and hyphens, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Additionally, the Domain Name is an almost exact match of the Complainant’s website at “www.corporate.arcelormittal.com”. In addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the Domain Name, the Complainant is the world’s largest steel producer, producing over 89 million tons of crude steel globally in 2019, which demonstrates the Complainant’s fame. Further, performing across the three leading search engines for “corporate arcelor mittal” returns multiple links referencing the Complainant and its business. Due to the fame of the Complainant’s trademark, the Respondent has intentionally misappropriated the Complainant’s trademark as a way of redirecting Internet users to its own website, in an attempt to trade on the goodwill associated with the Complainant’s trademark. The Complainant claims that it first tried to contact the Respondent on October 15, 2020, through a cease and desist letter sent by email, and requested voluntary transfer of the Domain Name. The Complainant alleges that the Respondent replied and indicated cooperation but, became increasingly difficult to deal with and kept changing the goal post even when an agreement was reached. The Respondent also seized the opportunity to request for an interview with the Complainant for a possible sponsorship to the camping industry or perhaps to its business in exchange for the Domain Name’s transfer. Such act further proves the Respondent’s intent in registering the Domain Name was in fact to profit in some fashion from or otherwise exploit the Complainant’s trademark. In addition to the Domain Name, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Domain Name. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark ARCELORMITTAL, in respect of steel and metal goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the term “corporate” to the term “ArcelorMittal” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent submitted a communication email by the Center on December 9, 2020. Rather than summarize the factual and legal contentions made by the Respondent, the Panel quotes the response in full [omitting the copy of the screen-shot that the Domain Name resolves to that was included by the Respondent as well as earlier provided by the Complainant]. “Hello, The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) That the Domain Name has been registered and used in bad faith. In addition, as explained by the Center in writing to the Respondent confirming receipt of the Respondent’s December 9 email, under Section 10(d) of the Rules: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” In this case, with regard to the response filed by the Respondent, the Panel finds that the response is admissible and relevant. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for ARCELORMITTAL. Further, the Panel finds that the Domain Name integrates the Complainant’s mark ARCELORMITTAL in its entirety with the addition of the descriptive element “corporate”, and that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the term “corporate” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”. Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted by other than a weak argument by the Respondent – such as it is – that it was “legal” and “available”, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith By registering the Domain Name that comprises the Complainant’s ARCELORMITTAL trademark in its entirety, with the mere addition of the term “corporate” and hyphens, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Additionally, the Panel agrees with the Complainant that the Domain Name is an almost exact match of the Complainant’s website at “www.corporate.arcelormittal.com”. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (Feb. 18, 2000). Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (Dec. 10, 2007). This finding is consistent with the Panel in ArcelorMittal S.A. v. Rubén Gómez,WIPO Case No. D2018-1976 (Oct. 28, 2018) (“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”). See also Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517 (Aug. 1, 2005) (“given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). Further the Panel finds that despite the Respondent’s protests, the Complainant provided persuasive evidence that the Respondent is currently offering to sell the Domain Name, which constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Domain Name for valuable consideration in excess of the Respondent’s out-of-pocket expenses. In addition, the Panel finds that the Respondent’s attempt to request an interview and obtain possible sponsorship from the Complainant in exchange for the transfer of the Domain Name proves the Respondent’s intent in registering the Domain Name was in fact to profit in some fashion from or otherwise exploit the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at 3.1.1 (Panels will find bad faith on the part of the respondent when “a respondent’s attempt to force the complainant into an unwanted business arrangement”). The Panel finds the Respondent’s attempt to obtain the sponsorship and even the conversation with the Complainant being triggered by the purchase of the Domain Name with the Complainant’s trademark to be evidence of that exploitative bad faith. A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with pararaph 4(b)(iv) of the Policy. See WIPO Overview 3.0 at 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports that Panel’s finding that the Respondent registered and is using the Domain Name in bad faith. The Panel also agrees that a pattern of abuse by the Respondent has been established, and thus supports the Panel’s finding that use and registration of this Domain Name is done in bad faith. To put this in the terms of the Respondent’s own language, the Panel quotes from the Respondent’s website: “We stand for the right to keep what we legally acquired and [p]lease make sure you understand.” In agreement with both those principles, the Panel finds that the Respondent is not entitled to keep this because the Domain Name was not in fact legally acquired. The Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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, the Panel orders that the Domain Name Ellen B Shankman
And thank you for your email.
Please note we have done everything to comply with the request from the compliant.
They approached us and we explained the nature of our project (and reason of our registration of such domain name).
We explained it is meant to expire in 10 months time.
We have been extremely clear with them that we are not bad faithed nor intend any economic reward.
They insisted in getting it transferred, and we agreed, but needed to wait until after the 60-day lock period.
Once the lock period was over, we set it up in Afternic, so they could get it transferred directly.
We never requested any money, but were expecting to get some basic questions answered.
They refused to answer them, and threatened to sue us.
The domain is still available (see screenshot below) for them (or anyone else) to take it.
The least that we are looking during these difficult times, is some dumb legal issues to deal with.
PLEASE NOTE: the buy now price is set at the amount THEY had offered to pay. - We never requested money, nor set any amount.
For your understanding and answer, thank you.” 6. Discussion and Findings
Sole Panelist
Date: January 25, 2021
Full & Egal Universal Law Academy