The Complainant is ArcelorMittal (SA), Luxembourg, represented by Nameshield, France.
The Respondent is Cuentas Ads, Pablo Ortega, Mexico.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2021, 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 August 23, 2021.
Upon request, from the Complainant, the proceedings were suspended on August 26, 2021 for purposes of settlement discussions concerning the disputed domain name. On September 29, 2021, also upon request by the Complainant, the proceedings were reinstituted.
In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2021. Aside from some informal communications, the Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on October 18, 2021.
The Center appointed Daniel Peña as the sole panelist in this matter on October 25, 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 BackgroundThe Complainant is one of the largest steel producing companies in the world and is one of the market leaders in steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries. It is one of the largest producers of steel in North and South America and Africa, a significant steel producer in the CIS region, and have a growing presence in Asia, including investments in China and India.
The Complainant holds sizeable captive supplies of raw materials and operates extensive distribution networks.
The Complainant is the owner of the international trademark ARCELORMITTAL n° 947686 registered on August 3, 2007.
The Complainant also owns an important domain names portfolio, including the same distinctive wording “ArcelorMittal”, such as the domain name
The disputed domain name
The Complainant contends that its trademark ARCELORMITTAL is highly distinctive and internationally well known.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark ARCELORMITTAL. In fact, the disputed domain name only varies from the Complainant’s trademark by the addition of a hyphen and the letters “mx” which identifies Mexico, the Respondent´s domicile.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not sponsored by or affiliated with the Complainant in any way. In addition, the Complainant has not given to the Respondent the permission to use its trademarks in any manner, including in domain names. It has not licensed, authorized or permitted the Respondent to register domain names incorporating its trademark. The Respondent is not commonly known by the disputed domain name. Furthermore, according to the Complainant, the Respondent has created email addresses in order to send fraudulent emails to the Complainant’s clients, pretending to be the Complainant’s employees to redirects payments intended for the Complainant to a different account, presumably owned by the Respondent. By sending emails from the disputed domain name, the Respondent was attempting to impersonate the Complainant as part of a fraudulent email phishing scheme.
Finally, the Complainant contends that the disputed domain name was registered and was being used in bad faith. According to the Complainant, by registering a domain name, which differs from the Complainant’s well known trademark by only the suffix “mx” and a hyphen, the Respondent had knowledge of and familiarity with the Complainant’s brand and business.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAs per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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 SimilarParagraph 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 provided evidence of its rights in the trademark ARCELORMITTAL on the basis of its international trademark registration. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).
It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a registered trademark. Numerous UDRP panels have recognised that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the case Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.
The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of a hyphen and the suffix “mx” which identifies Mexico in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademarks. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent the finding of confusing similarity either. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” Similarly, the gTLD “.com” does not generally preclude a finding of confusing similarity between the disputed domain name and the complainant’s trademarks in accordance with the well-established practice of previous UDRP panels (see also section 1.11 of WIPO Overview 3.0).
Therefore, the Panel holds that the addition of the term “mx” which usually identifies Mexico and a hyphen, the Complainant’s trademark ARCELORMITTAL and the applicable gTLD “.com” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s ARCELORMITTAL trademark, which remains clearly recognizable in the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting a formal Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Furthermore, the unrebutted claim of the Complainant that the disputed domain name is not currently being used in any manner, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its ARCELORMITTAL trademark. On the contrary, the Panel finds that it is likely that the Respondent was aware of the Complainant and its rights and reputation in the ARCELORMITTAL trademark at the time the disputed domain name was registered. Bad faith can be presumed based on the widely evidenced recognition of the Complainant’s trademarks, such that the Respondent was aware or should have been aware of the Complainant’s well-known trademarks and claims of rights thereto.
The disputed domain name does not resolve to any active website. Regarding the use in bad faith of the disputed domain names, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use.
The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Daniel Peña
Sole Panelist
Date: November 5, 2021