ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION United States Steel Corporation v. Sula Camp Case No. D2023-3672 1. The Parties Complainant is United States Steel Corporation, United States of America ("United States"), internally represented. Respondent is Sula Camp, United States. 2. The Domain Names and Registrar The disputed domain names and (the "Disputed Domain Names") are registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 31, 2023. On September 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 1, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on September 4, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 12, 2023. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 4, 2023. page 2 The Center appointed Richard W. Page as the sole panelist in this matter on October 10, 2023. 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 Complainant operates a business based in the United States through a website "www.ussteel.com" and all employees of Complainant are assigned emails having the email domain at "[...]@uss.com". Employees of Complainant communicate with customers through their email. Such email may include sales and provide manufacturing services of steel sheet products. Complainant also regularly is referred to and known as United States Steel Corporation. Complainant owns USS trademarks with the following Registration Nos. 4,687,160 (registered February 17, 2015), for use with flat-rolled, flat-rolled coated, and tubular steel products, namely, steel coils, sheets, and pipes (in Class 006) and custom rolling and fabrication of steel products, namely, the rolling and fabrication of flat rolls, flat-rolled coated, and tubular steel products to order and specification of others (in Class 040) and 5,063,224 (registered October 18, 2016), for use with metal pipes (in Class 006) (the "Marks"). The registrations for the Marks are valid and subsisting and have incontestable status under the United States trademark law (15 US.C. :1065). Complainant also has various international registrations for the Marks. Complainant has offered good and services in connection with the Marks since at least as early as December 31, 1937, and now offers such goods and services under the Marks across a variety of industry sectors. Respondent registered the Disputed Domain Names on July 12 and 13, 2023, respectively. The Disputed Domain Names do not resolve to any active website, and have been used for sending fraudulent emails. 5. Parties' Contentions A. Complainant Complainant contends that the Marks qualify as being famous (as defined under Lanham Act :43(c), 15 U.S.C.A. :1125(c)) because the Marks are widely recognized by the general consuming public of the United States as a source identifier for the goods offered by Complainant in connection with the Marks. The Marks possess the requisite degree of recognition, especially in view of consideration of at least the following relevant factors: (a) the duration, extent, and geographic reach of advertising and publicity of the Marks, as advertised or publicized by Complainant and/or through licensees offering products in connection with the Marks; (b) the amount, volume, and geographic extent of sales of goods offered in connection with the Marks; and (c) the extent of actual recognition of the Marks by consumers in the market. Complainant further contends that it has prominently and extensively used, promoted, and advertised the Marks, its domain name and its email "[.]@uss.com" for many years. Due to extensive and longstanding use by Complainant, the Marks have acquired secondary meaning and serve as a means to identify Complainant as a source of various products and services. By virtue of these efforts, the Marks and Complainant's domain names have become well recognized by consumers as source identifiers for Complainant's goods and services which are associated with the Marks. Accordingly, the Marks and domain names are extremely valuable intellectual property assets of Complainant. page 3 Complainant further contends that the Disputed Domain Names are confusingly similar to the Marks in which Complainant has rights superior to those of Respondent, in that the Disputed Domain Names consist, in substantial part, of the Marks themselves. In addition, the Disputed Domain Names, include the addition of the descriptive term "corp-us" and the intentional misspelling of the term "corrp." Neither of these elements prevents a finding of confusing similarity. Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to paragraph 4(a)(ii) of the Policy. Complainant further asserts that Respondent registered the Disputed Domain Names on July 12 and 13, 2023, long after Complainant registered the Marks in the United States Patent and Trademark Office and long after Complainant began using the Marks. Complainant further asserts that Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use the Marks for any purpose. Complainant further asserts that no information of record in this case indicates that Respondent is known by the Disputed Domain Names or that Respondent was authorized to use the Marks. Complainant further asserts that the Disputed Domain Names do not resolve to an active website. Rather the Disputed Domain Names are being used to send fraudulent emails. Respondent registered the Disputed Domain Names, which include one with an intentional misspelling of the term "corrp" and the other one as "usscorp-us.com". Complainant further asserts that Respondent is typosquatting the Marks with the Disputed Domain Names, Respondent undoubtedly knew of the Marks, and knew that it had no rights or legitimated interests in the Disputed Domain Names. Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Names, because Respondent fails to use the Disputed Domain Names in connection with any bona fide offering of goods and services or for a legitimate noncommercial or fair use in that the resolving websites are inactive. Complainant alleges that Respondent has registered and used the Disputed Domain Names in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Complainant further alleges that the Disputed Domain Names are being improperly used by Respondent to redirect customer emails for commercial gain away from Complainant's legitimate emails. Respondent creates a likelihood of confusion with the Marks for profit. Complainant further alleges that Respondent profited from its use of the Disputed Domain Names. Respondent has attempted to trick Complainant's customers into updating remittance information for payment on goods supplied by Complainant. Respondent created emails using legitimate employee usernames tied with the disputed domain names. Respondent did in fact receive approximately USD 300,000 from the misdirected payments. Complainant further alleges that there is no plausible circumstance under which Respondent could legitimately register and use the Disputed Domain Names and that the Disputed Domain Names were registered and are being used by Respondent in bad faith. B. Respondent Respondent did not reply to Complainant's contentions. page 4 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules[,] and any rules and principles of law that it deems applicable." Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to the Marks in which Complainant has rights; and ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and iii) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the Marks. Complainant owns USS trademarks with the following Registration Nos. 4,687,160 (February 17, 2015) and 5,063,224 (October 18, 2016). See section 4. above. Respondent has not contested Complainant's contentions of ownership in the Marks. Therefore, the Panel finds that Complainant has enforceable rights in the Marks for purposes of this proceeding. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Section 1.11.1 of the WIPO Overview 3.0 instructs that generic Top-Level Domains ("gTLDs") such as (".com") may be disregarded for purposes of assessing confusing similarity. Complainant contends that the Disputed Domain Names are confusingly similar to the Marks in which Complainant has rights superior to those of Respondent, in that the Disputed Domain Names consist, in substantial part, of the Marks themselves. The Panel finds that the entirety of the Marks is included in the Disputed Domain Names and that the term "corp-us" and the typo "corrp" do not prevent a finding of confusing similarity. Furthermore, the ".com" gTLD is not to be considered. Therefore, the Panel finds that Complainant has shown the required elements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant asserts that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Names. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. page 5 Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Names: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Marks. Complainant further asserts that no information of record in this case indicates that Respondent is known by the Disputed Domain Names or that Respondent was authorized to use Complainant's Marks. Complainant further asserts that the Disputed Domain Names do not resolve to an active website. Rather the Disputed Domain Names are being used to send fraudulent emails. Respondent registered the Disputed Domain Names, which include one with an intentional misspelling of the term "corrp" and the other one as "usscorp-us.com". Complainant further asserts that Respondent is typosquatting the Marks with the Disputed Domain Names, Respondent undoubtedly knew of the Marks, and knew that it had no rights or legitimated interests in the Disputed Domain Names. Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Names, because Respondent fails to use the Disputed Domain Names in connection with any bona fide offering of goods and services or for a legitimate noncommercial or fair use in that the resolving websites are inactive. The Panel finds that Complainant has made a prima facie showing and that Respondent has not contested these assertions. Moreover, panels have categorically held that the use of a domain name for illegal activity (e.g., phishing) can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0. Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant alleges that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Names: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registrations to Complainant who is the owner of the Marks or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Names; or (ii) you [Respondent] have registered the Disputed Domain Names in order to prevent the owner of the Marks from reflecting the Marks in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or page 6 (iii) you [Respondent] have registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Names, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product on your website or location. The four criteria set forth in the Policy, paragraph 4(b) are nonexclusive. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. Complainant further alleges that the Disputed Domain Names are being improperly used by Respondent to create email addresses in which it redirects customer emails for commercial gain away from Complainant's legitimate emails. Respondent creates a likelihood of confusion with the Marks for profit. Complainant further alleges that Respondent profited from its use of the Disputed Domain Names. Respondent has attempted to trick Complainant's customers into updating remittance information for payment on goods supplied by Complainant. Respondent created emails using legitimate employee usernames tied with the domain names. Complainant claims that Respondent did in fact receive approximately USD 300,000 from the misdirected payments. The Panel finds that these allegations satisfy the requirement of paragraph 4(b)(iv) of the Policy and that Respondent has engaged in fraud against Complainant's customers through the registration and use of the Disputed Domain Names. The Panel additionally finds that Respondent knew or should have known of Complainant's rights (section 3.2.2 of the WIPO Overview 3.0), and that the use of the Disputed Domain Names for purposes, such as phishing, other than to host a website may constitute bad faith (section 3.4 of the WIPO Overview 3.0). Therefore, Complainant has satisfied the requirements of 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 Disputed Domain Names and be transferred to Complainant. /Richard W. Page/ Richard W. Page Sole Panelist Date: October 24, 2023
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