Complainant is ArcelorMittal (SA) of Luxembourg, represented by Nameshield, France.
Respondent is Robert Fowler of Alpharetta, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2018, 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 September 14, 2018, 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 September 14, 2018.
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 September 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 9, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 25, 2018. 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
According to the Complaint, Complainant is the largest steel producing company in the world and the market leader in steel for use in automotive, construction, household appliances and packaging. Complainant operates in over 60 countries.
Complainant owns International Trademark ARCELORMITTAL, Reg. No. 947686, registered on August 3, 2007, covering products and services in International Classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42.
Complainant owns numerous domain names, including , registered and used since January 27, 2006, and , registered on July 27, 2017.
The disputed domain name was registered on July 26, 2017.
The disputed domain name previously resolved to a website indicating that the disputed domain name had been suspended. Currently, the disputed domain name does not resolve to any active website. The browser returns a message stating, “Hmm. We are having problems finding this site. We cannot connect to the server at www..” 5. Parties’ Contentions A. Complainant
Complainant states that the disputed domain name is confusingly similar to its trademark. The addition of the letters “SA” (which refers to the company type “Société Anonyme”) is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark ARCELORMITTAL. Therefore, it does not change the overall impression of the designation as being connected to Complainant’s trademark ARCELORMITTAL. It does not prevent the likelihood of confusion between the disputed domain name and Complainant, its trademarks and domain names associated. On the contrary, the term “SA” increases the confusion because this term refers to Complainant’s legal form, as “SA” is the common abbreviation of “Société Anonyme”. The addition of the country code Top-Level Domain (“ccTLD”) “.co” is not sufficient to escape the finding that the disputed domain name is confusingly similar to Complainant s mark ARCELORMITTAL.
Complainant contends that Respondent is not commonly known by the disputed domain name, and has not acquired any rights on this term. Respondent is not affiliated with nor authorized by Complainant in any way. Complainant does not carry out any activity for, nor has any business with Respondent. Complainant did not grant any license or authorization to Respondent to make any use of the trademark, or apply for registration of the disputed domain name.
Furthermore, the disputed domain name points to a parking page displaying the message: “This domain has expired and is now suspended. If you would like to restore it please contact the registrar used to register your domain.” See Annex 6 to the Complaint. Therefore, Complainant contends that Respondent did not make any use of disputed domain name since its registration, which confirms that Respondent has no demonstrable plan to use the disputed domain name. This demonstrates a lack of legitimate interests in respect of the disputed domain name.
The disputed domain namewas registered and is being used in bad faith. Given the distinctiveness of Complainant’s trademark and reputation, it is reasonable to infer that Respondent has registered the disputed domain name with full knowledge of Complainant’s trademark.
In light of the abovementioned use of the disputed domain name, Complainant contends that Respondent has failed to use the disputed domain name and has not taken any active steps to regain the control over the disputed domain name by contacting the registrar. Therefore, Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting a printout of its registration for the ARCELORMITTAL International Trademark, Complainant has shown to the satisfaction of the Panel that it has rights in this mark for purposes of Policy, paragraph 4(a)(i). See section 4 above.
In the disputed domain name, Complainant’s mark ARCELORMITTAL is incorporated in its entirety, with the addition of “SA”, the acronym for “société anonyme”, the French term for the type of corporation used by Complainant, and the ccTLD “.co”. It is well established that such kind of additions generally would not prevent a finding of confusing similarity between a domain name and the mark it incorporates. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. B. Rights or Legitimate Interests
The Panel notes that according to the relevant WhoIs data, Respondent’s name is “Robert Fowler”. Absent any contrary evidence, Respondent does not appear to be known – commonly or otherwise – by the disputed domain name. Therefore, Policy, paragraph 4(c)(ii) is inapplicable.
In addition, nothing indicates that Respondent was authorized or licensed by Complainant to use the ARCELORMITTAL trademark, or to apply for the registration of the disputed domain name in any way. Further, as contended by Complainant, there is no evidence of any past or present use of the disputed domain name in a website or otherwise. In fact, Complainant has shown that at the time of submitting the Complaint, the disputed domain name pointed to a parking page displaying the message, “This domain has expired and is now suspended. If you would like to restore it please contact the registrar used to register your domain.” See Annex 6 to the Complaint.
The Panel also notes that at the time of rendering this decision, the disputed domain name did not resolve to any active website. Instead, the Panel’s browser returned a message stating, “Hmm. We are having problems finding this site. We cannot connect to the server at www..” This lack of any active use of the disputed domain name also prevents the application of Policy, paragraphs 4(c)(i) (bona fide use) or 4(c)(iii) (fair or legitimate noncommercial use, without intent for commercial gain to misleadingly divert consumers).
In sum, Complainant succeeded in making a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Since Respondent failed to provide any argument or evidence whatsoever in its own favor, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that Complainant’s International Registration for the ARCELORMITTAL mark predates the registration of the disputed domain name by a decade. See section 4 above. The Panel also notes that prior panels have recognized that the ARCELORMITTAL mark is well known. See, inter alia, Arcelormittal v. PrivacyP / Mr. Singh (tajgroup@), Taj Pharmaceuticals Ltd., Taj Group of Companies,WIPO Case No. D2010-0899; Arcelormittal S.A. v. Div Ko,WIPO Case No. D2016-0930; ArcelorMittal (SA) v. BMW.XX,WIPO Case No. D2017-2321. In addition, the “SA” term, added in the disputed domain name, suggests that Respondent not only had Complainant’s mark in mind, but also Complainant itself. In view of these facts, the Panel concludes that Respondent knew of, and targeted Complainant and its mark at the time of registering the disputed domain name.
As seen above, the disputed domain name does not appear to ever have been used in any active way. This does not prevent the Panel to find that the disputed domain name is being used in bad faith, in application of the doctrine of “passive holding” as stated in Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present case, the Panel considers that the following relevant circumstances are present:
a) Complainant’s mark is well known and enjoys considerable reputation;
b) The disputed domain name, in adding the term “SA” refers to Complainant, without suggesting that Respondent intends to use the disputed domain name for any bona fide purpose;
c) Respondent failed to respond to the Complaint, and has not provided any element in his own favor in this proceeding.
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: November 7, 2018
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