The Complainant is ArcelorMittal (SA) of Luxembourg, Luxembourg, represented by Nameshield, France.
The Respondent is Tamera Hendricks of Hobart, 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 October 17, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 the Complainant on October 29, 2018 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 October 29, 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 the Respondent of the Complaint, and the proceedings commenced on October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on November 29, 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
The Complainant is one of the largest steel producing companies in the world and is a market leader in steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries.
The Complainant owns many ARCELORMITTAL trademarks worldwide among including but not limited in USA which:
- International Registration ARCELORMITTAL (word) No. 954302, registered on August 3, 2007;
- International Registration ARCELORMITTAL No. 947686, registered on August 3,, 2007;
- International Registration logo(device) No. 947687, registered on August 3, 2007;
- International Registration ARCELOR (word) No. 778212, registered on February 25, 2002;
The Complainant also owns and operates various domain names which incorporate the ARCELORMITTAL trademark, such as registered and used since January 27, 2006.
The disputed domain name was registered by the Respondent on October 10, 2017.
The Panel visited the disputed domain name on December 7, 2018 and determined that the disputed domain name is currently unavailable, in other words the disputed domain name does not resolve to any active webpage, it is a parking page. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its ARCELORMITTAL trademark. The Complainant contends that the addition of the letter “R” is not sufficient to escape the finding that the domain name is confusingly similar to the trademark ARCELORMITTAL. The Complainant also argues that the addition of the Country Code Top Level Domains (“ccTLD”) “.CO” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the international trademark ARCELORMITTAL
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant and the Respondent. Moreover, the Complainant also argues that the disputed domain name is a typosquatted version of the ARCELORMITTAL. Typosquatting is the practice of registering a domain name to take advantage of Internet users’ typographical errors and can be evidence that a respondent lacks rights and legitimate interests in the domain name.
According to the Complainant, the disputed domain name is also registered and used in bad faith. The incorporation of the Complainant’s distinctive and well-known trademark ARCELORMITTAL in combination with the misspelling of this trademark could only be deemed as an act of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint's contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark ARCELORMITTAL as evidenced in the annexes to the Complaint. The Complainant has registered the trademark ARCELORMITTAL in several classes in different countries. The trademarks were registered long before the registration of the disputed domain name.
Additionally, there is a consensus view among UDRP panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. See section 1.9 of the WIPO Overview 3.0. In this, case, the disputed domain name consists of the ARCELORMITTAL trademark with the additional letter “R”. The addition of letter “R” does not operate to prevent a finding of confusing similarity between the Complainant’s trademark as the disputed domain name is only one erroneous keystroke away from the Complainant’s trademark, it is plain that the disputed domain name is intended to divert users in search of Complainant’s trademark. See, e.g., PartyGaming Plc., PartyGaming IA Limited v. Harry Thomas,WIPO Case No. D2008-1275.
Comparing the ARCELORMITTAL trademark to the disputed domain name, it is evident that the latter, , consists solely of the ARCELORMITTAL trademark, followed by the country code of Columbia, i.e. “.co”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank,WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often-impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's trademark ARCELORMITTAL in a confusingly similar way within the disputed domain name.
The Respondent did not provide any evidence to rebut the Complainant’s assertion that it does not own any registration concerning the trademark ARCELORMITTAL and has not been neither licensed nor authorized to use the trademark by the Complainant. There is no evidence that the Respondent has been known by the disputed domain name or that the Respondent’s website is a legitimate noncommercial or fair use.
Additionally, in light of the fact that the word "Arcelormittal" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
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, “the website is unavailable and has not been resolved”. 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 the circumstances the Respondent has not produced any evidence of its rights or legitimate interests in the disputed domain name and the Complainant is entitled to succeed on the second element of the test in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use; however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case. Based on the circumstances, in the Panel's view, it is reasonable to infer that when the Respondent registered the disputed domain name, it purposefully chose the disputed domain name incorporating the trademarks of the Complainant and registered them in order to take advantage of the strength of the trademarks. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge of the Complainant's trademarks may be considered an indication of bad faith. See, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
The Panel finds that the Respondent knew about the Complainant’s trademark when he registered the disputed domain name because he registered the disputed domain name over many years after the Complainant registered its trademark. 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; ArcelorMittal (SA) v. Robert Fowler,WIPO Case No. DCO2018-0028.
Further, the Panel notes that the disputed domain name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use” (See WIPO Overview 3.0, section 3.3).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark ARCELORMITTAL and incorporated it in the disputed domain name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by “typosquatting” with the intention to create a likelihood of confusion with the Complainant’s mark. (See also ArcelorMittal SA v. Contact Privacy Inc. Customer 0140765615 / Elena Blinova, Galina Ehlmoxsen,WIPO Case No. D2015-1447; ArcelorMittal SA v. Tina Campbell,WIPO Case No. DCO2018-0005).
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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.
Gökhan Gökçe
Sole Panelist
Date: December 8, 2018
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