Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.
Respondent is Privacy Protect, LLC (PrivacyP), United States of America / Larisa I Lebedeva, Private Person, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2019. On July 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 11, 2019, 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 the same day.
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 July 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2019. On August 16, 2019, the Center transmitted by post the Written Notice of which the delivery to Respondent was failed at first attempt, in order to ensure proper notification of the Complaint. Accordingly, the due date for Respondent to submit a response was extended to August 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on September 9, 2019. 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
As per Complaint, Complainant is the largest steel producing company in the world and is the market leader in steel for use in automotive, construction, household appliances and packaging, with operations in more than 60 countries. It holds sizeable captive supplies of raw materials and operates extensive distribution networks.
Complainant is the owner of several trademark registrations consisting of or containing the tem “mittal”. These include:
- European trademark registration No. 4233301 MITTAL STEEL (word mark), filed on January 7, 2005 and registered on March 27, 2006, for goods and services in international classes 6 and 40, and
- International trademark registration No. 1198046 MITTAL (word mark), registered on December 5, 2013 for goods and services in international classes 6 and 40.
Complainant is also the owner of the domain name , registered on January 3, 2003 and the domain name registered on May 18, 2009.
The Domain Name was registered on June 18, 2019 and at the time of filing of the Complaint resolved to a blank page. It currently redirects to a website displaying pictures related to Complainant’s activities and in which Respondent attempts to pass off as Complainant’s affiliate “Mittal Steel (UK) Private Limited” (the Website). 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the MITTAL STEEL mark.
The Panel finds that the Domain Name is confusingly similar with the MITTAL STEEL trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
The hyphen “-” which is added in the Domain Name, does not avoid a finding of confusing similarity (Arcelormittal v. Mesotek Software Solutions Pvt. Ltd.,WIPO Case No. D2010-2049; Philip Morris Products S.A. v. Yang Jiang Nan,WIPO Case No. D2018-1869; Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.co” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Credit Agricole S.A. v. Yang Xiao Yuan,WIPO Case No. D2018-1476; Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the MITTAL STEEL trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name 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 Domain Name, 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 Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name is used for a website that resolved at the time of filing of the Complaint to a blank page and currently resolves to a Website that tries to pass off as the website of Complainant’s affiliate Mittal Steel (UK) Private Limited.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s MITTAL STEEL trademark is well known for steel(Arcelormittal v. Mesotek Software Solutions Pvt. Ltd.,WIPO Case No. D2010-2049). Because the MITTAL STEEL mark had been widely used and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226). Furthermore MITTAL STEEL is a fictitious combination of words and therefore highly distinctive.
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517; Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462; Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338).
Furthermore, the Domain Name incorporates in whole Complainant’s mark plus a hyphen and the letters “co” and it is practically identical to an existing domain name of Complainant, namely registered on May 18, 2009.
Lastly, the content of the Website currently operating under the Domain Name gives the false impression that the Website emanates from Complainant’s affiliate Mittal Steel (UK) Private Limited, displaying pictures related to Complainant’s activities and a depiction of a Certificate of Incorporation of Mittal Steel (UK) Private Limited, as well as text such as “Welcome to investment platform of the company Mittal Steel”. The fact that the Website gives the false impression that it emanates from Complainant and/or its group of companies further supports registration in bad faith (See, WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO,WIPO Case No. D2017-1367).
The above also indicate that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc,WIPO Case No. D2015-0403).
Furthermore, Respondent appears to be engaged in at least one more domain name registration that infringes trademarks of Complainant (ARCELORMITTAL (SA) v. Larisa Lebedeva, CAC Case No. 102436, concerning the domain name ).
This pattern can be used in support of bad faith registrations (Dr. August Oetker Nahrungsmittel KG v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2007-1664; Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investments Limited,WIPO Case No. D2001-1095; The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd,WIPO Case No. D2016-1881; WIPO Overview 3.0, section 3.1.2).
As regards bad faith use, Complainant demonstrated that the Domain Name led at the time of filing of the Complaint to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Société Air France v. Domain Administrator, See PrivacyG / Steve David, Kamran Khan, Muhammad Faisal,WIPO Case No. D2018-1986; DCI S.A. v. Link Commercial Corporation,WIPO Case No. D2000-1232; Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency),WIPO Case No. D2000-1228; Accor, So Luxury HMC v. Youness Itsmail,WIPO Case No. D2015-0287; Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC,WIPO Case No. D2016-2447; WIPO Overview 3.0, section 3.3).
Furthermore, Complainant has demonstrated that the Domain Name is currently employed by Respondent to host a Website through which Respondent attempts to pass off as the subsidiary of Complainant Mittal Steel (UK) Private Limited, as an attempt to attract, for commercial gain, Internet users searching for Complainant’s MITTAL STEEL mark, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of the Website. This is a clear indication that the Domain Name is being used in bad faith (Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support,WIPO Case No. D2015-1488).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii). 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 be transferred to Complainant.
Marina Perraki
Sole Panelist
Date: September 23, 2019
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