The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is WhoisGuard, Inc. of Panama / Alex Nicholas of Phoenix, Arizona, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 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 June 19, 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 June 19, 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 June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on July 23, 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 a global company operating in 60 countries and specialized in the production of steel for use in automotive construction, household packaging and other products.
The Complainant holds trademark registrations for ARCELORMITTAL, such as the International Registration No. 947686 registered on August 3, 2007 and valid until August 3, 2027, for goods and services in International Classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42, covering, amongst others, Montenegro and the United States, where the second Respondent is apparently located.
Together with its subsidiaries, the Complainant also owns numerous domain names which include the word “arcelormittal”, such as registered on January 27, 2006.
Previous panel’s have found the Complainant’s trademark ARCELORMITTAL to be well-known internationally in relation to metal and steel production. See also, ArcelorMittal SA v. Tina Campbell,WIPO Case No. DCO2018-0005; , ArcelorMittal (SA) v. BMW.XX,WIPO Case No. D2017-2321; and ArcelorMittal (SA) v. WhoisGuard Protected, WhoisGuard, Inc. / Flame zy, xls co,WIPO Case No. DME2017-0010.
The disputed domain name was registered on June 10, 2018 and at the time of filing the Complaint it resolved to a parking page with Pay-Per-Click (“PPC”) links. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark ARCELORMITTAL, the replacement of the letter “m” by the letters “r” and “n” is not sufficient to escape the finding that the disputed domain name is confusingly similar to its trademark. Further, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the ARCELORMITTAL trademark.
The disputed domain name incorporates the Complainant’s trademark ARCELORMITTAL in its entirety, with a minor alteration, the letter “m” being replaced with the letters “r” and “n”. However, such alteration does not eliminate the confusing similarity and the dominant and distinctive part of the disputed domain name remains the Complainant’s trademark.
Numerous UDRP panels have considered that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant trademark for purposes of the first element. See section 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the country code Top-Level Domains (“ccTLDs”) (e.g., “.me”, “.ro”, “.it”) or the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.net”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. Here, the disputed domain name was registered in the ccTLD “.me”, corresponding to Montenegro.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ARCELORMITTAL, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights in the term “arcelormittal”, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent is using the disputed domain name in connection with commercial activities for PPC page. Section 2.9 of theWIPO Overview 3.0 clarifies that UDRP panels have found that the use of a domain name to host a page comprising PPC links would be permissible where the domain name consists of dictionary words and does not trade off the complainant’s trademark.
Applying UDRP paragraph 4(c), UDRP panels have found that the use of a disputed domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links for example capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Here, the Complainant’s trademark is well-known in its field of activity, the Respondent did not provide any explanation for its use of the disputed domain name and the Panel cannot find anything in its favor, therefore the Panel concludes that the Respondent has registered and used the disputed domain name trying to capitalize on the Complainant’s goodwill in the mark ARCELORMITTAL in order to mislead Internet users.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark rights since at least 2007. Being an invented name, ARCELORMITTAL is indeed distinctive and due to its extensive use, it enjoys a strong reputation worldwide in its field of activity. The disputed domain name was created in 2018 and incorporates the Complainant’s mark with an obvious common misspelling.
According to the records in the file, the Respondent has used the disputed domain name in relation to a website listing sponsored links.
In the present case, the above circumstances are cumulated with the fact that the Respondent has registered the disputed domain name incorporating the Complainant’s distinctive mark which is registered and used worldwide for at least ten years, the Respondent appears to have registered the disputed domain name under a privacy service and refused to participate in the present proceeding in order to put forward relevant arguments in its support. Accordingly, the Panel concludes that the provisions of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location” applies in the present case and is evidence of registration and use in bad faith.
Internet users searching for the Complainant would access the website corresponding to the disputed domain name believing it belongs or is somehow associated with or endorsed by the Complainant.
Further, as mentioned, the Respondent has apparently registered the disputed domain name under a privacy service. Although the use of privacy and proxy services can be legitimate, the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can impact a panel’s assessment of bad faith. Accordingly, the Panel finds that the use of a privacy service in the present case is indicator of bad faith. See section 3.6 of theWIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the 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 disputed domain name be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Date: July 26, 2018
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