The Complainant is Arcelormittal (SA) of Luxembourg, represented by Nameshield, France.
The Respondent is Floyd Martins of Owerri, Imo, Nigeria. 2. The Domain Name and Registrar
The disputed domain name (the “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 November 20, 2018. On November 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2018, 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 the Complainant on November 21, 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 November 21, 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 November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2019.
The Center appointed Tommaso La Scala as the sole panelist in this matter on January 14, 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
The Complainant is a company with legal address in Luxembourg, one of the largest steel producing entity in the world and market leader in steel for use in automotive, construction, household appliances and packaging, with operations in more than 60 countries.
Among others, the Complainant owns the international trademark no. 778212 ARCELOR was registered on February 25, 2002, as well as a considerable domain names portfolio, including , registered since 2001.
The Domain Name was registered on November 16, 2018 and it currently resolves to an inactive website that displays the message “Index of”. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical and confusingly similar to the Complainant’s ARCELOR trademark, as it exactly reproduces it, with the addition of the term “steel”, a generic word which would refer to the Complainant’s core business.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor has been licensed or otherwise authorized to use any of Complainant’s trademarks or to apply for or use any domain name incorporating such trademarks.
The Domain Name currently resolves to an inactive website. In this regard, the Complainant states that the Domain Name has been registered and used in bad faith, since it should be reasonable to infer that the Respondent has registered and used the domain name with full knowledge of the Complainant’s trademark ARCELOR. Furthermore, the passive holding of the Domain Name should be considered as an evidence of bad faith, considering that it would not be possible any plausible future active use of the disputed Domain Name by the Respondent that would be legitimate and not infringing the Complainant’s well-known trademark ARCELOR. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the 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 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
The Complainant has established its registered rights in the ARCELOR trademark.
The Domain Name exactly reproduces the ARCELOR trademark and the only difference is the addition of the descriptive English word “steel”, which seems to be a clear reference to the Complainant’s business activity.
Where the relevant trademark is recognizable within the domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Panel believes the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademark or to register the Domain Name exactly reproducing its trademark.
The Respondent did not respond nor provide any evidence that it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. In fact, the Respondent is not making any apparent use of the Domain Name at all, nor has it come forward to reply to the Complainant’s contentions.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith.
The trademark ARCELOR is well-known and past UDRP decisions confirmed such circumstance (see, for instance, Arcelormittal v. PrivacyP / Mr. Singh (tajgroup@), Taj Pharmaceuticals Ltd., Taj Group of Companies,WIPO Case No. D2010-0899).
A quick search on Google for ARCELOR would have revealed to the Respondent that all the results retrieved are strictly related to the Complainant and its trademark.
As for the use of the Domain Name, based on the evidence submitted, the Respondent registered the Domain Name and, as of this day, is passively holding it without using it for any apparent purpose. 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 (see, among others, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028; and M. Antonino Amaddeo (Reminiscence Diffusion Internationale) v. Gas Bijoux SAS / GAS Olivier,WIPO Case No. D2012-1831).
Given that; (i) the Respondent did not provide any explanation about the registration of the Domain Name; (ii) the ARCELOR mark is very widely known; (iii) the Respondent made use of a privacy service to conceal its identity when registering the Domain Name and (iv) the Domain Name itself implies an association with the Complainant, the Panel finds that the Domain Name has been registered and used in bad faith and that the Complainant has satisfied the requirement 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 name, be transferred to the Complainant.
Tommaso La Scala
Sole Panelist
Date: January 25, 2019
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