The Complainant is ArcelorMittal (SA) of Luxembourg, Luxembourg, represented by Nameshield, France.
The Respondent is George Jercich of New South Wales, Australia. 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 September 26, 2018. On September 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 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 September 27, 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 September 27, 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 September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2018.
The Center appointed William R. Towns 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
The Complainant is a major steel producer with operations in more than 60 countries around the world. The Complainant is the owner of international trademark registration number 947686 for ARCELORMITTAL, registered on August 3, 2007, and designated for protection in numerous jurisdictions, including Australia, where the Respondent is said to reside. The Complainant also has registered domain names incorporating the ARCELORMITTAL mark, including , registered on January 27, 2006, and used with the Complainant’s official website.
WIPO UDRP panels have recognized that the Complainant’s ARCELORMITTAL mark is well-known and enjoys a strong reputation worldwide. See, e.g., Arcelormittal S.A. v. Cees Willemsen,WIPO Case No. D2016-1853; Arcelormittal (SA) v. Vera Widjaja, verawebhost,WIPO Case No. D2018-1087; ArcelorMittal (SA) v. BMW.XX,WIPO Case No. D2017-2321.
The disputed domain name was registered on October 20, 2017, according to the Registrar’s WhoIs records. The disputed domain name resolves to a parking page prominently displaying the disputed domain name and including links to “Related Searches” and “Ads”, although the links at present appear to be inactive. 5. Parties’ Contentions A. Complainant
The Complainant represents that it is the largest steel producing company in the world, providing steel for use in automotive construction, household appliances and packaging, with operations in more than 60 countries. According to the Complainant, it maintains extensive distribution networks and sizeable holdings of supplies and of raw materials.
The Complainant submits that the disputed domain name is identical to the Complainant’s ARCELORMITTAL mark. The Complainant maintains that inclusion of the “.pw” top-level domain in the disputed domain name does not change the overall impression of a connection with the Complainant’s mark, and does not preclude a finding a likelihood of confusion. The Complainant further observes that top-level domains (“TLDs”) generally is disregarded when assessing the identity or confusing similarity of the complainant’s mark to the disputed domain name.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not affiliated with the Complainant or otherwise authorized by the Complainant to use its ARCELORMITTAL mark. According to the Complainant, the disputed domain name resolves to a registrar parking page. The Complainant submits that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and further asserts that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that its ARCELORMITTAL mark is highly distinctive and well-known, and that the Respondent would have been aware of the Complainant’s mark when registering the disputed domain name. The Complainant remarks that the Respondent has not made any active use of the disputed domain name, which the Complainant argues indicates bad faith registration and use of the disputed domain name within the meaning of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s ARCELOMITTAL mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement. 1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainant’s ARCELOMITTAL mark is clearly recognizable in the disputed domain name.2 Top Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.3 The disputed domain name is identical to the ARCELOMITTAL mark when the TLD “.pw” is disregarded.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The record reflects that the Respondent registered and appears to be passively holding the disputed domain name, which is identical to the Complainant’s mark and resolves to a registrar parking page with presently inactive links to “Related Searches” and “Ads.”
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent 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 trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel considers that the Respondent in all likelihood was aware of the Complainant and had the Complainant’s ARCELOMITTAL mark in mind when registering the disputed domain name. Internet users encountering the disputed domain name could easily expect that it would resolve either to the Complainant’s website or to a website sponsored by or affiliated with the Complainant.
In the absence of any explanation by the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s well-known and distinctive ARCELOMITTAL mark in mind when registering the disputed domain name. The Respondent’s motive in relation to the registration and use of the disputed domain name in all likelihood was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom.
That there presently is no active use of the disputed domain name does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. See also WIPO Overview 3.0, section 3.3. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainant’s ARCELOMITTAL mark is well-known, highly distinctive, and enjoys an international reputation. The Respondent in all likelihood was aware of the Complainant and the Complainant’s ARCELOMITTAL mark when registering the disputed domain name. Given the distinctiveness and reputation of the Complainant’s mark, and the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use of the disputed domain name, the Respondent’s passive holding of the disputed domain name smacks of opportunistic bad faith. Indeed, based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain name could be put by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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.
William R. Towns
Sole Panelist
Date: November 1, 2018
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
3 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
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