WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mittal Steel Technologies Limited , Mittal Steel Company NV and Arcelor SA v. Jean Frederic Serete
Case No. D2006-1353
1. The Parties
The Complainants are Mittal Steel Technologies Limited, of Ebene, Mauritius, Mittal Steel Company NV, of Rotterdam, The Netherlands and Arcelor SA, of Luxembourg, Luxembourg, all represented by Olswang, United Kingdom.
The Respondent is Jean Frederic Serete, of Paris, France.
2. The Domain Names and Registrar
The disputed domain names are <mittal-arcelor.info>, <mittal-france.info>, <mittal-steel.info>;
are all registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2006. On October 25, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On October 26, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2006. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 29, 2006. 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 Complainants are together the largest steel company in the world following a merger of the companies Mittal Steel and Arcelor in 2006. This company, which will be incorporated in 2007, has 330,000 employees in more than 60 countries.
The Complainants hold the rights to the trademarks MITTAL, MITTAL STEEL, and ARCELOR in several countries of the world including European Community trademarks and national trademark registrations in France.
The Complainants further holds several domain names incorporating their individual trademarks as well as domain names incorporating the combination of the marks MITTAL and ARCELOR.
The Panel has not been provided with any information on the Respondent except for the information provided by the Complainants.
5. Parties’ Contentions
The two contested domain names <mittal-france.info> and <mittal-steel.info> incorporate the registered trademarks of the Complainants in full and must thus be considered to be confusingly similar to Complainants rights.
The contested domain name <mittal-arcelor.info> incorporates a combination of two of the Complainants registered trademarks, and the Complainants further claims that at the time of registration they had acquired common law trade mark rights to the combination of words, inter alia due to the extensive media coverage of the proposed merger.
The Respondent has no rights or legitimate interests in respect of the contested domain names. He has no relation to the Complainants, nor is he commonly known by the domain names. Further, he has made no use or demonstrable preparations to use the disputes domain names for any bona fide offering of goods and services or for any legitimate non-commercial purpose.
The contested domain names were all registered on February 7, 2006, which is immediately after it was reported in the news media that Mittal Steel had offered to take over Arcelor. The Complainants further contend that this is in itself a clear indication of the Respondents bad faith. The bad faith is underlined by the fact that the Respondent also holds several other domain names that incorporate well-known trademarks of others and the Respondent must thus be considered to be engaged in a pattern of such abusive registrations.
The Respondent did not reply to the Complainants’ 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 and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, to succeed the Complainants must prove that each of the three following elements is satisfied:
(1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(2) that the Respondent has no rights or legitimate interests in respects of the domain names; and
(3) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate
A. Identical or Confusingly Similar
The contested domain name <mittal-steel.info> incorporates the registered trademark of the Complainants MITTAL STEEL in full and the Panel finds that for the purpose of these proceedings it shall considered to be identical to a trademark in which the Complainants have rights. The Panel notes that it is well-established that the addition of the gTLD, in this case “.info”. is to be disregarded for the purpose of determining identity or confusing similarity.
The contested domain name <mittal-france.info> incorporates the registered trademark of the Complainants MITTAL in full. The addition of the geographical designation “france” does not change this fact, nor does it alter the primary impression created by the domain name. The Panel finds that the domain name, for the purpose of these proceedings, is confusingly similar to a trademark in which the Complainants have rights.
The contested domain name <mittal-arcelor.info> incorporates a combination of the Complainants´ registered trademarks MITTAL and ARCELOR. The Panel finds that for the purpose of these proceedings the domain name is confusingly similar to trademarks in which the Complainants have rights. See inter alia A.P. Møller v. Web Society, WIPO Case No. D2000-0135 (concerning the domain names <maersksealand.com> and <maersk-sealand.com> and Cooper Industries Inc. v. Bobby Amlani, WIPO Case No. D2001-0794 (concerning the domain name <coopermenvier.net>). Consequently, it is not necessary for the Panel to address the question of whether the Complainants have acquired common law trade mark rights to the combined mark MITTAL ARCELOR.
The conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainants have not licensed or otherwise permitted the Respondent to use its trademarks, or to register any domain name incorporating the Complainant’s marks.
The Complainants further allege that the Respondent has no relation to the Complainants nor has he any rights or legitimate interests in the domain names. The Respondent has not rebutted these allegations, and has provided no evidence demonstrating rights and legitimate interests in the domain names (cf paragraph 4(c) of the Policy). Since the Complainants’ trademarks to the best of the Panel’s knowledge have no specific meaning except as name and trademark for the Complainants, it is unlikely that any such rights or legitimate interests exist.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith
The Panel finds that the Complainants’ trademarks MITTAL, MITTAL STEEL and ARCELOR to have been widely used and well-known even before the merger negotiations between the Complainants was announced in January 2006. It is not credible to the Panel that the Respondent registered the disputed domain names, which incorporate the distinctive trademarks of the Complainants, in February 2006, one month after the widely publicised merger between the Complainants was announced, without knowledge of the Complainants and of the fact that the Complainants were negotiating a merger.
The Panel therefore finds that the contested domain names were registered in bad faith.
The Respondent has apparently been using the disputed domain names by way of standard “parking sites” that typically generate revenue for the registrant. Moreover, as first stated in Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP:
“the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
In the circumstances of this case, the Respondent’s - albeit limited - use is likely to disrupt the business of the Complainants since it could give those Internet users that will look for information on the Complainants the impression that the Complainants have sponsored or are in some way affiliated with the websites and links displayed on the disputed domain names. accordinly, the Panel also finds that the Respondent by registering and using the domain names, intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain names in dispute with the purpose of attracting Internet users to the websites for commercial gain. The Panel also notes that the domain names incorporate well-known trademarks, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names.
Under these circumstances it is not necessary for the Panel to address the additional arguments presented by the Complainant in support of Respondent’s bad faith, but the Panel has taken note of then fact that the Respondent is the Registrant of several other domain names under the “.info” gTLD that incorporate well-known trademarks of others.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith. The Complainant has proved element 4(a)(iii) of the Policy.
The Complainants have requested that the domain names, in case of a transfer order by the Panel, be transferred to the first Complainant, Mittal Steel Technologies.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <mittal-arcelor.info>, <mittal-steel.info> and <mittal-france.info> be transferred to the first Complainant, Mittal Steel Technologies Limited.
Dated: January 31, 2007