The Complainant is Arcelormittal of Luxembourg, represented by Nameshield, France.
The Respondent is PrivacyProtect.org / Mr. Singh (email@example.com), Taj Pharmaceuticals Ltd., Taj Group of Companies of Moergestel, Netherlands / Mumbai, Maharashtra, India.
The disputed domain names <arcelorcement.com>, <arcelorchemicals.com>, <arcelorchemicals.net>, <arcelorlaboratories.com> and <arcelorlabs.com> are all registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 2, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On June 7, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. On June 28, 2010, the Respondent filed an informal Response.
The Center appointed James A. Barker as the sole panelist in this matter on July 6, 2010. 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.
The Complainant is a producer of steel with its headquarters in Luxembourg. The Complainant was formed out of a merger in 2006 between Arcelor and Mittal to become ArcelorMittal.
The Complainant operates a website at “www.arcelormittal.com”. As stated on its website, and reproduced in part in the Complaint, the Complainant is one of the world's leading steel companies, with operations in more than 60 countries. The Complainant provides steel for various markets, including automotive, construction, household appliances and packaging. In 2009, the Complainant had revenues of $65.1 billion and crude steel production of 73.2 million tonnes, representing approximately 8 per cent of world steel output.
The Complainant is the owner of registered marks for ARCELOR. For example, the Complainant provides evidence of an international mark for ARCELOR registered in February 2002. The Complainant has also registered domain names corresponding to its mark, including <arcelor.com> registered on August 29, 2001.
The registrant for the domain names is ‘The Taj Group of Companies': <arcelorcement.com> (creation date of February 11, 2009); <arcelorlabs.com> (creation date of July 28, 2008), <arcelorchemicals.com> (creation date March 13, 2010); <arcelorchemicals.net> (creation date of February 23, 2010); <arcelorlaboratories.com> (creation date May 1, 2009).
The Complainant notes that the Respondent's websites list a number of companies as being part of The Taj Group of Companies, including ARCELOR Laboratory Pvt. Ltd., ARCELOR Chemicals Pvt. Ltd., and ARCELOR Cements Pvt. Ltd. The Complainant says that it has requested the cancellation of the registration of these and other companies to the Ministry of Corporate Affairs in India. The companies to which that request relates are Arcelor Laboratory Pvt. Ltd., Arcelor Chemicals Pvt. Ltd., Arcelor Steels Pvt. Ltd., Arcelor Cements Pvt. Ltd., Arcelor Petrolium Limited, Arcelor Agro Pvt. Ltd., Arcelor Energy Ltd, Arcelor Export House Pvt. Ltd.
At the date of this decision, the disputed domain names revert to active websites, with the exception of <arcelorlaboratories.com>. For example, “www.arcelorcement.com” contains a homepage entitled “arcelor cement pvt. ltd.” Among others, that website includes the statement that “Arcelor Cement is leading Certified ISO 9001-2008 manufacturer and exporter of Ordinary Portland Cement”. Those websites have a similar layouts and logos, although different content, with the exception of the website at <arcelorchemicals.com> which includes a somewhat different logo and layout.
Although the Complainant does not mention it, the Complainant has previously been a successful Complainant in proceedings under the Policy involving its ARCELOR mark, among others. See e.g. Mittal Steel Technologies Limited, Mittal Steel Company NV and Arcelor SA v. Jean Frederic Serete, WIPO Case No. D2006-1353. In that case, the panel found that “the Complainants' trademarks MITTAL, MITTAL STEEL and ARCELOR […] have been widely used and well-known even before the merger negotiations between the Complainants was announced in January 2006.”
The Complainant says that the disputed domain names are identical or confusingly similar to its registered mark. The Complainant says that the term “arcelor” is known only in relation to the Complainant. It has no meaning in English or in any other language. A Google search of word “arcelor” displays several results, all related to the Complainant.
The Complainant refers to email correspondence between the parties, saying that “The Respondent has sent us an email with copies of registration of his companies to justify the registration of the disputed domain names. Following this email, we have tried to contact him to understand the use of term ‘ARCELOR'; we have received no reply.”
The Complainant says that the Respondent has registered and used the disputed domain names in bad faith. The Respondent must have known of the Complainant's trademarks. The Complainant says that the Respondent's websites use logos similar to the Complainant's (the term “ARCELOR” in a header of the websites is written in white on a red font – similar coloring to that used by the Complainant). The Complainant contends the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant.
The Response was received in the form of a letter to the Center, signed on behalf of ‘Arcelor Chemicals Pvt. Ltd.' The Response does not include a number of the matters required by the Rules to be in a response. Among others, it does not include the statement required under paragraph 5(b)(viii) of the Rules.
In the Response, the Respondent states that it has not violated the Policy, and refers to its registration as a company under the Indian Companies Act 1956. The Respondent states that it is “a Maharashtra (India) based group of companies dealing in Chemicals Manufacturing, Pharamceuticals Manufacturing and Trading of Cement and Textile etc.” The Respondent further states that “We as a Manufacturer and Trader of small scale and have no intention to compete with any big company.” The Respondent suggests that it is operating “with the permission with here Government officially.” The address stated at the end of the Response, while the same as that listed on the Respondent's websites, is different to that listed for the Respondent in the WhoIs details for the disputed domain names. The Respondent also states that “as far as name ‘Arcelor' is concerned it means the god.”
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove all of the following:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These issues are discussed as follows.
There is seemingly no dispute that the Complainant relevantly has rights in its ARCELOR mark for the purpose of paragraph 4(a)(i) of the Policy. As such, the remaining issue under this element is whether the disputed domain names are identical or confusingly similar to that mark.
On balance the Panel finds that the disputed domain names are confusingly similar to that mark. For the purpose of the Policy, the Complainant's registered mark is entitled to a presumption of distinctiveness. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903. In addition, that mark appears to the Panel to be an arbitrary or fanciful mark and therefore, on its face, is more likely to be inherently distinctive. The Respondent provided no evidence otherwise.
The Complainant's distinctive mark is entirely incorporated in each of the disputed domain names, which add only descriptive or generic words such as “chemicals” or “cement”. The Complainant is a large industrial producer of steel. Terms such as “chemicals” or “cement” do not relate directly to the production of steel – the Complainant's core business. However, whether in fact those terms relate to the Complainant's business is not the issue. Rather, the issue is whether an Internet user might be confused about the association between the disputed domain names and the Complainant's mark.
The Panel considers that it would not be unreasonable for an Internet users to be confused about the association between the Complainant and the disputed domain names. One reason is that, as noted above, the Complainant's mark is distinctive in a trademark sense. Another reason is that the Complainant is a very large industrial entity and, because of that fact, might be expected to have diverse operations. An ordinary Internet user might therefore, seeing the Complainant's mark and each of the separate descriptive terms in the domain names, understand those terms to relate to the Complainant's business. In this way, the non-trademark elements in the disputed domain names do not detract from or contradict the function of the Complainant's trademark as an indication of origin. (See Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037.)
For these reasons, the Panel finds that the Complainant has established this first element.
Paragraph 4(a)(ii) requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with Complainant. See e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has made a prima facie case against the Respondent. The Complainant also questions whether the companies said to be associated with The Taj Group of Companies are entities in fact. The Complainant says that it has found no evidence of the existence of these companies.
The Respondent however appears to base its interests in the disputed domain names on company registrations under the Indian Companies Act 1956. The Respondent provides a copy of an India Certificate of Incorporation for “Arcelor Chemicals Private Limited” registered in January 2009 and “Arcelor Laboratories Private Limited” registered in June 2008. The Respondent's arguments in this respect are not strong for a number of reasons.
Firstly, as noted by a previous panel in relation to a somewhat similar argument, this potential defence cannot apply where, if the Respondent selected the name with knowledge that the name is a trademark of another company operating in the same business area: Romec Limited v. Bradley Knight, WIPO Case No. D2006-1241. In other words, merely having an “on paper” company registration does not by itself establish a right or legitimate interest in an associated domain name, if the Panel finds that the domain name registration was undertaken to exploit the trademark value of the Complainant's mark. On balance, the Panel considers that the registration was motivated for this reason, as explained further below in relation to the issue of bad faith.
Secondly, the Respondent has provided evidence in relation to “Arcelor Chemicals Private Limited” and “Arcelor Laboratories Private Limited”. While those company names might, on their face, relate to four of the disputed domain names, they do not have a direct correspondence with the fifth: <arcelorcement.com>.
Thirdly, the Complainant's argument puts in issue the question of whether the Respondent's companies are entities in fact. The Respondent has done little to rebut that argument. The Panel is not confident that the company registrations by themselves establish the actual existence of those companies as independent entities. This impression is reinforced by the language of the Response which suggests that ‘we' have registered the names of those companies. Who “we” is in this respect is not clear. The Response is signed in the name of “Arcelor Chemicals Pvt. Ltd.” so it might be thought that this is the “we” referred to. But then the relationship of Arcelor Chemicals to Arcelor Laboratories is not spelled out. Neither is any clue provided about the relationship of Arcelor Chemicals with “Taj Pharmaceuticals Ltd.” or the “Taj Group of Companies”, which are the named Respondent. The Respondent provides no evidence of the actual operation of those companies. If those companies did, in fact, operate in the heavy industries that their names suggest, it would not have been difficult for the Respondent to provide some concrete evidence.
Another argument suggested by the Respondent is that “arcelor” means “the god”. The Respondent provides no evidence of explanation of this statement. There is nothing else in the case file to support it and the Panel has therefore given it little weight.
For these reasons, the Panel finds that the Respondent has not rebutted the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. It follows that the Complainant has established its case under this second element of the Policy.
Bad faith may be found in circumstances where the Respondent knew of the Complainant's mark, and registered the disputed domain names to exploit the value of that mark.
Having regard to the size and scale of operations of the Complainant, its prior registered marks and presence on the Internet, and previous panel findings that the Complainant's marks are widely-used and well-known, the Panel finds it unlikely that the Respondent was not aware of the Complainant's marks when it registered the disputed domain names. It follows that the Panel finds it similarly unlikely that the Respondent was unaware of those marks when it registered the companies “Arcelor Chemicals Private Limited” and “Arcelor Laboratories Private Limited”, in each case around one year before registering the corresponding domain names. The Panel considers that those company registrations therefore do little to establish that the Respondent was not motivated to register the disputed domain names because of their association with the Complainant's mark.
For somewhat similar reasons, the Panel is not persuaded that the Respondent's websites suggest the real presence of an entity behind them. The Respondent has chosen to provide no evidence to rebut such a finding.
For these reasons, the Panel finds that the Complainant has established that the disputed domain names were registered, and have been used, in bad faith.
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, <arcelorcement.com>, <arcelorchemicals.com>, <arcelorchemicals.net>, <arcelorlaboratories.com> and <arcelorlabs.com>, be transferred to the Complainant.
James A. Barker
Dated: July 23, 2010