The Complainants are ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, and Aditya Mittal, all of Saint Denis Cedex, represented by Nameshield, France.
The Respondents are ALL ILLUMINATION, “Vanisha Mittal”, and firstname.lastname@example.org, all of Puerto Rico, Unincorporated Territory of the United States of America (hereinafter referred to as “Respondent”).
The disputed domain names <adityamittal.me>, <arcelormittal.me> and <vanishamittal.me> (collectively, “the Domain Names”), are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2010. On May 20, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On May 21, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on May 27, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(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 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2010. The Respondent submitted informal email communication to the Center on May 31, June 4, and June 5, 2010. However, no formal Response has been filed.
The Center appointed Warwick Smith as the sole panelist in this matter on July 2, 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 email communications sent by the Respondent to the Center sufficiently show that he received due notice of the Complaint.
By Procedural Order No. 1 dated July 16, 2010, the Panel requested a supplementary statement from the Complainants providing further information relating to the Complainants' claimed rights in certain of the trademarks relied upon by them. The Respondent was afforded a right of reply and the Panel extended the time for it to give its decision in the case, to July 27, 2010.
The Complainants duly filed a Supplementary Statement on July 20, 2010. A reply email was received from the Respondent later the same day.
By further procedural order made on July 27, 2010, the time for the Panel to give its decision was further extended to July 30, 2010.
The Complainant ArcelorMittal SA (“ArcelorMittal”) was established in 2006, following the merger of the two companies Arcelor SA and Mittal Steel Company NV. The latter company was owned before the merger by the Mittal family. ArcelorMittal is the world's leading steel company, with operations in more than 60 countries. In 2009, ArcelorMittal had revenues of $65.1 billion.
The Complainant Vanisha Mittal, is the daughter of Lakshmi Mittal, who is the Chief Executive Officer of ArcelorMittal. Vanisha Mittal is also a member of the board of directors of ArcelorMittal.
The Complainant Aditya Mittal, is the son of Lakshmi Mittal, and the Chief Financial Officer of ArcelorMittal. He is a member of the management group of ArcelorMittal.
ArcelorMittal operates through various websites on the Internet, the principal one being the website at “www.arcelormittal.com” (registered on January 27, 2006). In addition, ArcelorMittal operates a number of websites established at country code domain names.
ArcelorMittal holds international trademark registrations in the mark ARCELORMITTAL, registered on August 3, 2007.
ArcelorMittal is also the proprietor of a Community Trademark consisting of the word MITTAL, registered with effect from August 16, 2005.
According to the Complaint, the term “ArcelorMittal” is known only in relation to the corporate group of which the Complainant ArcelorMittal forms part. The Complainants say that a Google search on the words “ArcelorMittal” displayed several results, all related to the ArcelorMittal group. However the search results were not attached to the Complaint.
Also according to the Complaint, the expression “Vanisha Mittal” is known only in relation to the Complainant Vanisha Mittal, the ArcelorMittal group, or the Mittal family. (The Complainants have indicated, and it is not disputed that the Complainant Vanisha Mittal (from ArcelorMittal) is not the registrant of the Domain Name <vanishamittal.me>. )
Likewise, the expression “Aditya Mittal” is known only in relation to the Complainant Aditya Mittal, the ArcelorMittal group, or the Mittal family.
The Complainants say that Google searches on the expressions “Vanisha Mittal” and “Aditya Mittal” displayed several results, all of which related to the ArcelorMittal group, the Mittal family, or the particular individual Complainant whose name was the subject of the search. Again, however, the Complainants did not produce copies of the search results.
It appears that the listed registrants of the Domain Names are one and the same person. They all have the same address in Puerto Rico, and the administrative and technical contacts for the Domain Names have the same hotmail address.
When the Center received the first communication from the Respondent following the notification of the Complaint, the question of registrant identity was put beyond doubt. The Respondent introduced himself in his May 31, 2010 email to the Center as “Yamil Rios Maldonado”, and proceeded to address the Complaint as it related to all three Domain Names. The hotmail address for the administrative and technical contacts for the Domain Names (as listed in the Whois particulars) commenced with the letters “yrm”, and the administrative and technical contact for the Domain Name <adityamittal.me> was shown in the Whois particulars as Myriam Maldonado, of the same hotmail address.
The Complainants say that none of them has any business or other connection with the Respondent. Furthermore, they assert (and the Respondent in his communications with the Center did not deny) that the Respondent is not currently and has never been known by any of the Domain Names, and has no trademark rights in any marks corresponding to any of the Domain Names. None of the Complainants has licensed or authorized the Respondent to make any use of the trademarks on which the Complainants rely, and nor has any of the Complainants authorized the Respondent to register any of the Domain Names.
The Complainants produced a printout (dated April 22, 2010) from the website at “www.domaintools.com”, which provided details of a domain name registrant search the Complainants had run on the hotmail address referred to above. The search disclosed a total of 35 domain names registered to a registrant having that hotmail address, including the Domain Names. Among the other registrations were the domain names <alpacino.me> and <felipemassa.me>.
The Domain Names were all created on August 11, 2008. According to the Registrar, the Domain Name <vanishamittal.me> was registered in the name “Vanisha Mittal” on September 30, 2008. The Domain Name <adityamittal.me> was registered to “All Illumination” on September 17, 2008, and the Domain Name <arcelormittal.me> was registered to “email@example.com”, on July 28, 2009.
The website to which the <arcelormittal.me> Domain Name resolved on April 19, 2010 (“the arcelormittal website”) consisted of a fairly typical landing page, with numerous sponsored links to third party websites grouped under a variety of category headings. At least one such link was to a website which appears to have been concerned with ArcelorMittal's financial results. The Complainants allege that the Respondent has derived revenue from those links. The Complainants further say (and the Respondent has not denied) that the Respondent has offered the Domain Name <arcelormittal.me> for sale in the sum of USD300,000. In support of that allegation the Complainants produced a page from the website at “www.namedrive.com”, printed on April 19, 2010, showing the <arcelormittal.me> Domain Name listed for sale at that figure.
The Complainants produced a copy of the website at “www.adityamittal.me” (“the adityamittal website”), printed on April 19, 2010. It consisted predominantly of finance-related click-on links, many of which appeared to be concerned with ArcelorMittal or members of the Mittal family (including Aditya Mitttal). Some of the links appear to have been sponsored links, grouped under a “Popular Categories” heading. All appear to have related to financial or business matters.
At the top of the adityamittal website as it stood on April 19, 2010, there appeared the statement “THIS DOMAIN IS FOR SALE”.
This Domain Name has also been offered for sale. On April 19, 2010 the website at “www.namedrive.com” offered the <adityamittal> Domain Name for sale in the sum of $20,000.
According to the Complainants, the Domain Name <vanishamittal.me> points to the website at “www.vanishamittal.com” (“the vanishamittal website”). The <vanishamittal.com> domain name is also owned by the Respondent, and it is the subject of a separate complaint by the Complainant Vanisha Mittal under the Policy. As it stood on April 14, 2010, the vanishamittal website prominently displayed a logo which forms part of one of ArcelorMittal's International Trademark Registrations, and advised that the <vanishamittal.com> domain name was for sale.
Further below those words, the following appeared:
“Vanisha Mittal is THE RICHEST WOMAN IN THE WORLD
Vanisha Mittal is THE BIGGEST CELEBRITY IN THE INDIAN
Vanisha Mittal is THE MOST EXPENSIVE WEDDING IN THE HISTORY OF THE WORLD
VanishaMittal.com – break the record of Business.com? We'll see!”
The reference to “breaking the record of Business.com” referred to a note further up on the screen shot to the effect that the domain name <business.com> was the most expensive domain name in history.
At the foot of the vanishamittal website, the Respondent advised that part of the money (presumably from a sale of the <vanishamittal.com> domain name) would go to a named church, to children who have no food, and to “others”.
The Complainants also produced a page from the website at “www.facebook.com”, which appeared to consist of links to various third party sites at which domain names could be purchased. One such link was “Yamil Rios → Domainshooter PREMIUM DOMAINS FOR SALE: Vanisha Mittal.com is For Sale ….” For more information, a visitor to the Facebook page was invited to contact an email address which was the same as that provided for the registrant in the Whois particulars for the <vanishamittal.com> domain name.
The Complainants also produced a web page from the website at “www.youtube.com”, which appears to be dated June 7, 2009. The Youtube page was headed:
“Welcome to Vanisha Mittal.com
What is your opinion on Vanisha Mittal.”
The Youtube page noted that the <vanishamittal.com> domain name was for sale, and produced what appears to have been a video clip of the Complainant Vanisha Mittal's wedding, with “$60,000,000” superimposed above the picture. Various posts relating to the Complainant Vanisha Mittal appeared below the video clip, and two appeared to note that a “VanishaMittal.com Porn Site” would be “coming soon”. One simply said: “you Hacker arcelor mittal???”
The most recent web printout produced by the Complainants was a screen shot of the vanishamittal website printed on May 19, 2010. On this date, the vanishamittal website was headed:
“News flash – Vanisha Mittal Does Not Own its Internet address”
There was space for site visitors to post comments, and there were two from the apparent author of the vanishamittal website (described on the website as “yamspanic”). The first post read:
“… 20 Octobre 2008 – Vanish Mittal PAY $100. MILLIONS for VANISHAMITTAL.com? If she buys her web domain will become THE MOST FAMOUS …”
The second post read:
“News reveal that the person who obtained the web domain Vanisha. try to sell it for purposes of using the money for the work of God and bring food to poor children.
mittal's see if they can buy.”
Other posts on the vanishamittal website on May 19, 2010 included posts drawing attention to the Mittal family wealth, and comparing it to the plight of the world's needy people, including starving children.
On May 5, 2010, the Complainants' representative sent a cease and desist email to the hotmail address noted in the WhoIs particulars for the Domain Names. The email referred to the registration of the Domain Names, and also to the registration (allegedly by the same Respondent) of the domain names <vanishamittal.com>, and <vanishamittal.co.uk>. The email referred to the prior rights claimed by the relevant members of (or individuals associated with) the ArcelorMittal group, and advised that those parties wished to find an amicable settlement with the Respondent by having him stop using the disputed domain names and voluntarily transfer them to the appropriate claimants on whose behalf the email was written.
On May 17, 2010, a law firm acting on behalf of the addressee of the Complainants' cease and desist email, sent an email in reply to the Complainants' representative. This email did not suggest that the various listed registrants of the Domain Names (or of the <vanishamittal.com> and <vanishamittal.co.uk domain names) were separate persons or entities. It just sought more information about the claimed prior rights over the disputed domain names, and asserted the Respondent's legal ownership of the disputed domain names.
The email sent on the Respondent's behalf noted that buying domains for resale was a legitimate business, and that unless there was some evidence to the contrary, the Respondent was the legitimate owner of the disputed domain names. The email sent on the Respondent's behalf went on to advise:
“If after searching in your records you don't find evidence in support of your client's allegations, we would like to know if your client is interesting to buy Mr Rios' domains in a very reasonable price. By the same token if your client has a trademark over the name of ‘Arcelormittal' then we will have to make an exception as to such name being use in any domains. However, this is not extensive to the rest domains …. Finally, our client is an honest business man and is in the best attitude to talk about this and find a solution that benefits both parties. …”
In the Complaint, the Complainants state that an answer was sent to the May 17, 2010 email from the Respondent's lawyers, providing evidence of the claimed prior rights. That answer was not produced with the Complaint. The Complainants say that no further communication was received from or on behalf of the Respondent.
The Respondent sent an email to the Center on May 31, 2010. He did not suggest in this email that the registrants of the Domain Names were separate individuals or entities. In his email, the Respondent offered to transfer one of the Domain Names (<arcelormittal.me>), because he accepted that the Complainants' representative's relevant client had prior trademark rights in a corresponding trademark. The Respondent apologized, and explained that when he bought that particular Domain Name he did not know what ArcelorMittal was.
The Respondent stated in his May 31, 2010 email to the Center that he bought the Domain Names because he thought they were not trademarks, they were available, and he had always wanted to buy the Domain Names. He stated that if he ever sold the Domain Names, it would be to donate money to the church.
The Complainants contend:
1. The Domain Name <arcelorMittal.me> is identical or confusingly similar to ArcelorMittal's international trademark registrations. This Domain Name is also identical or confusingly similar to ArcelorMittal's rights in the expression “ArcelorMittal” derived from that company's extensive use of the ArcelorMittal mark since the company was formed in 2006.
2. The Domain Name <vanishamittal.me> is identical or confusingly similar to the trademark MITTAL, which is the subject of Community Trademark registrations (both word and logo) dating from June 23, 2005 and August 16, 2005. The family name “Mittal” is related to the MITTAL trademark, which is known only in relation to the ArcelorMittal group. Also, the personal name “Vanisha Mittal” is known in the world as part of Mittal's mark, and the Complainant Vanisha Mittal has established common law rights in her personal name.
3. The Domain Name <adityamittal.me> is identical or confusingly similar to a mark in which the Complainants have rights. The expression “AdityaMittal” is known only in relation to the Complainant Aditya Mittal, the ArcelorMittal group, or the Mittal family. The family name “Mittal” is related to the trademark MITTAL, which is the subject of Community Trademarks registered on June 23, 2005 and August 16, 2005. In addition, the personal name “Aditya Mittal” is known in the world as part of the ArcelorMittal group, and is the subject of common law rights in Aditya Mittal as a personal name.
4. The Respondent has no rights or legitimate interests in respect of the Domain Names, having regard to the following matters:
(i) The Respondent has never had any business or other relationship with any of the Complainants.
(ii) The Respondent has never been known by any of the Domain Names.
(iii) The Respondent has no trademark rights corresponding to any of the Domain Names.
(iv) The Respondent has not been licensed or authorized to use any of the Complainants' marks which correspond to the Domain Names, or to apply for the registration of any of the Domain Names.
(v) The Domain Names are all similar to marks owned by the Complainants.
(vi) It is difficult to differentiate the Domain Names <vanishamittal.me> and <adityamittal.me> outside of the Complainants Vanisha Mittal and Aditya Mittal respectively, or outside of their company ArcelorMittal.
(vii) The Respondent does not have any right to express his views, even if positive, on an individual or entity (such as the Complainant Vanisha Mittal), using a confusingly similar domain name, as the Respondent has done in this case. A respondent who does that is misrepresenting himself as being that individual or entity.
(viii) In circumstances where a disputed domain name is identical to the complainant's trademark, the respondent, by its actions, prevents the trademark holder from exercising the rights to its mark and managing its presence on the Internet (citing David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v Ermanno Ceicolla, WIPO Case No. D2000-1459).
(ix) The vanishamittal website (to which the Domain Name <vanishamittal.me> resolves) features a copy of the Complainant ArcelorMittal's logo.
5. The Respondent registered, and has been using, the Domain Names in bad faith. The Complainants rely on the following matters:
(i) The Domain Name <arcelormittal.me> was registered by the Respondent to take advantage of the reputation of the ARCELOR MITTAL mark, and to confuse. The <arcelormittal.me> Domain Name was also registered by the Respondent in order to constrain the use of this Domain Name.
(ii) Since its registration, the Respondent has offered to sell the Domain Name <arcelormittal.me> for USD300,000. In the meantime, the Respondent has been taking a profit from the confusion generated by the identity between the <arcelormittal.me> Domain Name and the ARCELOR MITTAL trademark, in the form of revenue from commercial advertising links which appear on the arcelormittal website.
(iii) The Respondent was aware of the existence of ArcelorMittal when he registered the Domain Names.
(iv) The Respondent hoped to either benefit from confusion and the diversion of web traffic, or by selling the Domain Names to the trademark holders. That constitutes bad faith registration of the Domain Names (citing Kangwon Land Inc v Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320).
(v) The Respondent has been guilty of infringing the ARCELOR MITTAL trademark.
(vi) The Domain Name <vanishamittal.me> is used only to redirect to the vanishamittal website.
(vii) The Respondent has proposed the sale of the Domain Names <vanishamittal.com> and <adityamittal.me>.
(viii) The facts show clear evidence of bad faith or a lack of all rights of the Respondent, and his intention to obtain great benefit from celebrities. The Respondent's contact email address is related to numerous disputed domain names. The Respondent has registered the Domain Names to divert many potential Internet users, and to infringe ArcelorMittal's rights and to obtain financial compensation.
The essence of the Respondent's email communications was as follows.
1. With the exception of the Domain Name <arcelormittal.me>, the Domain Names are not trademarks. The Respondent is prepared to transfer the <arcelormittal.me> Domain Name to the Complainants.
2. It is not fair for the Complainants to take the other Domain Names when it cost the Respondent money to acquire them. The Respondent has never intended to use the Domain Names to hurt anyone.
3. The fact that there is a MITTAL trademark does not establish any infringement by the registration of the longer expressions “vanishamittal.me” and <adityamittal.me>. (For example, if the Respondent had registered “MichaelVanisha.me”, that would not mean that Michael Jordan would be able to sue for recovery of that domain name. Nor would Victoria's Secret be able to recover the domain name “VictoriaVanisha.me”.)
4. If the names “Vanisha Mittal” and “Aditya Mittal” really were brands, they would not have been made available for domain name registration. (The Respondent produced a page from the website at “www.godaddy.com”, showing the domain name <vanishamittal.net> as being available for registration.)
5. To be trademarks, the Complainants would have to have registered the full names Vanisha Mittal and Aditya Mittal. The Complainants cannot rely on the registration as a trademark of just a surname. For example, there are many other people in the world called “Vanisha Mittal”.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
The Complainants have sufficiently proved that the Complainant ArcelorMittal is the registered proprietor of two international trademark registrations of the mark ARCELOR MITTAL. The Domain Name <arcelormittal.me> is obviously identical to that trademark, so the Complainants have made out their case under paragraph 4(a)(i) of the Policy in respect of the Domain Name <arcelormittal.me>. The generic suffix “.me” is not taken into account in the comparison.
The Complainants rely in part on the contention that Aditya Mittal and Vanisha Mittal each holds a right in his or her personal name, and that that right qualifies as a “right” in a trademark or service mark for the purposes of paragraph 4(a)(i) of the Policy.
The Complainants have not provided sufficient evidence here for the Panel to accept that submission. It is not necessary to set out the Panel's reasons for coming to that view in any detail1, as the Complainants succeed on their alternative claim based on ArcelorMittal's ownership of the MITTAL Community Trademark. It is enough for present purposes to note that paragraph 4(a)(i) of the Policy requires that a complainant must establish that he or she holds, registered or unregistered, a trademark or service mark, and that the Complainants have failed on the record in these Policy proceedings to prove that either Vanisha Mittal or Aditya Mittal has any trademark or service mark rights in his or her personal name. There is no evidence that either has registered his or her personal name as a trademark or service mark in any jurisdiction, and the Complainants have not produced any evidence which would justify a finding that the names “Aditya Mittal” and “Vanisha Mittal” have acquired a secondary meaning, so as to function as an identifier of particular goods or services.
However, the Complaint does include a general allegation that these two Domain Names were registered (inter alia) “to infringe ArcelorMittal's rights”, and ArcelorMittal is the registered proprietor of a MITTAL Community Trademark. That mark is included in its entirety within each of these Domain Names, and numerous WIPO panels have found that the fact that a disputed domain name wholly incorporates the complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v Mr Giannattasio Mario, WIPO Case No. D2002-0782, The Ritz Hotel Limited v Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially (UK) Limited v Mark Schnorrenberg/Quintessentially Concierge, WIPO Case No. D2006-1643.
As this Panel noted in both The Ritz Hotel and Quintessentially UK, there may be some cases where a domain name which incorporates in full another party's registered trademark will not be confusingly similar to that trademark, because sufficient additional letters or numbers have been added to the registered mark to remove any confusion. Indeed, that appears to be the Respondent's principal defense in this case.
Do the additions of the respective expressions “aditya” and “vanisha” in these Domain Names add sufficient to the MITTAL mark to negate any confusing similarity between the Domain Names and that mark? The Panel does not believe so.
The Panel is satisfied that a significant number of Internet users who were aware of the MITTAL mark, but not necessarily aware of Aditya Mittal or Vanisha Mittal or their roles within the ArcelorMittal group, would be likely to associate these Domain Names with the commercial activities carried on under the MITTAL mark with which they were familiar. If they assumed anything at all about these Domain Names, those Internet users would likely assume that “aditya” and “vanisha” were references to people associated with the Mittal business in some way. Other Internet users, aware of the names of individual members of the Mittal family and the roles they play within ArcelorMittal, would be even more likely to associate the Domain Names with the Mittal family business.
On balance, the Panel is satisfied that the use in full of the MITTAL trademark within the Domain Names <vanishamittal.me> and <adityamittal.me> renders those Domain Names confusingly similar to the MITTAL trademark owned by the Complainant ArcelorMittal.
The Complainants therefore succeed under this head of their Complaint, in respect of all three Domain Names.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name <arcelormittal.me> is identical to the ARCELOR MITTAL trademark owned by the Complainant ArcelorMittal. That Complainant has not authorized the Respondent to use the ARCELOR MITTAL mark, whether in a domain name or otherwise. And the Respondent has not claimed to be commonly known by the name “Arcelor Mittal”, so there is no question of any right or legitimate interest being claimed under paragraph 4(c)(ii) of the Policy.
The foregoing combination of circumstances sufficiently establishes a prima facie case of “no rights or legitimate interest” in respect of the <arcelormittal.me> Domain Name, so the evidentiary burden shifts to the Respondent.
The Respondent has not attempted to claim any right or legitimate interest in respect of this particular Domain Name; indeed, he has volunteered to transfer it to the Complainants.
In those circumstances, the Complainants have made out their case under paragraph 4(a)(ii) of the Policy in respect of the Domain Name <arcelormittal.me>.
Again, the Respondent does not claim to be commonly known by the name “Aditya Mittal”, so paragraph 4(c)(ii) of the Policy cannot provide any right or legitimate interest. The Respondent has not been authorized by any of the Complainants to register this Domain Name, and he has not contended that he has been using it in connection with any bona fide offering of goods or services, such as might have provided a right or legitimate interest under paragraph 4(c)(i) of the Policy. Indeed, the evidence is clear that he has not been doing so: the Respondent's use of the adityamittal website for the provision of sponsored links to third party websites cannot, on its own, constitute a use in connection with a bona fide offering by the Respondent (see in that regard Trade Me Limited v Vertical Axis Inc, WIPO Case No. D2009-0093). Further, there is no evidence of the Respondent having any intention to create a genuine website of his own at this Domain Name. Indeed, the Domain Name <adityamittal.me> has recently been offered for sale for $20,000, and the Respondent now says that it was his intention to allow the Domain Name to expire.
In combination, those circumstances constitute sufficient prima facie proof that the Respondent has no right or legitimate interest in respect of this Domain Name.
The Respondent's only answer to the Complaint is his argument that rights in a MITTAL trademark should not prevent anyone from registering a longer expression such as <adityamittal.me> as a domain name. That is not enough to establish a right or legitimate interest in the Domain Name, especially in circumstances such as the present, where the Respondent appears to have been deriving pay-per-click revenue from the adityamittal website pending a sale of the Domain Name at a substantial profit. The Respondent has failed to show that he has any relevant right or legitimate interest in respect of the <adityamittal.me> Domain Name.
Again, the Respondent does not claim to be commonly known by the Domain Name “Vanisha Mittal”, so paragraph 4(c)(ii) of the Policy cannot provide any basis for a claim to a right or legitimate interest. The Respondent has no registered or other trademark rights in respect of this Domain Name, and ArcelorMittal has not authorized the Respondent to use the MITTAL mark in this Domain Name. The Respondent has not denied falsely using the name of the Complainant Vanisha Mittal as the registrant for this Domain Name, and in his email communication to the Center dated May 31, 2010, he noted that he did not wish to renew the Domain Name.
That combination of circumstances sufficiently establishes a prima facie case of “no right or legitimate interest”, and again, the Respondent has failed to rebut that prima facie proof.
The Domain Name <vanishamittal.me> has been pointing to the vanishamittal website, where text focusing on the Complainant Vanisha Mittal is plainly designed to provoke an offer to buy the <vanishamittal.com> domain name (see for example the text “vanishaMittal.com – break the record of the Business.com? We'll see!”).
There is nothing in the evidence which might conceivably provide the Respondent with a right or legitimate interest in respect of the <vanishamittal.me> Domain Name. Indeed, the Panel concludes that the Respondent's registration and use to date of this Domain Name has been bad faith registration and use. The reasons for that conclusion are set out in the next section of this decision. It follows that the Respondent's use of this Domain Name has been neither bona fide nor fair or legitimate, and that there is no room for any “right or legitimate interest” defense.
The Respondent having failed to show that he has any right or legitimate interest in any of the Domain Names, the Complainants also succeed on this part of their Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line 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.
The Complainants succeed on this part of the Complaint also, in respect of all three Domain Names. The Panel is satisfied, for the following reasons, that the Domain Names have all been registered and used in bad faith.
1. The Domain Name <arcelormittal.me> is confusingly similar to ArcelorMittal's mark ARCELOR MITTAL, while the Domain Names <adityamittal.me> and <vanishamittal.me> are confusingly similar to ArcelorMittal's MITTAL mark.
2. The Respondent has not attempted to make any claim to a right or legitimate interest in any of the Domain Names. He has confined his Response to an argument that a right in the mark MITTAL does not provide a sufficient basis for the Complainants to recover domain names consisting of the longer expressions “adityamittal” and “vanishamittal”. The Panel has held that ArcelorMittal's rights in its MITTAL mark are sufficient for it to meet the test prescribed by paragraph 4(a)(i) of the Policy, and thereafter the focus shifts to the Respondent. Why did he register these Domain Names? Did he have some legitimate interest in them, or was he motivated by some bad faith purpose? The Respondent has not attempted to answer those questions.
3. The Respondent has not denied that he has derived revenue from the sponsored links from the arcelormittal website to third party websites. In those circumstances, the Panel is satisfied that, by using the <arcelormittal.me> Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the arcelormittal website, by creating a likelihood of confusion with ArcelorMittal's ARCELOR MITTAL mark, as to the source, sponsorship, affiliation, or endorsement of the arcelormittal website. That constitutes bad faith registration and use of the <arcelormittal.me> Domain Name under paragraph 4(b)(iv) of the Policy.
4. Likewise, the Respondent has not denied that he has derived revenue from the sponsored links from the adityamittal website to third party websites. Again in the absence of any denial or explanation from the Respondent, the Panel is satisfied that, by using the <adityamittal.me> Domain Name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the adityamittal website, by creating a likelihood of confusion with ArcelorMittal's MITTAL mark, as to the source, sponsorship affiliation, or endorsement of the aditymittal website.
5. The <vanishamittal.me> Domain Name has been used as a pointer to the <vanishamittal.com> website, where the <vanishamittal.com> domain name is offered for sale. The Respondent's intention appears to have been to attempt to embarrass the Complainant Vanisha Mittal and the Mittal family in general, by highlighting the gap between their wealth and the plight of the needy people of the world, all with a view to provoking a substantial offer from the Complainants to gain control of the <vanishamittal.com> domain name. If the Respondent's intention was to provoke an offer from ArcelorMittal to acquire the domain name <vanishamittal.com>, the likelihood is that the Respondent had the same intention for the Domain Name <vanishamittal.me> - he would have appreciated that there would be no point in the Complainants paying him a substantial sum of money to acquire the <vanishamittal.com> domain name while at the same time leaving the vanishamittal website in place and accessible through the <vanishamittal.me> Domain Name. Logically, the Respondent's expectation would have been to sell both of the “vanishamittal” domain names to ArcelorMittal.
6. While the Respondent has used the names of two members of the Mittal family in the Domain Names, it appears to the Panel that the primary target was probably the company ArcelorMittal. First, the <arcelormittal.me> Domain Name is identical to that company's international trademark registration. Secondly, the adityamittal website contains substantial material relating to ArcelorMittal and its operations, and the <vanishamittal.me> Domain Name resolves to a website at which ArcelorMittal's corporate logo has been reproduced. The use of that corporate logo suggests to the Panel that the intention was probably to “bait” ArcelorMittal rather than Vanisha Mittal herself.
7. In the foregoing circumstances, the Panel is satisfied that the Respondent registered the Domain Name <vanishamittal.me> primarily for the purpose of selling or transferring it to ArcelorMittal, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name. ArcelorMittal being the proprietor of the MITTAL trademark, those circumstances are caught by paragraph 4(b)(i) of the Policy.
8. The Respondent has used false or misleading registration details for the Domain Names, particularly in using the name of the Complainant Vanisha Mittal as the registrant of the <vanishamittal.me> Domain Name. He has offered no explanation for so doing, and the Panel can only sensibly infer that he has done so in an attempt to conceal his true identity and so avoid or delay this proceeding. The provision of false registration information is a common indicator of bad faith intention – see, for example, Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000-0003.
9. The Respondent has also deliberately copied the ArcelorMittal logo onto the vanishamittal website, in an apparent attempt to falsely create the impression of some sort of legitimate association with ArcelorMittal.
10. The Panel's views as set forth above are reinforced by the uncontradicted evidence that a registrant or registrants having the same email address as the Respondent in this case, has or have registered as domain names in the .me space, the names of other famous persons with whom the Respondent could not be expected to have any connection – the movie star Al Pacino, and the Brazilian Formula One motor racing driver, Felipe Massa. It is difficult to imagine why anyone with good intentions would have registered those domain names, and the Panel is left to infer (in the absence of any explanation from the Respondent) that the Respondent probably acquired these domain names, as well as the Domain Names, with a view to making a profit by selling them to the individuals or trademark owners concerned. The Respondent might have intended to benefit the poor by making the proceeds of the sales available to his church, but if so, that would not be a matter for the Panel to take into account in a complaint under the Policy: the important matter under paragraph 4(b)(i) of the Policy is whether, in registering the Domain Names, the Respondent intended to sell them to ArcelorMittal at a profit. If that was his intention, what the Respondent might or might not have done with the proceeds of any such sale is neither here nor there.
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, <adityamittal.me>, <arcelormittal.me> and <vanishamittal.me> be transferred to the Complainant ArcelorMittal SA.
Dated: July 30, 2010
1 The Panel's reasons are set out in detail in the related case of Vanisha Mittal v firstname.lastname@example.org, WIPO Case No. D2010-0810, where on evidence very similar to that provided in the present case, the sole Complainant Vanisha Mittal failed to establish that she enjoys trademark or service mark rights in her personal name.