WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal S.A. v. Navin Mandla
Case No. D2014-1677
1. The Parties
The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Navin Mandla of Kingston Upon Thames, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <lakshmimittal.london> is registered with Host Europe Group (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name was registered with it;
(b) the Respondent is listed as the registrant and providing the contact details;
(c) the language of the registration agreement is English; and
(d) the disputed domain name was registered on August 25, 2014.
In response to an email by the Center, the Complainant filed an amended Complaint on October 22, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2014. The Response was filed with the Center on November 12, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 24, 2014. 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
According to the Complaint, the Complainant is the largest steel making company in the world. It was formed in 2006 following the merger of Arcelor S.A. and Mittal Steel Company N.V. Sir Lakshmi Niwas Mittal, also known as Lakshmi Mittal, is the chief executive officer of the Complainant and owns more than 30 percent of the issued share capital in the Complainant.
Amongst other things, the Complainant owns three registered trademarks for MITTAL:
(a) Community Trademark No. 3975786 for iron, steel and other ferrous products in International Class 6 and associated services in International Class 40, registered on December 1, 2005;
(b) United Kingdom (UK) Trademark No. 2385750 for a range of goods and services registered in International Classes 16, 35 and 39, registered on December 7, 2007; and
(c) International Registration No. 1198046 also for goods and services in International Classes 6 and 40, registered on December 5, 2013.
The International Registration designates some 31 countries, but registration has not been completed, or finalized, in eight of those countries: New Zealand, Australia, United States of America, Islamic Republic of Iran, Singapore, Turkey, Republic of Korea and Japan. The Complainant also holds several domain names including <lakshmi-mittal.com> and <lakshmimittal.co.uk>.
The Respondent is a Hindu follower who has lived in London in the UK since 1973. At the time of the decision, the disputed domain name did not resolve to an active website. Annex 8 to the Complaint includes a print-out of the website to which the disputed domain name resolved shortly before the Complaint was filed. At that time, the website appeared to be a “parking page” with pay-per-click advertising to a number of sites which appear to be concerned mostly with property investment, finance or taxation although one of the links is simply “Lakshmi Mittal”. The print-out does not include print-outs of the pages linked from these links.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for MITTAL identified above. The Complainant also contends that the disputed domain name is identical to Sir Lakshmi Niwas Mittal’s name. Apparently, in support of that claim, the Complaint includes a print-out of the entry in Wikipedia for that gentleman. It would appear from that entry that, in addition to his status as the chief executive officer of the Complainant, Sir Lakshmi Niwas Mittal has achieved considerable recognition and even celebrity. For example, in 2006 he was named as the “Business Person of 2006” by the Sunday Times, Person of the Year by the Financial Times and “International Newsmaker of the Year” by Time magazine. Time magazine also included him in its list of 100 most influential persons in the world in 2007. He was named as 47th “Most Powerful Person” in Forbes magazine’s list of 70 “Most Powerful People” in 2012. According to the Wikipedia entry, Sir Lakshmi Niwas Mittal owns a 34 percent stake in Queens Park Rangers F.C. and funded his daughter’s wedding which “was the second most expensive in recorded history.” A number of other claims to fame or notoriety are also set out in the article.
It is not necessary for the Panel to rely on the Wikipedia entry for Sir Lakshmi Niwas Mittal to decide this part of the Complaint as, in the Panel’s view, the disputed domain name is confusingly similar to the Complainant’s registered trademarks.
The Complainant points out that the disputed domain name embodies the whole of its registered trademark MITTAL and the name “lakshmi” (apart from the Top-Level Domain extension, “.london”, which in accordance with usual practice can be disregarded for present purposes).
The Respondent, however, disputes a finding of confusing similarity stating that the disputed domain name consists of “Lakshmi” and “Mittal”: “Laksmi” being the name of, or derived from, the name of a Hindu goddess and “mittal” being a word in Hindi generally meaning “friendly” and often used as a girl’s name. According to the Respondent the expression as a whole may be translated into English as “friends of the female goddess, Lakshmi”.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In addition, this requirement under the Policy is not necessarily directed just to questions about trade origin. It is essentially a standing requirement to enable identification of those who may invoke the Policy to prevent extortionate or opportunistic practices which may harm the trademark owner or take advantage of the trademark owner’s rights.1
In the present case, the Panel considers that there is sufficient correspondence between the Complainant’s registered trademarks to warrant a finding of confusing similarity. The arguments raised by the Respondent are better addressed under the other limbs of the Policy. While it is the second “half” of the disputed domain name, the term “mittal” is nonetheless a substantial and prominent part of the disputed domain name and it is, as the Complainant emphasizes the entirety of its registered trademarks. The degree of resemblance is of course even greater if it is permissible to take into account the personal name of the Complainant’s chief executive officer.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [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 trademark or service mark rights; or
(iii) [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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 2.0, paragraph 2.1.
It is not in dispute between the parties that the Complainant has not authorized or licensed the Respondent to use its trademark in the disputed domain name. Nor is the Respondent associated with the Complainant, or its business, in any way. Further, the disputed domain name is plainly not derived from the Respondent’s own name. These matters are sufficient to raise a prima facie case against the Respondent.
The Respondent instead states that he is a British born Hindu who has lived in London since 1973. Thus, satisfying the criteria for the “.london” domain name which he says is for (ideally) London based individuals and organisations. He says he obtained the disputed domain name:
“for the sole charitable benefit of the many Hindu Temples (and the charitable work they do worldwide in poverty stricken areas and for the benefit of children) in the United Kingdom and for its Hindu followers (of which he is one).”
As noted above, the Respondent points out that the disputed domain name consists of the name of a Hindu goddess and another word in Hindi which may be translated as “friendly” or as a female name. The Respondent also says that the disputed domain name is intended to be a website for the goddess Lakshmi and her followers (i.e. friends of the goddess) of which he is one.
Before the Complaint was filed, however, the disputed domain name resolved to a parking page with pay-per-click advertising. The Complainant says these links are in relation to the Complainant’s activities. It is not clear to the Panel from the print-out included in the Complaint or the statement of the nature of the Complainant’s business what the links are or how they relate to the Complainant’s business although one, “Lakshmi Mittal” would appear to be a link connected in some way with, or otherwise about, the Complainant’s chief executive officer. It is clear from the print-out nonetheless that the links are “sponsored” links or pay-per-click advertising.
The website then would not qualify as a noncommercial or fair use of the disputed domain name. It is also not at all clear how such usage sits with the Respondent’s stated aims for registering the disputed domain name. The print-out does feature a disclaimer:
“The sponsored links displayed above are served automatically by a third party. Neither Parkingrew nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”
The third sentence appears to contradict the intent of at least the second sentence. The Respondent states that, when he purchased the disputed domain name, it was automatically directed to the Registrar’s holding page and he has no input in the appearance or advertising. He directs the Panel to the Registrar’s website to confirm this.
There are two answers to this position. First, the website the Respondent has directed the Panel to, “www.123-reg.co.uk”, does not support his claim. Under the “domain name” tab, it states that the services provided free with every domain name registered with “123-reg” include “your own webpage”. Clicking on that link takes one to the “website builder” page which has “Build a website in 3 easy steps”: choose a template, add your content and publish your site. Another service offered is domain name parking. This is described as a service to enable domain name registrants to “make money from your unused domain names”. According to this page “It’s free to sign up at 123-parking, our dedicated domain name parking site” and also “Domain parking is FREE and really easy to set up” and “Ads on your domains make you money. We pay commission for every click.” (original emphasis) It therefore appears that the Respondent could have easily created his own default website, but has chosen to allow the disputed domain name to be used to generate commissions through pay-per-click advertising.
Second, and in any event, it is well established under the Policy that a domain name holder cannot avoid liability for the presence of pay-per-click advertising by relying on its provision by an unrelated third party or other lack of direct involvement in the selection of advertisers. If nothing else, the respondent chooses the registrar or domain name host in question and that selection includes choosing to abide the registrar’s policies.
In the present case, the website to which the disputed domain name resolved before the Complaint was filed would not appear to have had any connection with the goddess Lakshmi or the purpose (or either of the purposes) for which the Respondent states he registered the disputed domain name. The Respondent has not sought to explain what steps, if any, he has taken to put his claimed purpose into effect or what obstacles have prevented him from doing so other than it was automatically parked without his permission. Moreover, the Respondent has (at the least) allowed the disputed domain name to be used for the purposes of generating revenues through pay-per-click advertising. That advertising does not appear in any way directed to the goddess Lakshmi or the Hindu religion. Even if any commissions generated from the pay-per-click links were being used for the goddess’ charitable purposes, their generation would not derive from any obvious connection with the goddess or her temple. In these circumstances, the Panel cannot find that the disputed domain name was or is being used in connection with a bona fide offering of goods or services, or that preparations for such use are underway, and the Respondent has failed to rebut the prima facie cases established by the Complainant.
Accordingly, the Panel finds the Complainant has established the second requirement under paragraph 4(a) of the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent does not deny knowledge of the Complainant or its chief executive officer. On the record in this case, the Panel has not been able to accept the Respondent’s asserted justification for registering the disputed domain name. In the face of that rejection and the likelihood that the Respondent was aware of both Sir Lakshmi Niwas Mittal and the Complainant, the inference is that the Respondent registered the disputed domain name to take advantage of its association with the Complainant and the Complainant’s chief executive officer. Accordingly, the Panel finds that the disputed domain name has been registered in bad faith. The use of the disputed domain name for pay-per-click advertising as described also constitutes use in bad faith under the Policy.
Therefore, the Panel finds that the third requirement under paragraph 4(a) of the Policy has also been established.
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 <lakshmimittal.london> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 8, 2014
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 and David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, Oxford, 2007), 274 - 275.