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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. WhoisGuard Protected, WhoisGuard, Inc. / Matt Calton

Case No. D2020-3112

1. The Parties

The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Matt Calton, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <arcelorrmttal.com> (the “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 November 19, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2020 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 November 23, 2020.

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 November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on January 11, 2021. 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

Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.

The Complainant is an international steel and mining company headquartered in Luxembourg. It is the result of a merger between Arcelor and Mittal Steel Company which took place in 2006.

The Complainant is the owner of several trademarks for ARCELORMITTAL including the following:

- United States Patent and Trademark Office (USPTO) Trademark ARCELORMITTAL, registration no. 3643643, registered on June 23, 2009; and

- United States Patent and Trademark Office (USPTO) Trademark ARCELORMITTAL, registration no. 3908649, registered on January 18, 2011.

The Complainant is also the owner of several domain names reflecting its trade mark.

The Domain Name was registered on September 18, 2020, and the Domain Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the ARCELORMITTAL, trade mark in which the Complainant has rights. According to the Complainant, the Domain Name is a deliberate misspelling of the Complainant’s ARCELORMITTAL trade mark as it only differs from the ARCELORMITTAL trade mark by two letters. The Complainant also highlights that the addition of the generic Top-Level Domain (“gTLD”) “.com” is merely a registration requirement and that it should be disregarded for the purpose of assessing similarity.

The Complainant asserts that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant declares that it has not given to the Respondent any permission to use the Complainant’s trade mark in any manner. The Complainant also stresses that the Respondent is not commonly known by the Domain Name. In addition, the Complainant considers that the Domain Name was not used, prior to notice of the dispute to the Respondent, in connection with a bona fide offering of goods or services as it used to redirect internet users to a website with links to third party websites, which the Complainant believes would have generated pay-per-click revenue. Finally, the Complainant points to the current inactive use of the website to conclude that the Respondent is not making a legitimate non‑commercial or fair use of the Domain Name. The Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant contends that, at the time of registration of the Domain Name, the Respondent knew or should have known of the existence of the Complainant’s trade marks and that registration of domain names containing well-known trade marks constitutes bad faith per se. The Complainant stresses that typosquatting itself is indicative of bad faith registration and use. The Complainant argues that the Respondent is attempting to take advantage of traffic generated by typing errors of internet users looking for the Complainant’s website. According to the Complainant, the Respondent is creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the website to which the Domain Name points. In addition, the Complainant considers that the current passive use of the Domain Name constitutes, given the overall circumstances, use in bad faith. Finally, to conclude on bad faith, the Complainant points to the use of a privacy service to register the Domain Name and also to the absence of response to the Complainant’s cease and desist letter. The Complainant thus contends that the Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that 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.

In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in ARCELORMITTAL.

The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark ARCELORMITTAL in which the Complainant has rights.

At the second level, the Domain Name consists of the term “arcelorrmttal”. The Panel finds that upon carrying out a side-by-side comparison of the Domain Name and the textual components of the trade mark ARCELORMITTAL, the Complainant’s trade mark is clearly recognizable within the Domain Name. The first seven letters of the Domain Name are identical to the first seven letters of the trade mark ARCELORMITTAL and then there is an extra “r” after “arcelor” and the “i” in “mittal” has been omitted. The Panel finds that the two character difference between the trade mark ARCELORMITTAL and the Domain Name constitutes an example of typosquatting and does not dispel the confusing similarity between the Complainant’s trade mark and the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. Furthermore, recognizability of the Complainant’s trade mark is also confirmed by technological means as, when searching for the term “arcelorrmttal” via Google, all results triggered relate to the trade mark ARCELORMITTAL.

Then there is the addition of the gTLD “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.

Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or

(iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

Numerous previous panels have found under the UDRP that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name.

The Complainant has stated that it does not know the Respondent and that it has not licensed or otherwise authorized the Respondent to make any use of its trade mark ARCELORMITTAL. There is no indication that the Respondent is commonly known by the Domain Name.

According to the Complainant, before notice of the dispute, the Domain Name used to point to a page mainly consisting of pay-per-click links, and later resolved to an inactive website. Given the failure of the Respondent to rebut the Complainant’s assertions, the Panel finds that there is no indication that the Domain Name was used in connection with a bona fide offering of goods or services before notice of the dispute.

In any event, the current absence of use of the Domain Name does not substantiate a finding that the Respondent would be making a legitimate non-commercial or fair use of the Domain Name.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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) [the respondent has] registered the domain name in order to prevent the owner of the trade mark 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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.

Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.

The Domain Name is confusingly similar to the trade mark ARCELORMITTAL of the Complainant and this cannot be a coincidence.

The thirteen-letter-long trade mark ARCELORMITTAL is the combination of the names of the two corporate entities that merged in 2006 to form the Complainant. To the best of the Panel’s knowledge and as substantiated by the Complainant in the Complaint the term “arcelormittal” is not a descriptive or common term but instead it is a highly distinctive term, strongly referring to the Complainant. The Complainant, citing previous UDRP panels, has substantiated the international renown of the trade mark ARCELORMITTAL. In light of this, the Panel finds it inconceivable that the Complainant would not have been well aware of the Complainant and its trade mark at the time of registration of the Domain Name. The Panel finds that when registering the Domain Name, the Respondent had the Complainant’s trade mark in mind and targeted it specifically. This is even more likely given that the Domain Name was registered very recently and many years after the registration of the trade marks ARCELORMITTAL listed in the Complaint. Furthermore, the typosquatting of the Complainant’s well-known trade mark supports an inference of bad faith. See WIPO Overview 3.0, section 3.2.1.

Thus, the Panel finds that the Domain Name was registered in bad faith.

As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is used in bad faith.

The Domain Name appears to be passively held. Passive use itself does not cure the Respondent’s bad faith given the overall circumstances here, specifically the significant international renown of the Complainant’s trade mark.

In addition, truncated screen captures provided in the Annexes, whilst not dated, show that the Domain Name was used at some point to direct to a page that is very typical of a parking page with pay-per-click links. Such prior use is not indicative of a good faith use of the Domain Name in these circumstances.

The fact that the Respondent chose not to respond to the Complainant’s cease and desist letter or to object to the Complainant’s assertions affirms the Panel’s view that the Domain Name is used in bad faith.

Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.

Thus, the Panel finds that the Domain Name is being used in bad faith.

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 Domain Name <arcelorrmttal.com> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: February 3, 2021

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