WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ArcelorMittal (Societe Anonyme), Mittal Steel Technologies Limited, now incorporated as part of LNM Technologies Ltd and Mr. Lakshmi Mittal v. Mr. Shahab Hanif, California Limited, Mittal Gold Ltd.
Case No. D2013-0186
1. The Parties
Complainants are ArcelorMittal (Societe Anonyme) of Luxembourg, Mittal Steel Technologies Limited, now incorporated as part of LNM Technologies Ltd of Ebene, Mauritius and Mr. Lakshmi Mittal of London, the United Kingdom of Great Britain and Northern Ireland (“UK”).
Respondent is Mr. Shahab Hanif, California Limited, Mittal Gold Ltd. of London, UK.
2. The Domain Names and Registrar
The disputed domain names <mittalbank.com> and <mittalgold.com> are registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. The Center received several informal email communications from Respondent on February 2, 5, 7 and March 11, 2013. The formal Response was filed with the Center on February 25, 2013.
The Center appointed Mark Partridge as the sole panelist in this matter on March 11, 2013. 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.
Respondent additionally has sent Supplemental filings on March 15, 21 and 24, 2013. Respondent was made aware of the February 25, 2013 deadline for a formal response, but pursuant Paragraphs 10 and 12 of the Rules, this Panel deems these Supplemental Filings as admissible and has considered these filings in his Decision.
After considering the initial and supplemental submissions of the parties, the Panel issued a Procedural Order on April 30, 2013, seeking additional evidence and argument. Materials submitted within the deadlines stated in that order have also been considered for this Decision.
4. Factual Background
Complainant ArcelorMittal is the successor of Mittal Steel Technologies Limited and was founded by Lakshmi Mittal in 1976. ArcelorMittal has since become one of the world’s largest steel producers. Since the merger of Arcelor and Mittal Steel in 2006, Complainant has been using the mark MITTAL mainly in connection with its steel production business. Complainant owns seventeen UK trademark registrations consisting of, or containing, the MITTAL mark, with use dating from at least the merger in 2004. Complainant also owns the domain names <mittalsteel.com> and <arcelormittal.com>, the first being registered on November 21, 20041 and the latter on January 27, 2006.
Respondent registered the disputed domain name <mittalgold.com> on August 28, 2009 and the disputed domain name <mittalbank.com> on January 19, 2010. The disputed domain name <mittalgold.com> does not currently link to a displayable website page and therefore does not function. The disputed domain name <mittalbank.com> displays an image for a “Mittal Bank” logo but does not link to any other websites or pages.
Respondent applied for a UK trademark registration for the “Mittal Gold” logo in August 2011. Complainants opposed Respondent’s application in February 2012.
Respondent officially incorporated the business “Mittal Gold Limited” in May 2012.
5. Parties’ Contentions
Complainants contend that the disputed domain names are confusingly similar to the both word marks and the current domain names registered by Complainants. Complainants further allege that Respondent does not have any rights or legitimate interests in respect to the disputed domain names, and that the disputed domain names were registered and are being used in bad faith by Respondent.
Complainants allege in August 2009, Respondent rented an office in the same building as Complainants’ registered office and service center in London, UK. Respondent used his building security pass to make several unsolicited and uninvited attempts to meet with Mr. Lakshmi Mittal, founder and current CEO of the Complainants, to discuss plans for his venture, “Mittal Bank.” After being told by Complainants’ receptionists to stop coming to their offices, building security were asked to talk with Respondent and tell him not to use his building security pass to access Complainants’ offices.
In September 2009, Complainant had its external lawyers write to Respondent and threaten him with legal actions if he continued in his plans for “Mittal Bank.” Respondent replied to these requests in October 2009 stating that he had terminated his plans for “Mittal Bank.”
Between February and December of 2012, Complainants allege that following the opposition of Respondent’s trademark application for “Mittal Gold”, Respondent sent numerous messages to Complainants’ legal representatives, mentioning his plans to develop “Mittal Gold” into an online luxury jewelry shop and offering various solutions to settle the dispute. Such solutions included selling the disputed domain names from five GBP to six million GBP and exchanging the disputed domain names for a share of Complainants’ profits or revenues. In their correspondences, Respondent’s emails cited to outside buyer interest as the reason for the fluctuating prices, but Complainants viewed the fluctuating prices as extortion.
Respondent contends the disputed domain names are not identical or confusingly similar to any trademarks in which Complainants have rights. Respondent cites to other companies that utilize the MITTAL mark in their company names, such as Mittal Corp Limited, Mittal Builders, and Mittal Brothers. Respondent additionally cites to the name “Mittal” being a common last name.
Respondent contends that Complainants cannot show a lack of legitimate interest in the disputed domain name because Respondent has (a) made demonstrable preparation to use the disputed domain names for a bona fide business purpose and (b) properly applied for trademark registration in the word “mittal gold”. Respondent supports this contention with a certificate of incorporation for “Mittal Gold Limited” dated May 2, 2012; the physical application for the mark MITTAL GOLD attributing five separate international classes for goods and services; alleged conversations with Pramod Mittal, the brother of the third Complainant; and alleged expenditures of GBP 7,000 and twelve weeks of work
Respondent also contends that it has not registered and used the disputed domain names in bad faith because (a) he has evidence that he obtained proper approval to use the Mittal name from Pramod Mittal, brother of the third Complainant and (b) any monetary offers for the disputed domain name <mittalgold.com> arose after potential dispute arose, and any such offers were for the sole purpose of settling the dispute. Respondent contends that outside of these settlement offers, he did not attempt to sell the disputed domain name.
C. Procedural Order and Additional Submissions
After receiving Respondent’s unsolicited supplemental submissions, the Panel issued a Procedural Order seeking “documentation providing competent evidence” regarding:
1. Any demonstrable preparations or plan to use the disputed domain names in connection with a bona fide offering of goods or services before any notice of Complainants’ objections to such plan;
2. Respondent’s claim that it spent GBP 7,500 in for graphics and printing in connection with a plan to make bona fide use of the disputed domain names; and
3. The consent and cooperation of Pramod Mittal for use of the Mittal name.
The Panel also admonished Respondent to comply with paragraph 8 of the Rules, which prohibits unilateral or direct communications with the Panel.
Respondent provided additional argumentative submissions in response to the Procedural Order. However, the Panel finds that Respondent failed to provide any competent evidence on the specific points identified and therefore conclude that Respondent did not have a demonstrable plan prior to notice of Complainants’ objections; that Respondent’s claim of expenses is without support; and that Respondent lacked any colorable consent to use of the Mittal name.
Rather than providing a substantive response, Respondent has sent numerous email messages with irrelevant statements, pejorative assertions or hominine attacks. These submissions fail to advance its cause. Those provided within the additional deadlines set by the Procedural Order have been considered and found wanting. Those after the deadlines have not been considered.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following three elements in order to be entitled to the relief sought:
(i) That the domain name registered by the respondent 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 domain name; and,
(iii) That the domain name has been registered and used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the respondent has rights and legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and the use of a domain name in bad faith.
A. Identical or Confusingly Similar
The MITTAL mark is prominently used in the disputed domain names. Although the MITTAL mark may be used by the additional businesses mentioned by Respondent, the MITTAL mark is still entitled to protection due to its numerous trademark registrations in the UK.
Previous UDRP panels have held that incorporating a distinctive mark in its entirety creates sufficient similarity between the mark and the domain name to render it confusingly similar. See e.g. General Motors LLC v. Sefa Yapici, WIPO Case No. D2010-2230; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D2000-0721; and CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065.
Additionally, numerous UDRP panels have held that a domain name is not any less “identical or confusingly similar” if a trademark is modified with generic or common terms, especially in using words such as “gold” or “bank” in situations similar to this case. See e.g. Wal-Mart Stores, Inc. v. Excel Stock Exchange, WIPO Case No. D2002-0966 (transferring <wal-martbank.com>, <wal-martbank.net>, and <walmartbank.net>); Sharman License Holdings, Limited v. Kazagold, WIPO Case No. D2004-0396 (transferring <kazaa-gold.com> and <kazaagold.com>); and La Société des Bains de Mer et du cercle des étrangers à Monaco v. Around pacific, WIPO Case No. D2008-1616 (transferring <casino-monaco-gold.com>).
Accordingly, in line with previous decisions, the Panel finds that the disputed domain names are confusingly similar to a mark in which Complainants have rights and that Complainants have met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In connection with Paragraph 4(a)(ii) of the Policy, the Panel finds that Complainants have rights and legitimate interests in the MITTAL mark, as indicated by the seventeen trademark registrations in the Complaint. Using paragraph 4(c) of the Policy as a guideline, this Panel finds that Respondent cannot demonstrate his rights or legitimate interests in the disputed domain names.
Respondent alleges that he was granted permission to use the MITTAL name after several conversations with Pramod Mittal, brother of the third Complainant, and Pramod’s personal assistant. However, Complainants allege that, in contrast to Respondent’s claims, no one connected with Complainants, including Pramod Mittal and his personal assistant, permitted Respondent to use the Mittal name. Respondent’s only support for this allegation is an email in which Respondent describes the conversations and meetings he had with Pramod Mittal and Pramod’s personal assistant. Because no further support regarding this allegation was provided by Respondent in his Response or Supplemental Filings, the Panel cannot find that Complainants granted any rights to the Mittal name to Respondent.
Respondent has not made any showings in his Response or Supplemental Filings that his disupted domain names are in connection with a bona fide offering of goods or services. The evidence of any offering of goods and services are as follows: (1) Complainants’ allegation of Respondent’s mentioning of an “online luxury jewelry shop” in his correspondences with Complainants’ legal representatives in May 2012; (2) the five goods and services mentioned in Respondents trademark application for MITTAL GOLD, and; (3) Respondent’s incorporation papers from May 2012. Respondent’s Response and Supplemental Filings focus mainly on the common nature of the word “Mittal” and his allegation of obtaining permission from the third Complainant’s brother to utilize the MITTAL mark in his business. Additionally, the disputed domain names do not link to any website pages describing the business and its services. Based on these facts, this Panel cannot find that the disputed domain names are in connection with any bona fide offerings of goods or services.
Respondent has not made any showings in his Response or Supplemental Filings that he as an individual or his business are commonly known by the disputed domain names. Respondent’s name does not contain the word “Mittal,” and Respondent does not provide any allegations or evidence that he could be known by that name. Additionally, Respondent’s business was incorporated over two years after the disputed domain names were registered and after the Respondent was aware of the Complaint and its marks. See America Móvil, S.A.B. de C.V. v. Claro GmbH & Co. KG, WIPO Case No. D2008-1770. Therefore, the Panel finds that neither he nor his business was commonly known by either of the disputed domain names.
Despite invitations to support its allegations with competent evidence, Respondent has failed to show demonstrable preparations to make bona fide use of the disputed domain names prior to any objection by Complainants. Given that Respondent was specifically given the opportunity to submit such evidence, the Panel finds the failure to do so to be particular telling and supportive of the conclusion of bad faith stated below. Respondent may claim it had such plans, but its inability to provide evidence, after being given ample chance to do so, undermines its protests to the contrary and instead supports the conclusion that Respondent pursued the disputed domain names in bad faith.
Respondent has not made any showings in his Response or Supplemental Filings that support a legitimate noncommercial or fair use of the disputed domain names.
In his Response, Respondent does make an allegation as to the amount of money (GBP 7,000) and time (twelve weeks) spent in developing the “Mittal Bank” venture. Although requested to do so, Respondent has not provided competent evidence to corroborate this.
Utilizing these three factors laid out in paragraph 4(c) of the Policy, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Complainants have alleged several facts in regard to Respondent’s bad faith, specifically:
1) Respondent’s rental of an office in the same building as Complainant’s registered office and service center in London, UK, for the sole purpose of making unsolicited and uninvited attempts to meet with Complainants in August 2009;
2) Respondent’s termination of plans for “Mittal Bank” in October 2009, which was followed by Respondent’s registration of the disputed domain name <mittalbank.com> in January 2010, a trademark application for MITTAL GOLD in August 2011, and incorporation of “Mittal Gold Limited” in May 2012;
3) Respondent’s correspondence with Complainants’ legal representatives between February and December of 2012, where Respondent attempted to settle the dispute by offering to transfer the disputed domain names and trademark applications to Complainants in exchange for money (up to GBP six million) or share of Complainants’ profit or revenue
Respondent has failed to present competent evidence to rebut these points.
Based on the record presented, the Panel concludes that it is more likely than not that Respondent registered the disputed domain names for the purpose of selling, renting, or transferring the domain name registrations to Complainants for valuable consideration in excess of his out-of-pocket costs related to the disputed domain names. Such conduct supports a finding of bad faith registration and use under paragraph 4(b) of the Policy.
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 names <mittalbank.com> and <mittalgold.com> be transferred to the Complainant.
Date: May 20, 2013
1 Complainant mistakenly listed the registration date as January 3, 2003.