WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal S.A. v. Ivan Rjabov
Case No. D2015-1431
1. The Parties
The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Ivan Rjabov of Vyshgorod, Kievskaja, Ukraine.
2. The Domain Names and Registrar
The disputed domain names <arcellarmittal.com>, <arcelormittalinternational.com> and <isdarcelormittal.com> (the “Domain Names”) are registered with Internet Invest, Ltd. dba Imena.ua (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2015. On August 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 14, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint, and confirming that language of the registration agreement for the Domain Names is Russian. The Center sent an email communication to the Complainant on August 17, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The same day, the Center sent a communication to the Parties, inviting the Complainant to provide evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, submit the Complaint translated into Russian, or submit a request for English to be the language of the proceeding. The Respondent was also given the opportunity to comment on the language of the proceeding. On August 18, 2015, the Complainant submitted a request that English be the language of the proceeding. The Complainant filed an amended Complaint on August 18, 2015. The Respondent did not comment on the language of the proceeding.
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 in English and Russian, and the proceeding commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2015.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 22, 2015. 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
The Complainant is the owner of a trademark registration for the word trademark ARCELORMITTAL, International registration No. 947686 dated August 3, 2007. The Complainant also owns the <arcelormittal.com> domain name.
The Respondent registered the Domain Names on July 30, 2015. The Domain Names resolve to identical websites consisting of one web page under title headings “Сайт ‘arcellarmittal.com’ создан/Website ‘arcellarmittal.com’ was created”, “Сайт ‘isdarcelormittal.com’ создан/Website ‘isdarcelormittal.com’ was created” and “Сайт ‘arcelormittalinternational.com’ создан/Website ‘arcelormittalinternational.com’ was created”, and some instructions in Russian and English about how to upload content to a web server.
5. Parties’ Contentions
A. Complainant
The Complainant claims that the Domain Names are confusingly similar to its ARCELORMITTAL trademark. The Complainant argues that the addition or substitution of letters or words, such as the “l” and the “a” in the domain name <arcellarmittal.com>, “isd” in the domain name <isdarcelormittal.com> and “international” in the domain name <arcelormittalinternational.com> is not sufficient to escape confusing similarity with the ARCELORMITTAL trademark. The Complainant alleges that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not prevent the likelihood of confusion between the ARCELORMITTAL trademark and the Domain Names.
The Complainant claims that the Respondent is neither affiliated with, nor authorized by the Complainant to use the ARCELORMITTAL trademark. The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Names and that he is not related to the Complainant’s business. The Complainant contends that the Respondent is not known by the Domain Names because the Respondent’s name, Private person 07717- Ivan Rjabov, is not similar to the Domain Names. The Complainant argues that while the Respondent passively holds the Domain Names, he could not have used the Domain Names without infringing on the Complainant’s rights in the ARCELORMITTAL mark. The Complainant contends that the Respondent registered the Domain Names to attract Internet users to his websites.
The Complainant contends that the Respondent has registered and is using the Domain Names in bad faith. The Complainant claims that the registration of the domain name <arcellarmittal.com> constitutes a clear case of typosquatting, which indicates bad faith registration of the Domain Name. The Complainant asserts that all of the Domain Names resolve to parking pages. The Complainant argues that incorporation of a famous trademark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The Panel finds English to be an appropriate language for this proceeding based on the absence of any prejudice to the Respondent or any objection from the Respondent to use of English as the language of the proceeding.
Under paragraph 11 of the Rules, unless otherwise agreed to by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, which in this case is Russian. However, the Complainant submitted its Complaint in English and requested that English be the language of the proceeding because the Domain Names are registered using the Latin characters, English is the language most widely used in international relations and one of the working languages of the Center, and use of the Russian language as the language of the administrative proceeding will impose a significant burden on the Complainant. The Respondent did not object to, or comment on that request.
Based on the circumstances of this case, the Panel finds that English shall be the language of this administrative proceeding. First, the Domain Names consist of Latin characters rather than Cyrillic characters, which tends to show the Respondent’s familiarity with the English language. Second, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in both Russian and English languages. The Center advised the Respondent about the Complainant’s request for English as the language of the proceeding and invited the Respondent to comment on the Complainant’s request to use English as the language of the proceeding, but the Respondent chose not to object to the Complainant’s request. Finally, the Complainant is not familiar with the Russian language. The Complainant will be disadvantaged by being forced to translate the Complaint and accompanying documents into Russian.
6.2. Analysis of the Complaint
In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence1 each of the following UDRP elements2 :
(i) the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The evidence on record shows that the Complainant owns trademark registration for the word trademark ARCELORMITTAL.
The Domain Name <isdarcelormittal.com> and the Domain Name <arcelormittalinternational.com> are confusingly similar to the Complainant’s ARCELORMITTAL trademark because the Complainant’s trademark is the distinctive and prominent element of the Domain Names. Addition of letters “isd” or the dictionary word “international” to the ARCELORMITTAL trademark cannot prevent threshold Internet user confusion.3 The Domain Name <arcellarmittal.com> is the same as the Complainant’s ARCELORMITTAL mark, but for the addition in the Domain Name of a second “l” to the ARCELORMITTAL mark and the substitution of the letter “o” for the letter “a”. It is well established that adding the gTLD “.com” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.4
Therefore, the Panel finds that the Complainant has satisfied the first UDRP element by proving that the Domain Names are confusingly similar to the Complainant’s ARCELORMITTAL trademark.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant may make out an unrebutted prima facie showing that the Respondent has no rights or legitimate interests in the Domain Names.
The Panel finds that the Complainant has established a prima facie case showing that the Respondent has not rights or legitimate interests in the Domain Names. Under paragraph 4(c) of the UDRP, the Respondent may establish rights to or legitimate interests in the Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Names, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, the Complainant owns the ARCELORMITTAL trademark and it did not authorize the Respondent to use the trademark. The Respondent is neither affiliated, nor related to the Complainant’s business. The Respondent, named Ivan Rjabov is not known by the Domain Names. The Respondent registered the Domain Names as a private person and not for a business with a name similar to the Domain Names. Because the Respondent’s name is not similar to the Domain Names, the Respondent is not commonly known by the Domain Names. In addition, for two months since the date when the Respondent registered the Domain Names, he has not made “use of, or demonstrable preparations to use”, the Domain Names in connection with a bona fide offering of goods or services.5 While the Respondent is passively holding the Domain Names, the Panel can envision no use of the Domain Names that would amount to bona fide offering of goods or services. The registration of several Domain Names that are confusingly similar to the Complainant’s mark, including the Respondent making obvious and deliberate misspelling of ARCELORMITTAL mark while incorporating it to one of the Domain Names, justify the conclusion that the Respondent aimed at diverting Internet users from the Complainant’s website to the Respondent's websites.
The Panel, therefore, finds that the Complainant has satisfied the second UDRP element.
C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainant must prove that the Domain Names were registered and are being used in bad faith.
The Panel finds that the Domain Names were registered and are being used in bad faith. First, it is well-established that a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name demonstrates respondent’s bad faith6 . Here, the Respondent registered three Domain Names, which are similar to the Complainant’s ARCELORMITTAL trademark. Second, it is also well-established that typosquatting constitutes bad faith. See, Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 (where the panel found that typosquatting is virtually per se registration and use in bad faith). Therefore, the Domain Name <arcellarmittal.com> was registered and is being used in bad faith. Third, it is also well-established that passive holding of the Domain Names does not prevent finding of bad faith.7 The Respondent filed no response to the Complaint and provided false address in his registration information. Thus, cumulative evidence on file indicates bad faith registration and use.
The Panel, therefore, finds that the Complainant has satisfied the third UDRP element.
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 Names <arcellarmittal.com>, <arcelormittalinternational.com> and <isdarcelormittal.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: October 5, 2015
1 Paragraph 4.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 4(a) of the UDRP.
3 Paragraph 1.2, WIPO Overview 2.0.
4 Paragraph 1.2, WIPO Overview 2.0.
5 Paragraph 4(c)(i) of the UDRP.