WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal S.A. v. Ram Mittal
Case No. D2016-0449
1. The Parties
The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Ram Mittal of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <mittal-investment.com> is registered with Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2016.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on April 11, 2016. 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 proprietor of the trademark MITTAL, registered in various countries, for example as the European Union Trade Mark No. 003975786 on February 20, 2006.
The disputed domain name was registered on January 14, 2016. The website at the disputed domain name is currently inactive.
5. Parties' Contentions
The Complainant is a multinational steel manufacturing corporation and owns several trademark registrations as well as domain names for the trademarks MITTAL and ARCELORMITTAL.
The Complainant's trademark is incorporated in its entirety in the disputed domain name. The inclusion of the generic term "investment" is not sufficient to exclude likelihood of confusion to the Complainant's trademark and creates a risk of confusion with the Complainant's subsidiary Mittal Investments UK Ltd.
The Complainant does not have any business with the Respondent. The Complainant has not licensed or otherwise authorized the Respondent to use the trademark MITTAL or the disputed domain name. Hence the Respondent has no rights or legitimate interests to the disputed domain name.
The Complainant's trademark MITTAL is worldwide well-known. The Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark and reputation. The website to which the disputed domain name resolves is in passive holding. Hence the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Under the second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. According to the third element a complainant must establish that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has shown that it is the proprietor of the registered trademark MITTAL. The disputed domain name includes the trademark in its entirety and combines it with the descriptive word "investment".
In accordance with paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), noting that the disputed domain name consists of the Complainant's trademark along with a descriptive word, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has submitted that it is not affiliated with the Respondent, it has not authorized the Respondent to use the trademark MITTAL or the disputed domain name, and that the Respondent is not commonly known by the disputed domain name. The Respondent has not rebutted these arguments.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that [the respondent has] registered or has acquired the 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 trademark 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 trademark 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 or 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 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 Panel agrees that the Complainant is one of the world's best-known steel manufacturers. Hence it is unlikely that the Respondent would not have been aware of the Complainant and its trademark when registering the disputed domain name.
The Complainant has submitted that the passive holding of the disputed domain name amounts to use of the disputed domain name in bad faith. According to paragraph 3.2 of the WIPO Overview 2.0, the consensus view of panellists it that passive holding does not as such prevent a finding of bad faith.
Considering all the circumstances of the case, namely that the Complainant's trademark is widely known, the disputed domain name does not resolve to any website, and that the Respondent has not filed a response to the Complaint, it is unlikely that the Respondent has had any good faith use of the disputed domain name in mind.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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, <mittal-investment.com> be transferred to the Complainant.
Date: April 22, 2016