WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal S.A. v. Registration Private, Domains By Proxy, LLC / Robert Brouwers
Case No. D2016-2444
1. The Parties
Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Robert Brouwers of Saint-Chamond, France.
2. The Domain Name and Registrar
The disputed domain name <arcelormittal-woiwer.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint in French was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Registrar also noted that the language of the Registration Agreement was English. The Center sent an email communication to Complainant on December 8, 2016 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint, which the latter did on December 8, 2016.
Again on December 8, 2016, the Center sent a communication to the Parties, inviting Complainant to either submit satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in French, or to submit the Complaint translated into English, or to submit a request for French to be the language of the administrative proceedings. Respondent was at the same time invited to submit comments. On December 8, 2016, Complainant submitted a request for French to be the language of the proceedings. Respondent did not comment on the language of the proceedings.
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, in English and French, formally notified Respondent of the Complaint, and the proceedings commenced on December 16, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was January 5, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 6, 2017.
The Center appointed Bernhard F. Meyer as the sole panelist in this matter on January 16, 2017. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.
4. Language of the Proceeding
As to the language of the proceeding, paragraph 11(a) of the Rules provides the following: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
As mentioned above, the Registration Agreement in this case is in English, not French. But Complainant submitted its Complaint in French, and requested that French be the language of the administrative proceeding when it was informed by the Center that the Registration Agreement was in English. In addition, there is a parallel and related UDRP case pending between the same Parties before the same Panelist on a very similar domain name (Arcelormittal S.A. v. Robert Brouwers, WIPO Case No. D2016-2429) and, in such other proceeding, the Panelist determined English to be the applicable language. Thus, in accordance with paragraph 11(a) of the Rules, as well as for convenience and consistency reasons, the language in this proceeding shall remain the one of the Registration Agreement and this decision is issued in English.
In light of the foregoing, in order not to unduly delay the present proceeding, and in consideration of Respondent's failure to participate in the proceeding, the Panelist accepts the Complaint submitted in French.
5. Factual Background
Complainant, ArcelorMittal S.A., is one of the world's largest steel producing companies and a significant producer of iron ore and coal. Seated in Luxembourg, it maintains and operates an extensive distribution network with operations around the globe.
Complainant is the owner of the trademark ARCELORMITTAL – international trademark registration number 947686, registered on August 3, 2007, and others. Moreover, Complainant is the holder of various domain names comprising its trademark.
The disputed domain name was registered on November 18, 2016.
6. Parties' Contentions
Complainant claims, that despite the addition of the term "woiwer", the disputed domain name <arcelormittal-woiwer.com> is confusingly similar to its trademark ARCELORMITTAL. According to Complainant, the term "WOIWER" refers to a former subsidiary of Complainant, which until August 1, 2016 bore the name ArcelorMittal Woiwer S.A., and was specialized in the treatment of metal waste.
Furthermore, Complainant states that Respondent has no rights or legitimate interest in the disputed domain name.
Finally, Complainant claims that Respondent never actively operated a website under the disputed domain name. In this regard, Complainant states that Respondent's registration and passive holding of the disputed domain name are in bad faith.
Respondent did not reply to Complainant's contentions.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, notwithstanding Respondent's default, Complainant must establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel reviews the different elements in the following.
A. Identical or Confusingly Similar
The disputed domain name <arcelormittal-woiwer.com> consists of the mark ARCELORMITTAL, a hyphen "-" and the element "woiwer".
It is the Panel's view that the mere addition of the two above features to Complainant's trademark are not sufficient to prevent the disputed domain name from being confusingly similar to that mark. Complainant's trademark remains the distinctive part of the disputed domain name when viewed as a whole. Moreover, Complainant's contention that it had a subsidiary with the name ArcelorMittal Woiwer S.A. until very recently remained uncontested. In line with previous UDRP decisions (see for instance Nikon Inc. and Nikon Corporation v. Technilab, WIPO Case No. D2000-1774), the Panel holds, that the disputed domain name is sufficiently similar to Complainant's trademark to justify moving on to the test of the remaining elements under the Policy.
The Panel holds that paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Complainant is required to make a prima facie case with regard to the lack of Respondent's rights or legitimate interests in the disputed domain name.
Complainant denies any connection whatsoever with Respondent and claims that Respondent intentionally registered a domain name with the purpose of preventing Complainant from registering a domain name reflecting its trademark. Moreover, Complainant asserts that the term "woiwer" refers to a former subsidiary of Complainant, ArcelorMittal Woiwer S.A.
Once Complainant sets forth a prima facie case, the burden of production of evidence of rights or legitimate interests in the disputed domain name shifts to Respondent. Respondent has made no attempt to demonstrate any of the defenses available under paragraph 4(c) of the Policy or to counter Complainant's assertions.
The Panel accepts that Complainant has established an unrebutted prima facie case and concludes that the requisites under paragraph 4(a)(ii) of the Policy are satisfied.
C. Registered and Used in Bad Faith
Complainant submitted evidence that was forwarded to the Panel that Respondent's website is inactive. Previous UDRP panels have found that the passive holding of a domain name confusingly similar to a well-known trademark indicates bad faith. However, the Panel is held to examine all relevant circumstances of a case to conclude bad faith registration and use by Respondent.
The Panel notes that Respondent registered the disputed domain name using a privacy service. Moreover, the attempt to send written notice of the present proceeding by courier to Respondent's stated address failed, due to an "incomplete/ wrong" address. Thus, Complainant's contention that the disputed domain name was registered by Respondent in bad faith seems convincing.
The above is substantive evidence for bad faith registration and use of a domain name. Respondent's attempt to mask its identity behind a privacy service and the use of an apparently phony address indicate that Respondent has no intention to use the disputed domain name for bona fide offering of goods and services. In addition, the element "woiwer" together with Complainant's trademark, in the disputed domain name, indicate that Respondent was aware of Complainant's business. It is totally unlikely that Respondent could have come up with the combination "arcelormittal-woiwer", had it not known of Complainant's company, its former subsidiary and its respective trademark rights.
The Panel finds such behavior to constitute bad faith registration and use of the disputed domain name under 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 name <arcelormittal-woiwer.com> be transferred to Complainant.
Date: January 30. 2017