WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal (SA) v. Whois Privacy Protection Foundation / Sommerstead Enterprises
Case No. D2019-2646
1. The Parties
The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Sommerstead Enterprises,
United States of America.
2. The Domain Names and Registrar
The disputed domain names <arcelormittal-file.com>, <arcelormittal-info.com>, <arcelormittal-rscle.com>, <arcelormittal-shared.com>, <arcelormittal-verify.com>, and <arcelormittal-view.com> are registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2019, 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 the same day. Two further amendments to the Complaint were received on November 6, 2019.
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 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 17, 2019. 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 a steel producing company and is a market leader in steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries.
The Complainant is the owner of numerous registrations of the trademark ARCELORMITTAL including inter alia international trademark registration No. 947686 ARCELORMITTAL registered on August 3, 2007, in international classes 06; 07; 09; 12; 19; 21; 39; 40; 41; and 42.
The disputed domain names were all registered on October 28, 2019, and are all currently inactive.
5. Parties’ Contentions
The Complainant contends:
(i) that the disputed domain names are confusingly similar to the ARCELORMITTAL trademark in which it has rights. The disputed domain names incorporates the ARCELORMITTAL trademark in its entirety and differs from the trademark only by the addition of the terms “file”, “info”, “rscle”, “shared”, “verify” and “view” respectively and the generic Top-Level Domain (“gTLD”) “.com”.
(ii) that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with the Complainant nor has the Respondent been authorized or allowed by the Complainant to make any use of its ARCELORMITTAL trademark. Also, the Respondent is not known under the name “Arcelormittal”;
(iii) that the disputed domain names were registered and are being used in bad faith. The Respondent must have registered the disputed domain names with knowledge of the Complainant’s trademark. The fact that the disputed domain names are currently not used actively by the Respondent does not prevent a finding of bad faith under the UDRP.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, 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.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names, <arcelormittal-file.com>, <arcelormittal-info.com>, <arcelormittal-rscle.com>, <arcelormittal-shared.com>, <arcelormittal-verify.com>, and <arcelormittal-view.com> are confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark ARCELORMITTAL because they contain the mark in its entirety with the addition of the terms “file”, “info”, “rscle”, “shared”, “verify” and “view” respectively. The gTLD “.com” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings. Moreover, the Panel finds that the composition of the disputed domain names is such that it effectively suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 websites or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, including the evidence on record of the registration and use of the Complainant’s trademark ARCELORMITTAL, and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose domain names, which based on their compositions could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The disputed domain names do not currently resolve to active websites. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See section 3.3 of the WIPO Overview 3.0.
Noting that the disputed domain names incorporate the Complainant’s distinctive trademark ARCELORMITTAL, together with the terms “file”, “info”, “rscle”, “shared”, “verify” and “view” and the gTLD “.com”, that no Response has been filed and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, and considering all the facts and evidence, the Panel finds that the disputed domain names have been registered and used in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <arcelormittal-file.com>, <arcelormittal-info.com>, <arcelormittal-rscle.com>, <arcelormittal-shared.com>, <arcelormittal-verify.com>, and <arcelormittal-view.com> be transferred to the Complainant.
Date: January 10, 2020