WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal (SA) v. Whois Privacy Protection Foundation / Pingkee Hong
Case No. D2020-0044
1. The Parties
The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Pingkee Hong, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <areclromittal.com> is 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 January 10, 2020. On January 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2020, 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 Center sent an email communication to the Complainant on January 15, 2020 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 January 15, 2020.
The Center verified that the Complaint and 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 January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2020.
The Center appointed Mihaela Maravela as the sole panelist in this matter on February 17, 2020. 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 one of the largest steel producing companies in the world and is the market leader in steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries.
The Complainant is the exclusive owner of the international trademark ARCELORMITTAL with registration number 947686, registered on August 3, 2007. The Complainant also owns a domain name portfolio that includes the trademark ARCELORMITTAL, such as the domain name <arcelormittal.com> registered since January 27, 2006.
The disputed domain name was registered on January 9, 2020 and directs to an error page.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to its trademark ARCELORMITTAL, the only difference being that the letters “e” and “r” have been moved before the letters “c” and “o” in the trademark ARCELORMITTAL, which is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark ARCELORMITTAL.
Further, the Complainant argues that the Respondent is not commonly known by the disputed domain name and that the Respondent is not affiliated with the Complainant nor authorized by the Complainant in any way to use the trademark ARCELORMITTAL. Furthermore, the Complainant also claims that the disputed domain name is a typosquatted version of its trademark ARCELORMITTAL and this can be evidence that a respondent lacks rights and legitimate interests in the domain name. Moreover, the Complainant shows that the disputed domain name redirects to an error page displaying the message “Forbidden You don’t have permission to access this resource. Additionally, a 403 Forbidden error was encountered while trying to use an ErrorDocument to handle the request”. The Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
Regarding the third element, the Complainant argues that given the distinctiveness of the Complainant’s trademark and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark. Moreover, the Complainant contends that the misspelling of its trademark ARCELORMITTAL was intentionally designed to be confusingly similar with the Complainant’s trademark. Given the incorporation of a famous mark into a domain name, coupled with an inactive website, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the ARCELORMITTAL trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.
Here the disputed domain name consists of the obvious misspelling of the ARCELORMITTAL trademark of the Complainant, with the change of the element “Arcelor” to “Areclro”. This misspelling in the disputed domain name, also referred as typosquatting, is insufficient to avoid a finding of confusing similarity. See Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2018-0644; Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC, WIPO Case No. D2014-1018, Arcelormittal S.A. v. Cees Willemsen, WIPO Case No. D2016-1853, and also section 1.9 of the WIPO Overview 3.0.
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark ARCELORMITTAL and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name. The Complainant also contends that no license or authorization was ever given for the use of the trademark ARCELORMITTAL in the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimated interests in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainant, its ARCELORMITTAL trademark is widely used in commerce well before the registration of the disputed domain name in January 2020. The disputed domain name is confusingly similar to the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name.
Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain name will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Passive holding of the disputed domain does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (e.g., Koç Holding A.S. v. KEEP B.T, WIPO Case No. D2009-0938).
The following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name:
- the Respondent’s failure to respond to the Complaint, even though awarded a possibility to do so. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210, Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN, WIPO Case No. D2013-2100.
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy.
- the well-known character of the ARCELORMITTAL trademark – as held for example in Arcelormittal (SA) v. Whois Privacy Protection Foundation / Lawrence Andrew, WIPO Case No. D2019-1538. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
Moreover, given that the Respondent has registered the disputed domain name with a misspelling of the Complainant’s trademark (“typosquatting”), an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of virgnimedia.com Owner, c/o whoisproxy.com / Tulip Trading Company, WIPO Case No. D2018-1135, Arcelormittal (SA) v. CLAY RUSH, WIPO Case No. D2019-1357.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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 <areclromittal.com> be transferred to the Complainant.
Date: March 2, 2020