WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ArcelorMittal (Société Anonyme) v. Robert Sloan, Blacklight
Case No. D2020-1124
1. The Parties
1.1 The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services AB, Sweden.
1.2 The Respondent is Robert Sloan, Blacklight, United States of America (“United States”).
2. The Domain Names and Registrar
2.1 The disputed domain names <shortarcelormittal.com> and <shortingarcelormittal.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 7, 2020, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2020.
3.4 On June 10, 2020, the Center sent an email to the Parties, noting that the Center’s Notification was not emailed to one of the Respondent’s email addresses, and granting the Respondent a five-day period to indicate whether it wished to participate in the proceedings. The Respondent did not submit any reaction or response.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 22, 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
4.1 The Complainant is a well-known steel and mining company and is one of the world’s largest steel producers. It was formed in 2006 from the merger of Arcelor and Mittal Steel and is listed on a number of stock exchanges around the world. The company’s headquarters are in Luxembourg, and it manufactures steel in 18 countries around the world. It employs over 191,000 employees globally and serves customers in 160 countries.
4.2 The Complainant is the owner of large number of registered trade marks including the following:
(i) United States trade mark registration no. 3643643, registered on June 23, 2009 for the standard character mark ARCELORMITTAL in classes 6, 39, 40, 41, and 42;
(ii) United States trade mark registration no. 3908649, registered on January 18, 2011 for the standard character mark ARCELORMITTAL in class 37; and
(ii) International trade mark registration no. 947686, registered on August 3, 2007 for the standard character mark ARCELORMITTAL in classes 6, 7, 9, 12, 19, 21, 39, 40, 41, and 42. That mark has since proceeded to registration in numerous territories
4.3 The Domain Names were both registered on August 9, 2018. Since registration the <shortarcelormittal.com> Domain Name has been used to redirect Internet users to a website operated by S3 Partners, LLC (“S3 Partners”) from the domain name <shortsight.com>. This website offers stock investment and securities trading information and also promotes S3 Partners’ products and services. In contrast, the <shortingarcelormittal.com> Domain Name has been used to display a GoDaddy parking page, which incorporates various links, some of which appear to be associated with the Complainant, but others that do not.
4.4 The Respondent would appear to be an individual based in New York. He has previously been involved in the following UDRP cases:
(i) LegalZoom.com, Inc. v. Robert Sloan, WIPO Case No. D2019-0359 (March 31, 2019) in respect of the domain name <legalzoomipo.com>;
(ii) Accor v. Robert Sloan, WIPO Case No. D2019-0408 (May 8, 2019) in respect of the domain names <shortaccorhotels.com>, <shortaccor.com>, and <shortingaccor.com>; and
(iii) BioMérieux v. Robert Sloan, WIPO Case No. D2019-2865 (January 22, 2020) in respect of the domain names <shortbiomérieux.com> and <shortingbiomérieux.com> (“BioMérieuxcase”).
4.5 In the first of these three UDRP cases the Respondent agreed to the transfer of the disputed domain name to the complainant. In the second case the Respondent did not participate in the proceedings and the panel ordered the transfer of the disputed domain names to the Complainant.
4.6 In the third of these three UDRP cases the Respondent did participate in the proceedings. He claimed that although the disputed domain names did not resolve to any active website, they had been registered on behalf of S3 Partners. He also contended that:
“The terms “short” and “shorting” are obvious indicators for “short selling”, which is the process by which a trade profits when a security’s price declines. […] Should S3 Partners decide to sell its data and analytics concerning the short selling of the Complainant’s stock, this would be nominative fair use”
In that case the Respondent also claimed that the registration engaged issues of free speech. The panel nevertheless concluded that the Respondent had no rights or legitimate interests in the disputed domain names, as there was no question of noncommercial free speech use, and also concluded that the disputed domain names had been registered and used in bad faith.
4.7 On March 16, 2020, the Complainant’s advisers sent a letter to the Respondent by email, demanding that the Respondent transfer the <shortarcelormittal.com> Domain Name to the Complainant. Later that day an individual using a “s3partner.com” email address and identifying himself as the Managing Director of S3 Partners responded to that letter as follows:
“We do not intend to use those domain names in a manner that is at all likely to create confusion with TD; nor do we believe that those domain names create any likelihood of confusion on their own. Instead, we have obtained the rights to those domain names for the purpose of pursuing our own business, which is not and will not be in competition with yours. Nor do we have any intent to seek consideration from you in exchange for the domain names. We therefore do not believe that there is any basis for your cease and desist letter. However, if you seek additional information on this matter please contact our counsel, [details provided].”
4.8 Subsequently, the Complainant’s advisors sent a follow up email to the Respondent’s lawyers and asked whether the reference to “domain names” plural in the initial response meant that there was more than one domain name “infringing on” the Complainant’s marks. Although that email was acknowledged, no substantial response was subsequently forthcoming.
4.9 As at the date of this decision the <shortarcelormittal.com> Domain Name continues to redirect Internet users to the <shortsight.com> website operated by S3 Partners, albeit via a page that prominently displays a disclaimer declaring as follows:
“Intellectual property notices: product and company names used herein, other than shortsight.com, may be trademarks™ or registered® trademarks of their respective holders. The use by shortsight.com of any trademarked material, including any logos or company names, does not imply any affiliation by shortsight.com with their respective holders or endorsement by their respective holders of any information or opinions presented on shortsight.com”
5. Parties’ Contentions
5.1 The Complainant refers to its business, domain names, and trade marks. It contends that each of the Domain Names “capture the entirety” of the Complainant’s ARCELORMITTAL trade mark to which the terms “short” or “shorting” and the “.com” generic Top-Level domain (“gTLD”) have been added. As a consequence, it alleges that each of the Domain Names is confusingly similar to the Complainant’s trade marks.
5.2 The Complainant further clams that none of the examples of rights or legitimate interests set out in the Policy apply. So far as the <shortarcelormittal.com> Domain Name is concerned, the redirection to the <shortsight.com> website is said to be neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. So far as the <shortingarcelormittal.com> Domain Name is concerned, it is said that the use of the Domain Name to display pay-per-click links is not a bona fide offering of goods or services.
The Complainant also relies upon the reasoning of the panel in the BioMérieux case supra.
5.3 The Complainant further contends that the Respondent knew of or should have been aware of the Complainant’s trade marks when registering the Domain Names, and that the Domain Names have been registered and used to confuse Internet users into visiting the website or web pages that have operated from the Domain Names. This is said to demonstrate bad faith registration and use. Further, the Complainant refers to the previous UDRP cases in which the Respondent has been involved which are said to demonstrate a bad faith pattern of cybersquatting.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.5 The Panel is satisfied that the Complainant holds registered trade marks for ARCELORMITTAL and that the only sensible reading of the Domain Names is as the terms “Arcelor Mittal” or “Arcelormittal” in combination with the words “short” or “shorting” and the “.com” gTLD. Accordingly the Complainant’s trade mark is clearly recognisable within each of the Domain Names. The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 It is convenient to consider the <shortarcelormittal.com> Domain Name first. The Panel is satisfied that the <shortarcelormittal.com> Domain Name was registered by or on behalf of S3 Partners with a view to attracting Internet users to its website operating from the <shortsight.com> domain name, and that this website is being used generally to promote S3 Partners’ products and services; including the provision of information regarding the shorting of stocks.
6.7 This is how this <shortarcelormittal.com> Domain Name is currently used and has been used since registration. It is also consistent with the explanation provided by the Respondent in the BioMérieux case supra as to how it intended to use the similarly structured <shortbiomérieux.com> and <shortingbiomérieux.com> domain names.
6.8 Previous UDRP panels have recognised that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake activities related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus may have a legitimate interest in such domain name. However, in such cases the website operating from the domain name, or to which the domain name directs consumers, must be limited to promoting activities related to the trade mark only. See in this respect paragraph 2.8.1 of the WIPO Overview 3.0.
6.9 Perhaps one part of the information provided on the S3 Partners’ website partially related to the shorting of the Complainant’s shares. But the website extends far beyond this and is more general in scope. This is sufficient to decide the issue of the Respondent’s lack of rights or legitimate interests in the <shortarcelormittal.com> Domain Name.
6.10 The <shortingarcelormittal.com> Domain Name has been used to display what appear to be pay-per-click links. The Panel notes that the Complainant advances a separate argument as to the Respondent’s lack of rights and interests in the <shortingarcelormittal.com> Domain Name so far as that use is concerned. However, it appears to the Panel that the only sensible conclusion, considering the text of the Domain Names itself, the timing of the registration and the arguments advanced by the Respondent in relation to similarly structured domain names in the BioMérieux case supra, is that (a) the <shortingarcelormittal.com> Domain Name was registered and has been held for the same purpose as the <shortarcelormittal.com> Domain Name; and (b) the <shortingarcelormittal.com> Domain Name has been parked with the Registrar pending such intended use (with the associated links being merely incidental).
6.11 Given this, the Panel holds that the Respondent has no rights or legitimate interests in <shortingarcelormittal.com> Domain Name for the reasons already given in relation to the <shortarcelormittal.com> Domain Name.
6.12 The Panel would also add that the previous UDRP cases involving the Respondent, strongly suggest that the Domain Names are part of a larger series of registrations that combine the trade marks of another with the word “short” or “shorting” forming part of a scheme to promote either the Respondent’s or S3 Partners’ products and services targeted to activity covering multiple brand owners’ marks. Previous UDRP panels have generally tended to reject any contention that rights or legitimate interests exist in domain names registered as part of such a scheme. For one such example of this (albeit a somewhat extreme example) see Guardian News & Media Limited v. Giovanni Laporta, Yoyo.email, WIPO Case No. D2014-1656. However, the facts of the present case are such that it is not necessary to consider this issue further.
6.13 In the circumstances, the Panel is satisfied that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.14 The Panel has no doubt that the Domain Names were registered by the Respondent with the knowledge of the Complainant and its marks. This is obvious from the Domain Names themselves, which can only be understood as making a reference to the Complainant.
6.15 Further, as is explained in greater detail under the heading of Rights or Legitimate Interests above, the Panel is also satisfied that both Domain Names were registered by or on behalf of S3 Partners with a view to attracting Internet users to its website operating from the <shortsight.com> domain name in order to promote S3 Partners’ products and services, many of which are unrelated to the Complainant’s business or shares.
6.16 The Complainant contends that such activities fall within the scope of paragraph 4(b)(iv) of the Policy as Internet users have been or would be drawn to the S3 Partners having been confused into believing that it is run by or authorised by the Complainant.
6.17 The Panel is not entirely convinced that Internet users would be confused into believing that any website operating from the Domain Names is run by or authorised by the Complainant. The most sensible reading of both Domain Names is that they relate to the activity of shorting the Complainant’s stock and the Panel is sceptical that many Internet users would believe that the Complainant would be running or authorising a website promoting such activities. Nevertheless, paragraph 4(b)(iv) covers confusion not just to the “source, sponsorship, affiliation, or endorsement” of a website, but also confusion as to the “product or service on” that website.
6.18 Further and in any event, the Panel is persuaded that regardless of whether paragraph 4(b)(iv) is engaged in this case, the Respondent registered and is using or intends to use the Domain Names to unfairly take advantage of the reputation of the Complainant’s marks in order to attract Internet users to its website for commercial advantage. That is sufficient for a finding of bad faith registration and use (see, for example, Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
6.19 In the circumstances, the Panel is satisfied that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <shortarcelormittal.com> and <shortingarcelormittal.com> be transferred to the Complainant.
Matthew S. Harris
Date: June 29, 2020