WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ArcelorMittal (Société Anonyme) v. Avinash Maharaj, Avinash Maharaj
Case No. D2020-1174
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 Avinash Maharaj, Avinash Maharaj, South Africa.
2. The Domain Name and Registrar
2.1 The disputed domain name <arcerlomittalsa.com> (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 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 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 25, 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 of America 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 of America 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 Complainant operates a website that provides information about its products, services and news from the domain name <arcelormittal.com>. One of its subsidiaries also owns the domain name <arcelormittalsa.com>, from which it operates a website in respect of its activities in South Africa.
4.4 The Domain Name was registered on March 5, 2020.
4.5 The Complainant’s advisers sent a cease and desist letter to “Endurance International Group Inc.” to the WhoIs email address of “Bluehost” on March 13, 2020. Presumably (although this is not explained by the Complainant and so is not entirely clear) this was the name and email contact address provided in WhoIs details for the Domain Name at that time. A follow up letter was sent to the same entity and email address on March 24, 2020. No response was received to either of these letters.
4.6 A further letter was sent to the current registrant using the contact email address now provided for the registrant on April 1, 2020. Again, no response was received to that letter.
4.7 The current publicly available WhoIs details for the Domain Name suggest that the Respondent in this case is an individual located in South Africa. However, whether this is the name of a real individual or that actual controller of the Domain Name is not certain.
4.8 Since registration the Domain Name has been used to display a webpage which takes the form of a WordPress template with the text “A New WordPress Site Coming soon”. That page continues to be displayed at the date of this decision.
5. Parties’ Contentions
5.1 The Complainant refers to its business, domain names and trade marks. No South African mark is identified but the Complainant refers to paragraph 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in support of the contention that it does not need to have a trade mark in the territory of the Respondent for the purposes of proceedings under the UDRP.
5.2 The Complainant contends this is a case of typosquatting with “Arcelormittal” being misspelt with the letter “r” in the wrong place and with the addition of the letters “sa” signifying South Africa and the “.com” generic Top-Level Domain (“gTLD”). Reference is specifically made to the close similarity of the Domain Name to the one used by its South African subsidiary.
5.3 The Complainant claims that the use of the Domain Name to display a WordPress template does not involve a bona fide offering of goods or services and also does not involve legitimate noncommercial or fair use. It is also contends that none of the other examples of rights or legitimate interests identified in the Policy are said to apply, and this and the fact that the Complainant has not authorised this registration, are said to demonstrate a lack of a right or legitimate interest in the Domain Name.
5.4 The Complainant further contends that the Respondent must have been aware of the Complainant at the time of registration of the Domain Name. It claims that the Domain Name resolves to a WordPress template and is not being used, however passive holding does not prevent a finding of bad faith. It further claims that the WordPress template involves activity that falls within the scope of paragraph 4(b)(iv) of the Policy and contends the fact that this is a case of typosquatting also supports a finding of bad faith registration and use. On the question of bad faith the Complainant also relies upon the failure of the Respondent to respond to its various cease and desist letters.
5.5 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 Name is 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 Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is 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 The Complainant has satisfied the Panel that it has registered trade marks for ARCELORMITTAL. The Complainant is also correct in its contention that it does not matter for the purposes of this first limb of the Policy that it does not have registered marks where the Respondent appears to be located.
6.5 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 within the disputed domain name”; as to which see section 1.7 of the WIPO Overview 3.0. The Panel accepts that the only sensible reading of the Domain Name is as a misspelling of the term “Arcelormittal” with the letter “r” in the wrong place, combined with the letters “sa”, which is likely to be understood as an abbreviation of South Africa, and the “.com” gTLD. Given this the Complainant’s mark is clearly recognisable in the Domain Name and the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 As is discussed in the context of bad faith, the Panel accepts that the text of the Domain Name was chosen by the Respondent to incorporate (or if the Respondent was not the initial registrant of the Domain Name, was acquired by the Respondent because it incorporated) a misspelling of the Complainant’s mark, and that the Domain Name has subsequently been held, with the intention of taking some form of unfair advantage of the Complainant’s mark.
6.7 There is no right or legitimate interest in holding the Domain Name for such a purpose. Further, this is the case where the Domain Name, is a minor variation of a domain name used by the Complainant’s South African subsidiary. It therefore effectively impersonates the Complainant’s subsidiary and it is difficult to conceive of any legitimate use other than by or with the authorisation of the Complainant (see section 2.5.1 of the WIPO Overview 3.0). In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
6.8 It follows that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 The Domain Name does not appear to have been used for any active website and it is inherently implausible that anyone would wish to use the Domain Name for a WordPress site. There is also no evidence before the Panel to the effect that it has been used for some other purposes (such as part of email addresses). Accordingly, it is not entirely clear for what exact purpose the Domain Name has been registered and held.
6.10 Nevertheless, the Panel has little hesitation in concluding that the Domain Name was registered (or if the Respondent was not the initial registrant, acquired) and has been held with the intention of taking some form of unfair advantage of the trade mark rights of the Complainant’s business. The main reason for this is that the Domain Name cannot be read as anything other than a typosquatting variation of the domain name owned by the Complainant’s South African subsidiary. It is difficult to conceive of how the Domain Name might be held or used for a legitimate purpose, and the Domain Name in and of itself alone involves a misrepresentation that it is either a domain name operated by, or at least authorised by, the Complainant (as to which see, for example, Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031).
6.11 The Panel also finds that the use of the Domain Name to display a WordPress template with the text “A New WordPress Site Coming soon” does not prevent a finding of bad faith under the doctrine of passive holding in this case and as such is evidence of bad faith registration and use (see section 3.3 of the WIPO Overview 3.0).
6.12 It follows 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 Name <arcerlomittalsa.com> be transferred to the Complainant.
Matthew S. Harris
Date: July 9, 2020