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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. Owens Rucker, MRBT Assessoria Empresarial

Case No. D2021-0423

1. The Parties

The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Owens Rucker, MRBT Assessoria Empresarial, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <arcelromlttal.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2021. On February 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 12, 2021, 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 for the Disputed Domain Name.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2021.

The Center appointed Michael D. Cover as the sole panelist in this matter on March 16, 2021. 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 public steel and mining company, registered in Luxembourg, and listed on a number of stock exchanges around the world. The Complainant was formed in 2006, through the merger of Arcelor and Mittal Steel Technologies. The Complainant is one of the largest steel companies in the world. It has a market capitalization of USD 24 billion, sales of USD 76 billion in 2020 and 209,000 employees.

The Complainant is the proprietor of the trademark ARCELORMITTAL registered in the United States, as International Trademarks with WIPO, in Canada and in Australia. The registration date of United States trademark registered trademark No. 3643643 is June 23, 2009, and of International Trademark Registration No. 947686 the registration date is August 03, 2007. Details of these trademark registrations are set out in Annex 1 to the Complaint.

The Complainant operates its principal website at “www.arcelormittal.com” and a screenshot of this is at Annex 5 to the Complaint.

The Respondent is Owens Rucker, located in the United States. The Disputed Domain Name was registered on December 16, 2020. The Disputed Domain Name resolves to a website that resolves to a blank page and lacks content, and the Respondent used the Disputed Domain Name to send fraudulent emails.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar to a trademark in which the Complainant has rights

The Complainant states that, by virtue of the trademarks and service registrations set out in Annex 1 to the Complaint, the Complainant is the owner of the ARCELORMITTAL trademark. The Complainant submits that ARCELORMITTAL is not a dictionary term and does not have a generic meaning. In addition, the Complainant has spent substantial time, effort and money in marketing and promoting its ARCELORMITTAL brand.

The Complainant submits that, when comparing the Disputed Domain Name with the Complainant’s trademarks, it is standard practice not to take the extension into account. The Complainant cites in support the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.

The Complainant submits that the Disputed Domain Name is a purposeful misspelling of the Complainant’s trademark and that the Disputed Domain Name differs from the Complainant’s trademark by just two letters. Therefore, it must be considered similar to the Complainant’s trademark and that the Disputed Domain Name must be considered as example of typosquatting, where a domain intentionally takes advantage of Internet users that inadvertently type an incorrect address. The Complainant cites in support WIPO Overview 3.0 at section 1.9: “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”

The Complainant also submits that the Disputed Domain Name must be considered confusingly similar to the Complainant’s ARCELORMITTAL trademark, in that it is similar to that trademark in both sight and sound.

The Complainant also draws the Panel’s attention to the Respondent’s previous use of the Disputed Domain Name. The Complainant notes that the Respondent’s activities, as set out in Annex 9, are so-called phishing emails, designed to impersonate the Complainant in emails sent to clients of the Complainant and submits that this is a further evidence that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ARCELORMITTAL.

Rights or Legitimate Interests

The Complainant submits that the granting of registrations by the various trademark offices around the world is prima facie evidence of the validity of the term ARCELORMITTAL as a trademark, the Complainant’s ownership of that trademark and the exclusive right of the Complainant to use that trademark in commerce.

The Complainant notes that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not licensed, authorized or permitting the Respondent to register domain names incorporating the Complainant’s trademark. The Complainant cites in support the UDRP decision Sportswear Company S.p.A. v. Tang Hong, WIPO Case No. D2014-1875, in which the UDRP panel stated that: “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed”.

The Complainant states that the Respondent is not commonly known by the Disputed Domain Name and submits that this demonstrates a lack of rights or legitimate interests.

The Complainant draws the Panel’s attention to the previous use of the Disputed Domain Name by the Respondent, which the Complainant submits constituted a phishing exercise, whereby the Respondent was impersonating the Complainant. The Complainant draws the Panel’s attention to the emails set out in Annex 9 to the Complaint in this regard.

The Complainant also states that the Respondent has been using the Disputed Domain Name to redirect Internet users to a website that resolves to a blank page and submits that the Respondent has not demonstrated any attempt to make legitimate use of the website and the Disputed Domain Name. This shows a lack of rights or legitimate interests in the Disputed Domain Name.

The Complainant also notes that the Disputed Domain Name was registered on December 16, 2020, which was significantly after the Complainant filed for registration of its ARCELORMITTAL trademark. The Complainant also notes that the registration of the Disputed Domain Name in late 2020 was significantly after the first use in commerce of its ARCELORMITTAL trademark in 2006.

Registered and Used in Bad Faith

The Complainant notes that it has marketed and sold its goods and services using its ARCELORMITTAL trademark since 2006, which significantly predates the Respondent’s registration of the Disputed Domain Name, and submits that it and its trademark are known internationally. The Complainant submits that the Respondent has created a domain name that is confusingly similar with the Complainant’s trademark ARCELORMITTAL, with a two letter misspelling of this trademark. As such, it submits that the Respondent must have had knowledge of the Complainant’s trademark and has then used the Disputed Domain Name in the phishing exercise already described. The Complainant cites in support Telstra Corp. Ltd. V. Nuclear Marshmallows, WIPO Case No.D2000-0003, in which the UDRP panel set out that it was “not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.”

The Complainant submits that, at the time of the registration of the Disputed Domain Name, the Respondent knew or at least should have known of the Complainant’s trademark and that the registration of the Disputed Domain Name containing well known trademark constitutes bad faith per se.

The Complainant also notes that typosquatting itself has been taken as evidence of bad faith, in noting that the Disputed Domain Name is a slight misspelling of the Complainant’s ARCELORMITTAL trademark. The Complainant notes that numerous UDRP panels have found that registering a domain name to take advantage of traffic generated by typing errors committed by another’s customers, as in this case, is evidence of bad faith.

The Complainant submits that the Respondent has registered and used the Disputed Domain Name with the primary aim of launching a phishing scheme, which, says the Complainant, is clear evidence of bad faith registration and use and refers the Panel to what it calls the phishing emails in Annex 9 to the Complaint.

The Complainant also notes that evidence, as in this case, that the Disputed Domain Name resolves to an inactive website can constitute bad faith in connection with paragraph 4(a)(iii) of the Policy.

Finally, the Complainant states that, on the balance of the facts set out by the Complainant, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark and submits that the Respondent should be found to have registered and used the Disputed Domain Name in bad faith.

The Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established registered rights in its trademark ARCELORMITTAL. The registrations of the trademark predate the registration of the Disputed Domain Name by some 10 years. That is sufficient for the purpose of establishing that the Complainant has rights in its trademark ARCELORMITTAL, but the Panel also notes that the Complainant has made substantial use of its trademark ARCELORMITTAL since the establishment of the Complainant in 2006 and has hence established common law rights for the purpose of the Policy, in the business conducted under that trademark.

The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s ARCELORMITTAL trademark. The Disputed Domain Name incorporates the Complainant’s trademarks in its entirety, save the transposition of the letters “o” and “r” (See WIPO Overview 3.0 at section 1.9). In assessing confusing similarity, it is well established that the incorporation of a generic Top Level Domain (“gTLD”), such as “.com”, does not avoid a finding of confusing similarity (See WIPO Overview 3.0 at section 1.11).

The Panel accordingly decides that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ARCELORMITTAL, in which the Complainant has rights and that the provisions of the Policy, paragraph 4(a)(i) have been met.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts the submission of the Complainant that the Complainant has not licensed or authorized the Respondent to use its trademark ARCELORMITTAL, and that the Respondent has not been commonly known by the Disputed Domain name. The Disputed Domain Name has been used in connection with a phishing scheme, whereby the Respondent was using the Disputed Domain Name to send emails to the contacts of the Complainant, impersonating the Complainant. The Disputed Domain Name, which consists of a typosquatted version of the Complainant’s trademark, resolves to an inactive website and shows that the Respondent has targeted the Complainant, its trademark and its business. It is generally accepted that the burden of production then passes to the Respondent when the Complainant having made out at least a prima facie case. The Panel finds that the Complainant has established a prima facie case.

The Respondent has failed to contest these allegations, not least as it has not responded to the Complaint. In particular, the Respondent has failed to demonstrate use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services without intent or commercial gain or to misleadingly divert consumers or to tarnish the ARCELORMITTAL trademark of the Complainant.

The Panel accordingly decides that the provisions of the Policy, paragraph 4(a)(ii) have been satisfied.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel is able to infer from the material before it, that the Respondent was aware or, at the very least, should have been aware of the Complainant’s trademark ARCELORMITTAL, which was both registered and used well before the registration of the Disputed Domain Name, and accepts that this is an example of typosquatting. The Panel accepts that the use of the Disputed Domain Name has not been authorized or licensed by the Complainant.

The Panel notes that the Disputed Domain Name resolves to an inactive website, which itself is evidence of bad faith (Boehringer Ingelheim Pharma GmbH & Co. KG v. Martin Hughes, WIPO Case No. D2016-1546).

The fraudulent phishing emails provides further evidence of the registration and use of the Disputed Domain Name in bad faith, as they were sent in connection with the Disputed Domain Name with the primarily for the purpose intentionally to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ARCELORMITTAL trademark..

The Panel accordingly decides that the provisions of the Policy, paragraph 4(a)(iii) have been met and that the Disputed Domain Name has been registered and is being used in bad faith.

7. Decision

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 <arcelromlttal.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: March 17, 2021

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