WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ArcelorMittal (Société Anonyme) v. Registration Private, Domains By Proxy, LLC / Joel Tinoco, Pixel Design Costa Rica
Case No. D2021-0909
1. The Parties
The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Joel Tinoco, Pixel Design Costa Rica, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <arcelormittaltienda.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2021 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 March 31, 2021.
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 April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 7, 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 was formed in 2006 through the merger of Arcelor with Mittal Steel Technologies. It manufacturers steel in 18 countries around the world. In 2019, the Complainant globally produced over 89 million tons of crude steel. The Complainant employs over 191,000 employees globally, serving customers in 160 countries, and it is listed on the stock exchanges of New York, Amsterdam, Paris, Luxembourg and Spanish stock exchanges.
The Complainant is the owner of ARCELORMITTAL trademark registrations across various jurisdictions, for example, United States registration number 3908649, registered January 18, 2011, and Mexican registration number 1103534, registered June 4, 2009.
The Complainant has Internet presence at “www.arcelormittal.com”, with over 499,000 visitors during the period between July and December 2020.
The Domain Name was registered on February 19, 2021. At the time of the Complaint, and at the time of drafting the decision, the Domain Name resolved to an inactive webpage.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations in ARCELORMITTAL, and argues that the Domain Name captures in its entirety the Complainant’s trademark. The mere addition of the term “tienda” does not negate the confusing similarity between the Domain Name and the Complainant’s trademark.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Domain Name to redirect internet users to a blank page.
The Complainant believes the Respondent knew, or at least should have known, of the Complainant’s activity and prior trademark rights when the Respondent registered the Domain Name. The Complainant argues that the fact that the Domain Name currently resolves to an inactive site, does not rule out bad faith, as passive holding of a domain name may constitute bad faith. It is not possible to conceive of a plausible good-faith reason or logic for the Respondent to have registered the Domain Name. Finally, the Respondent’s use of a privacy service is a further indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark ARCELORMITTAL. The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark, with the addition of “tienda” (meaning “shop” in Spanish)”. The addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent has not presented any evidence that it has made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s unauthorized use to redirect internet users to a blank page is in the context of this case is not bona fide.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant that the Respondent most likely was aware of the Complainant when the Respondent registered the Domain Name.
The Panel finds it likely that the Respondent has registered the Domain Name due to its similarity with the Complainant’s trademark. The passive holding of a domain name constitutes bad faith factor, together with the distinctiveness and reputation of the Complainant’s mark, the Respondent’s failure to submit a response, and the fact that, the Panel from the evidence does not see any good-faith use by the Respondent, see WIPO Overview 3.0, section 3.3.
Finally, the Respondent’s use of a privacy service is under the circumstances of this case further evidence of bad faith.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
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 <arcelormittaltienda.com> be transferred to the Complainant.
Date: May 10, 2021