WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aperam S.A. v. Rowan Koepp Kirschner

Case No. D2021-1504

1. The Parties

The Complainant is Aperam S.A., Luxembourg, represented by Nameshield, France.

The Respondent is Rowan Koepp Kirschner, Germany.

2. The Domain Name and Registrar

The disputed domain name <aperem.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2021, 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 May 18, 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 May 18, 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on August 6, 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 global producer of stainless steel for high value-added specialty products, including electrical steel and nickel alloys, known also for its capability to produce stainless and specialties from low-cost Biomass/Charcoal. With 2.5 million tons of flat stainless steel capacity in Europe and Brazil, the Complainant owns and operates six production facilities located in Brazil, Belgium, and France. In 2020, the Complainant registered sales of EUR 3.624 million and steel shipments of 1.68 million tons.

The Complainant is the owner of several trademark registrations for APERAM, including the following, as per trademark certificates submitted as annex 4 to the Complaint:

- International trademark registration No. 1083497 for APERAM (word mark), registered on June 6, 2011, in international classes 6, 7, 9, 12, 19, 21, 39, 40, and 42;

- International trademark registration No. 1097502 for APERAM (figurative mark), registered on August 17, 2011, in international classes 6, 7, 9, 19, 21, 39, 40, and 42;

- United States trademark registration No. 4326298 for APERAM (figurative mark), filed on August 17, 2011 and registered on April 30, 2013, for goods and services in international classes 6, 40, and 42;

- Canada trademark registration No. TMA879207 for APERAM (word mark), filed on June 6, 2011 and registered on June 2, 2014, for goods and services included in international classes 1, 6, 7, 9, 11, 12, 19, 21, 37, 39, 40, and 42;

The Complainant is also the owner of the domain name <aperam.com>, which was registered on November 26, 2010 and is used by the Complainant to promote its products and services under the trademark APERAM.

The disputed domain name <aperem.com> was registered on June 17, 2020 and resolves to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <aperem.com> is confusingly similar to the trademark APERAM in which the Complainant has rights as it reproduces the trademark in its entirety with the mere substitution of the second letter “a” with the letter “e” and the addition of the generic Top-Level Domain “.com”, which would not be sufficient to escape the finding of confusing similarity.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name, nor has he ever been granted any license or authorization by the Complainant to make any use of its trademark APERAM or register any domain name in his name.

The Complainant also contends that the Respondent is not affiliated with, or related to, the Complainant in any way and has never carried out any activity with or for the Complainant.

Lastly, the Complainant claims that the disputed domain name is a typosquatted version of its trademark APERAM and that the use of typosquatting does not confer any rights or legitimate interest in the disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainant claims that the misspelling of the Complainant’s trademark in the disputed domain name was intentionally designed to be confusingly similar with the Complainant’s trademark and that the Respondent very likely meant to target the Complainant when registering the disputed domain name.

The Complainant emphasizes that the Respondent has failed to demonstrate any good faith activity in respect of the disputed domain name and that it is not possible to conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation or an infringement of the Complainant’s rights under trademark law.

The Complainant further underlines that, though the disputed domain name now appears to be inactive, it has been set up with MX records, a circumstance which suggests that it may be actively used for email purposes. The Complainant submits that such use of the disputed domain name would amount to bad faith registration and use because any email being sent from the disputed domain name could in no way be used for any good faith purpose.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “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 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 finds that the Complainant has established rights over the trademark APERAM based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 4 to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Moreover, as stated in Section 1.9 of the WIPO Overview of WIPO Overview 3.0, “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”.

In the case at hand, the Panel finds that the disputed domain name is confusingly similar with the Complainant’s trademark APERAM since it reproduces the trademark in its entirety, with the mere substitution of the second letter “a” with the letter “e”, and the addition of the generic Top-Level domain “.com”, which can be disregarded being a mere technical requirement for registration.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

Moreover, it has been repeatedly stated that, when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name or that it has made preparations to use the disputed domain name, which is currently pointed to a mere parking page, in connection with a bona fide offering of goods or services.

In view of the Respondent’s default, the Panel shares the view held inter alia in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the panel found that, absent some contrary evidence from the respondent, passive holding of a domain name does not constitute legitimate noncommercial or fair use.

Therefore, the Panel finds that the Complainant has proven that, on balance of probabilities, the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent inter alia Manheim Auctions Inc’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

The Panel notes that the Complainant has registered and used the trademark APERAM in Europe in connection with its products and services since several years before the registration of the disputed domain name by the Respondent. In view of the substantial identity of the disputed domain name with the Complainant’s trademark APERAM, from which it differs only by one letter, and considering that a simple Google search for “aperam” or even for “aperem” would have revealed the existence of the Complainant and its trademark, the Panel finds that the Respondent, who is apparently located in Germany, was or could have been aware of the Complainant’s trademark at the time of registration of the disputed domain name.

As to the current use of the disputed domain name, it is currently pointing to a mere parking page, i.e., is passively held. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, inter alia, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. 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.”

In the case at hand, in view of the Respondent’s registration of a domain name highly confusingly similar to the Complainant’s prior trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name, the Respondent’s failure to respond to the Complaint and his attempt to conceal his identity via the use of a WhoIs privacy service, the Panel finds that the Respondent’s lack of use of the disputed domain name also amounts to bad faith.

As an additional evidence of bad faith, the Complainant has provided evidence that the Respondent has set up MX records for the disputed domain name. This entails that the Respondent could send emails through email addresses “@aperem.com”. Therefore, as stated in Conféderation Nationale du Crédit Mutuel and Crédit Industriel et Commercial v. Khodor Dimassi, WIPO Case No. D2016-1980, given the confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent could eventually impersonate the Complainant to its detriment, such as, e.g., undertaking a campaign of commercial email with messages containing spam or phishing attempts.

In view of the above, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.

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, <aperem.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: August 21, 2021