WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ArcelorMittal (Société Anonyme) v. Horacio Alves custodio
Case No. D2021-1581
1. The Parties
The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Horacio Alves custodio, Brazil.
2. The Domain Name and Registrar
The disputed domain name <grupoarcelormittal.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 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 26, 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 27, 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on July 13, 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 is currently one of the world’s leading steel and mining companies. It is headquartered in Luxembourg and is one of the world’s largest steel producer, manufacturing steel in 18 countries.
In 2019, it produced over 89 million tons of steel globally. It employs over 191,000 employees globally, serving customers in 160 countries. Further evidence about the Complainant and its trading activities is set out in Annex 6 to the Complaint and at Annex 6.5 about the 2006 merger. Its 2019 Annual Report is also exhibited at Annex 6.
The Complainant is listed on the New York, Amsterdam, Paris, Luxembourg, Barcelona, Bilbao, Madrid and Valencia stock exchanges. It is also a member of more than 120 indices including S&P Europe 500and Bloomberg World Index.
It has received various industry awards and recognitions. It is ranked by The World Steel Association as the largest steel maker in the world. It has also received accolades as one of the World’s Best Employers.
The Complainant points out that ARCELORMITTAL is not a dictionary term and does not have a generic meaning. The present trading name refers to the two constituent companies who merged in 2006 under the name ArcelorMittal SA.
Since the 2006 merger the Complainant has spent substantial time, effort and money in marketing and promoting the brand ARCELORMITTAL. It has a large Internet presence and shares information about its products, services and corporate news on its website at <arcelormittal.com>. The website received over 499,000 visits during the six month period between July and December 2020. Exhibited at Annex 5 to the Complaint is a screenshot of the website accessed at <arcelormittal.com>.
The Complainant is the owner of trade mark registrations for ARCELORMITTAL in various jurisdictions. It relies particularly on relevant registrations in Brazil, Mexico, Chile and the International Registration at WIPO. These are as follows, all of which predate the registration of the disputed domain name on December 17, 2020;
Exhibited at Annex 1 to the Complaint are print outs from the above Registries of the registrations.
In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true.
5. Parties’ Contentions
The Complainant submits;
i. The disputed domain name is confusingly similar to the trade mark ARCELORMITTAL in which the Complainant has prior registered rights;
ii. On the evidence adduced by the Complainant the Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii. On the evidence the disputed domain name was registered and is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark registrations, as set out above, for the mark ARCELORMITTAL. These registrations predate the date of registration of the disputed domain name.
The disputed domain name <grupoarcelormittal.com> consists of the distinctive mark “arcelormittal” which is identical to the Complainant’s trademark ARCELORMITTAL together with the word “grupo”. “grupo” is a Portuguese/Spanish term meaning the English word “group”. The disputed domain name could be perceived as referring to the ArcelorMittal group of companies.
It is well-established, as pointed out by the Complainant, that the Top-Level Domain, in this case “.com”, should be disregarded in establishing confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark ARCELORMITTAL in which the Complainant owns registered rights, within Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant points out on the evidence which is uncontested;
i. The Respondent is not sponsored by or affiliated with the Complainant in any way.
ii. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner including in domain names. The Complainant confirms that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the trade mark ARCELORMITTAL.
iii. The Respondent is not commonly known by the disputed domain name. Rather the WhoIs data in respect of the disputed domain name refers to the registrant as “Horacio Alves custodio /Horacio Alves custodio”.
This does not resemble the disputed domain name. Where there is no evidence that the Respondent is commonly known by the disputed domain name the established presumption is that the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name.
iv. On the evidence, the Respondent is using the disputed domain name to redirect Internet users to a blank page that lacks content. This shows that the Respondent has not demonstrated any attempt to make legitimate use of the domain name and website. This is evidence of a lack of rights or legitimate interests in the disputed domain name as has been found by previous panel decisions including for example; Philip Morris USA Inc v Muhammad Faisal, WIPO Case No. D2016-0621.
Taking into account the Complainant’s above submissions on the evidence and in the absence of a Response the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant relies upon the evidence that the Complainant and its mark ARCELORMITTAL are known internationally as a result of the fact that the Complainant trades globally as one of the world’s largest steel producers using the mark with trade mark registrations for the mark in numerous countries, and has done so since 2006.
The Complainant submits that at the date of registration of the disputed domain name the Respondent would have known or should have known of the existence of the Complainant’s registrations for ARCELORMITTAL. This taken with the Complainant’s worldwide reputation and presence on the Internet indicates that the Respondent was or should have been aware of the Complainant’s marks prior to registration of the disputed domain name.
The evidence shows that the disputed domain name resolves to an inactive site and is not being used by the Respondent. It is well-established by previous authorities that passive holding can constitute a factor in establishing bad faith registration and use.
The fact that the disputed domain name incorporates the trade mark ARCELORMITTAL in its entirety together with the term “grupo” points to there being no good-faith reason or logic for the Respondent to have registered the domain name. Rather it is evidence of future bad faith use. See for example by analogy the panel decision in Telstra Corp Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant also points out that the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. Examples are referred to in the Complaint and in respect of which WhoIs information is contained in Annex 9 to the Complaint. These include;
<grupoguararapesconfeccoes.com.br> GUARARAPES - Guararapes Confeccoes S/A
<grupolatamairlines.com.br> LATAM AIRLINES – TAM Linhas Aeras S/A
<grupopereiraalvim.com.br> PAPEREIRA ALVIM – Pereira Alvim Incorporadora E Construtora LTDA
<tesiddobrasil.com.br> TEKSID – Teksid Do Brasil
It is well-established that engaging in a pattern of cybersquatting /typosquatting can constitute evidence of bad faith. In the Panel’s view, taking into account the above evidence, that is the position here.
At Annex 10 to the Complaint the Complainant exhibits numerous cease and desist demands sent to the Respondent which did not achieve a response. This conduct is also well established as prima facie evidence supporting a finding of bad faith registration and use.
In the Panel’s view, taking into account the absence of a Response, the evidence adduced by the Complainant is sufficient to show bad faith registration and use of the disputed domain name. Accordingly the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith within 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 disputed domain name <grupoarcelormittal.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: July 27, 2021