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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arcelormittal (SA) v. federico Porrera

Case No. DCO2021-0022

1. The Parties

The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.

The Respondent is Federico Porrera, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <arcelornittal.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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 April 6, 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 April 6, 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2021.

The Center appointed Nels T. Lippert as the sole panelist in this matter on April 30, 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 headquartered in Luxembourg and is a large global steel producer. It is the market leader in steel for use in the automotive, construction, household appliances and packaging industries with 89.9 million tons of crude steel made in 2019.

The Complainant uses and has registered the trademark ARCELORMITTAL as International Registration Number 947686 issued August 3, 2007. The International Registration is for goods and services in International Classes 6, 7, 9, 12, 19, 21, 39, 40, 41, and 42. Furthermore, the Complainant has a large Internet presence and shares information about its products, services, and news on its website at <arcelormittal.com>, which was registered on January 27, 2006.

The disputed domain name was registered by the Respondent on March 25, 2021. The disputed domain name resolved to a parked page with commercial links.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s mark because it simply replaces the letter “m” with the letter “n”. The Complainant contends this is a classic example of typosquatting, which does not avoid confusing similarity and is designed to misdirect Internet users who make a typographical error when entering the disputed domain name. Furthermore, the Complainant contends that the addition of the country-code Top-Level Domain (“ccTLD”) “.co” does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademark.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not known as the disputed domain name, he is not related in any way with the Complainant and does not have any business with the Complainant. The Complainant asserts that the Respondent is neither licensed nor has been given authorization by the Complainant to make any use of the Complainant’s trademark or apply for registration of the disputed domain name.

The Complainant alleges its ARCELORMITTAL trademark is widely known and, therefore, the Respondent had or should have had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. Furthermore, the Complainant asserts that the misspelling in the disputed domain name was intentionally designed to be confusingly similar to the Complainant’s mark, which evidences bad faith registration. Finally, the Complainant contends that because the disputed domain name resolves to a parking page with commercial links, the Respondent is attempting to attract Internet users for commercial gain, which is evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under 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”.

A. Identical or Confusingly Similar

In this case, the disputed domain name is an obvious misspelling of the Complainant’s ARCELORMITTAL trademark. As noted in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 this case, the replacement of the letter “m” with the letter “n” of the Complainant’s mark in the disputed domain name is a classic example of typosquatting by substitution of an adjacent keyboard letter. See, Fuji Photo Film U.S.A., Inc. v. LaPorte Holding, WIPO Case No. D2004-0971. Furthermore, it is well established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Therefore, the disputed domain name is confusingly similar to the Complainant’s ARCELORMITTAL trademark.

The Panel finds the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the disputed domain name. The Complainant contends that none of the circumstances under paragraph 4(c) of the Policy would apply in this case. The Respondent has not advanced rights or legitimate interests to rebut the Complainant’s prima facie case, and none are evident from the record or the use of the disputed domain name.

The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In this case, the Complainant has submitted compelling evidence that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered by the Respondent many years after the Complainant’s ARCELORMITTAL mark was registered and became widely known. As noted in WIPO Overview 3.0, section 1.9, panels will normally find that employing typosquatting, as found here, signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant. Panels have consistently found that the mere registration of a domain name comprising typos to a widely known or famous trademark can itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

Moreover, the evidence here supports a finding that the Respondent was using the disputed domain name in bad faith to attract, for commercial gain, Internet users to its parked website having advertising links to third party products or sites by creating a likelihood of confusion with the Complainant’s mark. See, WIPO Overview 3.0, section 3.1.4.

The Panel finds that the Complainant has satisfied the requirements of 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 <arcelornittal.co> be transferred to the Complainant.

Nels T. Lippert
Sole Panelist
Date: May 14, 2021

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