WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (SA) v. WhoisGuard Protected, WhoisGuard, Inc. / Flame zy, xls co

Case No. DME2017-0010

1. The Parties

Complainant is ArcelorMittal (SA) of Luxembourg, represented by Nameshield, France.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Flame zy, xls co of Serbia.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2017, the Registrar transmitted by email to the Center its verification 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 Complainant on December 20, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 20, 2017.

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 Respondent of the Complaint, and the proceedings commenced on December 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2018.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 26, 2018. 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

Complainant is one of the largest steel producing companies in the world and is a market leader in steel for use in automotive, construction, household appliances, and packaging, with operations in more than 60 countries. It holds sizeable captive supplies of raw materials and operates extensive distribution networks.

Complainant is the owner of the international trademark no. 947686 for ARCELORMITTAL, registered on August 3, 2007.

Complainant also owns a domain name portfolio including the same wording “arcelormittal”, such as the domain name <arcelormittal.com>, registered and used since January 27, 2006.

The disputed domain name was registered on December 5, 2017. The disputed domain name redirects to a parking page with commercial links (“PPC”) in relation to Complainant and its competitors.

5. Parties’ Contentions

A. Complainant

Complainant alleges to be the holder of numerous trademarks for ARCELORMITTAL worldwide. Complainant also argues that the disputed domain name <arcelormital.me> entirely incorporates Complainant’s registered trademarks, which establishes a confusing similarity with it, differing only in the absence of the letter “T” from the term “Arcelormittal”. The disputed domain name presents a clear case of typosquatting, which does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark.

Besides that, Complainant contends that the addition of the country code Top-Level Domain (“ccTLD”) extension “.me” does not change the overall impression of the designation as being connected to the trademark ARCELORMITTAL of Complainant.

Complainant pleads that Respondent has no interest in respect of the disputed domain name, given that the Parties are not related and Complainant does not carry out any activity for, nor has any business with Respondent. In this sense, Complainant sustains that Respondent has not been granted license or authorization to use the trademark ARCELORMITTAL or apply for registration of the disputed domain name.

Moreover, Complainant claims that the website in connection with the disputed domain name resolves to a web page containing advertising links to Complainant’s and its competitor’s products, what could be an indication of bad faith use.

In addition, Complainant asserts that Respondent has only registered the disputed domain name for the purpose of disrupting the business of a competitor, considering that it was aware of Complainant’s well-known trademark at the time of the referred registration.

Lastly, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith falling under the provision of Policy, paragraphs 4(a)(iii) and 4(b)(iv). That is, Complainant alleges that Respondent has registered the disputed domain name as an attempt to attract for commercial gain, Internet users to Respondent’s website, by creating confusion between Complainant’s trademarks and the source of Respondent’s website or of the products and services offered on such website.

In view of the above, Complainant requests the disputed domain name <arcelormital.me> to be transferred to Complainant, ArcelorMittal (SA) of Luxembourg.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

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

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

The burden of proving these elements is on Complainant.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy is met by evidencing that it owns several trademark registrations for ARCELORMITTAL worldwide and that such trademark is contained in its entirety in the disputed domain name <arcelormital.me>, with the absence of just one letter, “T”.

The Panel acknowledges that ARCELORMITTAL is a widely known trademark and believes the disputed domain name may cause confusion, since its dominant feature, namely “arcelormital”, reproduces Complainant’s trademark in its entirety, with the absence of just one letter, “T”.

The Panel agrees that neither the absence of one “T”, nor the addition of the ccTLD “.me”, is capable of distinguishing the disputed domain name from the trademark satisfactorily.

Thus, the Panel finds that the disputed domain name <arcelormital.me> is confusingly similar to Complainant’s trademark.

Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy satisfied.

B. Rights or Legitimate Interests

Respondent had twenty days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.

The view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The disputed domain name was registered on December 5, 2017, that is, several years after registration of Complainant’s first trademark and domain name <arcelormittal.com>. The Panel acknowledges that Complainant’s trademark is widely known, and, as a result thereof, the Panel holds that Respondent must have been aware of Complainant’s trademark at the time of registration.

The Panel finds that Complainant has never entered into any agreement with Respondent nor granted any authorization or license to Respondent regarding the use of Complainant’s trademark, nor is Respondent affiliated with Complainant’s activities.

Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel finds it highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark ARCELORMITTAL at the time of registration of the disputed domain name, taking into consideration its protection and activity worldwide; on the contrary, the evidence shows that Respondent was likely deliberately trying to create confusion.

In this connection, the Panel notes that the disputed domain name <arcelormital.me> points to a parking page with commercial links (“PPC”). In this instance, the web page includes several links for providers of goods and services of Complainant and its competitors, and such use of the domain name is further evidence of bad faith. In this sense, the Panel refers to the decision in VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925 (“Because Respondent has registered the disputed domain name that uses a unique combination of terms associated with Complainant, and has only used the disputed domain name to direct Internet users to a pay-per-click link farm parking page that includes third-party competitors of Complainant, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.”).

Many other UDRP decisions have already deemed this kind of activity to be evidence of bad faith, i.e., Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550.

Thus, the Panel concludes that Respondent acts in bad faith for the following reasons:

(i) the widespread reputation of Complainant’s products and services makes it highly unlikely that Respondent had no prior knowledge of Complainant’s rights in its registered trademarks at the moment of the domain name registration;

(ii) Respondent has no rights or legitimate interests in the disputed domain name;

(iii) the disputed domain name entirely reproduces Complainant’s word trademark; and

(iv) the disputed domain name misrepresents Complainant and deceives its customers or potential customers by leading them to think that they are accessing Complainant’s official website, while instead they are redirected to a parking page with commercial links related to Complainant and its competitors.

Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that Respondent opted for the privacy service, preventing others to have access to its real identity, and did not present any response to the Complaint, reinforces the conclusion that Respondent acted in bad faith.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

As such, the Panel finds that Complainant has satisfied 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 <arcelormital.me> be transferred to Complainant, ArcelorMittal (SA).

Gabriel F. Leonardos
Sole Panelist
Date: February 9, 2018