WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal (SA) v. WhoisGuard Protected, WhoisGuard, Inc. / Barbara Anderson
Case No. DME2019-0009
1. The Parties
The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Barbara Anderson, United States of America.
2. The Domain Name and Registrar
The disputed domain name <arcimittal.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 September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2019, 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 September 30, 2019 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 September 30, 2019.
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 October 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2019.
The Center appointed George R. F. Souter as the sole panelist in this matter on October 31, 2019. 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 one of the world’s largest steel-producing companies.
The Complainant is the proprietor of a number of trademark registrations of its trademark MITTAL, including International Registration No. 1198046, registered on December 5, 2013, details of which have been supplied to the Panel, together with details of the well-known nature in international markets.
The disputed domain name was registered on September 11, 2019, and is currently not in use.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its MITTAL trademark, containing its trademark in its entirety, with the mere addition of a descriptive or non distinctive element.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, to the best of the Complainant’s knowledge, it is not generally known by the disputed domain name, and the Respondent has never received permission from the Complainant to use its MITTAL trademark in any way whatsoever.
The Complainant alleges that the disputed domain name has been registered in bad faith, and is being used in bad faith in circumstances which has been regarded as bad faith usage by consistent prior decisions of panels under the UDRP.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) or country code Top-Level Domain (“ccTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.me” indicator to be irrelevant in the circumstances of the present case, and so finds.
It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers the prefix “arci" does not distract from the Complainant’s MITTAL trademark, which is the dominant element of the disputed domain name. The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s MITTAL trademark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant's MITTAL trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.
Since the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, successive panels under the UDRP have been consistent in finding that a passive holding of a disputed domain name can be considered to be use in bad faith where any use of the disputed domain name would give rise to a legitimate concern of damage to the commercial interests of owners of a well-known trademark.
From the information provided to the Panel, the Panel recognizes the Complainant’s MITTAL trademark to be well known, and the Panel agrees with the decisions following from the decision in the Telstra Corporation Limited v. Nuclear Marshmallows, supra decision quoted above. The Panel regards the circumstances of the present case to be appropriate to a finding of use in bad faith, and so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 disputed domain name <arcimittal.me> be transferred to the Complainant.
George R F Souter
November 13, 2019