WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal S.A. v. Tomy Office
Case No. DCO2016-0031
1. The Parties
The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Tomy Office of Maryland, United States of America.
2. The Domain Name(s) and Registrar
The disputed domain name <arcelormittal-uk.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2016. On August 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on October 10, 2016. 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 largest steel producers in the world, with operations in more than 60 countries.
The Complainant owns international trade mark no. 947686 for ARCELORMITTAL, registered on August 3, 2007, in classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42.
The Complainant’s own websites are located at “www.arcelormittal-uk.com” and “www.arcelormittal.co”.
The disputed domain name was registered on August 29, 2016.
On August 29, 2016, what purported to be an internal email was sent from an email address at the disputed domain name to a member of the Complainant’s staff attempting to trick that person into effecting an introduction to the Complainant’s travel agency for the purpose of booking flight tickets.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trade mark. The addition of the suffix “-uk” does not prevent a finding of confusing similarity. On the contrary it enhances the confusing similarity because it denotes an association with the Complainant’s sales office in that geographic location.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not authorized to use the Complainant’s trade mark.
The Respondent is not commonly known by the disputed domain name.
There has been no website at the disputed domain name. The disputed domain name was registered in order to impersonate the Complainant by sending fraudulent emails to its employees.
The foregoing amounts to registration and use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark ARCELORMITTAL by virtue of its registered trade mark for that term.
Paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the addition of geographical wording or references such as “-uk” to a trade mark is normally insufficient to avoid a finding of confusing similarity. The trade mark remains by far the most dominant part of the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering; on the contrary, there is evidence that the disputed domain name has been used to send fraudulent emails.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has produced evidence that the disputed domain name has been used for an email address impersonating the Complainant in an attempt to defraud the Complainant.
The Panel therefore readily concludes that the disputed domain name was registered and is being used in bad faith by the Respondent.
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, <arcelormittal-uk.co> be transferred to the Complainant.
Date: October 10, 2016