WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal S.A. v. Cees Willemsen
Case No. D2016-1853
1. The Parties
The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Cees Willemsen of Breda, the Netherlands, self-represented.
2. The Domain Names and Registrar
The disputed domain names <arclormittal.com> and <arelormittal.com> are registered with Cronon AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2016, in English. On September 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, 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 Registrar further stated that the language of the registration agreement for the disputed domain names is German. On September 20, 2016, the Center sent a communication to the Parties asking the Complainant to either (1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into German; or (3) submit a request for English to be the language of the administrative proceedings. Both Parties replied to such communication in English on September 20, 2016, and the Complainant requested for English to be the language of the proceeding. In addition, the Respondent filed several further communications with the Center in English.
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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint in English and in German, and the proceedings commenced on September 26, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was October 16, 2016. The Respondent sent 16 informal email communications to the Center on September 20, 21, 22 and 23, 2016, and on October 11, 2016. The Center informed the Parties of the commencement of the Panel appointment process on October 17, 2016.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 20, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a leading steel producing company and is the market leader in steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries.
The Complainant is the owner of the International trademark registration no. 947686 ARCELORMITTAL, registered on August 3, 2007 in connection with various goods and services in classes 6, 7, 9, 12, 19, 21, 39, 40, 41, and 42 (hereinafter referred to as the ARCELORMITTAL Mark). The ARCELORMITTAL Mark enjoys protection, inter alia, in the European Union. The Complainant also owns a number of domain names incorporating the ARCELORMITTAL Mark, including <arcelormittal.com>.
The disputed domain names <arclormittal.com> and <arelormittal.com> were registered on November 28, 2015 and November 27, 2015, respectively. The Respondent used the disputed domain names to redirect Internet users to a website on which he seemingly complains about the Dutch food industry.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(i) The disputed domain names are confusingly similar to the ARCELORMITTAL Mark as the removal of the letters “e” and “c”, respectively, is not sufficient to distinguish the disputed domain names from the ARCELORMITTAL Mark. The Complainant also contends that the present case should be considered as typosquatting.
(ii) The Respondent has no rights or legitimate interests in the disputed domain names as the Respondent is not affiliated with the Complainant nor authorized by the Complainant in any way to use the ARCELORMITTAL Mark, as the Respondent is not commonly known by the disputed domain names, and as the Respondent is using the disputed domain names in connection with a website encouraging Internet users to visit the website at “www.healtychoices.com”, which is a website against the food industry and supermarkets. The Complainant argues that such diversion of consumers tarnishes the Complainant’s trademarks.
(iii) The disputed domain names were registered and are being used in bad faith. The Complainant states that the Respondent’s use of misspellings in the disputed domain names indicates bad faith registration, that the Respondent’s use of the disputed domain names in order to trick individuals into viewing unrelated websites is evidence of bad faith use of the disputed domain names, and that the Respondent relies on consumer deception to profit from the Complainant's extensive reputation in its ARCELORMITTAL Mark.
The Respondent did not formally reply to the Complainant’s contentions. However, he filed numerous communications with the Center in which, in a nutshell, he complains about the fact that the Dutch food industry uses his birth name “Kees” in connection with a product without his permission. Furthermore, he states that the Complainant does not own any trademark registered in connection with goods in class 29 (food) and that he now uses the disputed domain names in connection with a website about cheese.
6. Discussion and Findings
6.1. Language of the Proceeding
The first point to be dealt with is the language of the present proceeding. The Registration Agreement, under which the disputed domain names were registered is in German. However, the Complaint was initially filed in English and the Complainant requested for English to be the language of the proceeding. Given that the Respondent did not oppose this choice of language and filed his communications in English, the Panel decides that the proceeding is to be conducted in English according to paragraph 11 of the Rules.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain names are identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names incorporate the Complainant’s well-established ARCELORMITTAL Mark by only changing the element “Arcelor” to “Arclor” and “Arelor”, respectively. This is a clear case of typosquatting and the disputed domain names are nearly identical and are confusingly similar to the ARCELORMITTAL Mark.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain names.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. The Respondent used the disputed domain names to forward Internet users to a website on which he complains about the Dutch food industry and which includes banner ads for third parties’ websites. The Panel finds that the Respondent’s use of the disputed domain names, in this context, does not give rise to rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the disputed domain names with full knowledge of the ARCELORMITTAL Mark and the Respondent did not deny this statement. In addition, the ARCELORMITTAL Mark is highly distinctive and the disputed domain names obviously reflect typos of the ARCELORMITTAL Mark, which indicates that the disputed domain names were registered having the Complainant and its ARCELORMITTAL Mark in mind.
As to bad faith use, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to his own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel notes in this regard that the website to which the disputed domain names resolve displays banner advertisements for third-party products and appears to seek investment in the Respondent’s related websites. The Panel is therefore satisfied that the Respondent also used the disputed domain names in bad faith.
For the sake of clarity, the Panel wishes to point out that the fact that the Respondent has not used the disputed domain names in connection with the Complainant’s goods and/or services does not per se hinder a finding of bad faith. The Respondent obviously used the disputed domain names to generate traffic from misleading Internet users which accidentally mistyped the Complainant’s domain name for his own benefit and without having own rights or legitimate interests in the disputed domain names. Such behavior clearly constitutes a breach of the Policy.
Consequently, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith and that the Complainant 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 names <arclormittal.com> and <arelormittal.com> be transferred to the Complainant.
Date: November 3, 2016