Based upon the trademark registrations cited by Complainant and supported by relevant annexes, it is apparent that Complainant has rights in and to the trademark ARCELORMITTAL. As to whether the disputed domain names are identical or confusingly similar to the ARCELORMITTAL trademark, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “arcelormittalcement” and “arcelormittalindia”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The addition of certain words, as here (that is, “cement”), can “exacerbate [] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase [] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Here, because the word “cement” is associated with the ARCELORMITTAL trademark, this word increases the confusing similarity between the disputed domain name <arcelormittalcement.com> and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017 (finding the domain name <gucci-jewelry.com> confusingly similar to the trademark GUCCI).
Further, many previous panels under the Policy have found that a geographic identifier in a domain name (as in the disputed domain name <arcelormittalindia.com>) “actually affirms the extent to which that domain name is confusingly similar to the Complainant’s Mark.” Six Continents Hotels, Inc. v. Sdf fdgg, WIPO Case No. D2004-0384.
Accordingly, the Complainant has, to the satisfaction of the Panel, shown the Domain Names are identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
With respect to paragraph 4(a)(ii)of the Policy, Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, and Respondent has failed to rebut this case. Under the UDRP, “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.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (available at <http://www.wipo.int/ paragraph 2.1 (“WIPO Overview 2.0”).
Accordingly, the Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Names (within the meaning of paragraph 4(a)(ii)of the Policy).
Finally, in support of its argument that Respondent has registered and is using the disputed domain names in bad faith, Complainant has provided as annexes printouts of pages from a website using the disputed domain name <arcelormittalcement.com>. This printout shows that the domain name is being used in connection with a website offering “superior quality cement” in India, from a company that “commenced its operation on 31th July, 2012.” Under circumstances of the type present here, numerous previous panels have found that such use constitutes bad faith under paragraph 4(b)(iv) of the UDRP, that is, Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [Respondent’s] web site or location or of a product or service on [its] web site or location.” See, e.g., The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078 (“The Respondent was clearly specifically targeting the Complainant's trademark and attempting to divert Internet users searching for the Complainant's product to the Respondent's website”).
Further, with respect to the disputed domain name <arcelormittalindia.com>, Complainant did not include printouts of pages from an associated website, and the Panel did not locate an active website. Nevertheless, as numerous panels have made clear, “passive holding… does not as such prevent a finding of bad faith.” WIPO Overview 2.0, paragraph 3.2. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Under the circumstances of this case, including especially the website associated with the disputed domain name <arcelormittalcement.com>, the Panel finds bad faith respect to the disputed domain name <arcelormittalindia.com> as well.
Accordingly, the Complainant has, to the satisfaction of the Panel, shown the Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
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