A. Identical or confusingly similar with Complainant’s trademark
The Complainant owns the word trademark ArcelorMittal.
As confirmed by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), see paragraph 1.2.1: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The disputed domain name incorporates the Complainant’s trademark with a small misspelling (omission of the letter “t”) plus the addition of the “SA” element.
As stated in WIPO Overview 3.0 “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element” (see par. 1.9).
It is also well accepted that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical or otherwise) would not prevent a finding of confusing similarity under the first element (see par. 1.8 of the WIPO Overview 3.0).
In the present case the addition of the SA element (South Africa) does not prevent the confusion as the trademark is recognizable in the disputed domain name.
The suffix <.com> shall be disregarded under the confusing similarity test as it does not add anything to the distinctiveness of the disputed domain name.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.
B. Rights or Legitimate Interests
The general rule is the following:
(i) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests; and
(ii) once such prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.
If the respondent fails to do so, the second element of the Policy is satisfied (see Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and CAC Case No. 101284).
The Respondent did not respond.
While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows all reasonable inferences of fact in the allegations of the complaint to be deemed true (see paragraph 14(b) of the Rules and Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095, National Arbitration Forum).
The Respondent is not known under the disputed domain name, is not related in any way with the Complainant and no evidence is available of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
The disputed domain name is an example of typosquatting and it has been confirmed by previous panels that typosquatting itself can be the evidence that the Respondent lacks rights and legitimate interests in the disputed domain name (see e.g. CAC Case No. 102083).
The Panel finds that the Complainant has shown a prima facie case that has not been rebutted by the Respondent and satisfied the second requirement of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.
These circumstances are non-exhaustive and other factors can also be considered in deciding whether the disputed domain name is registered and used in bad faith.
The Complainant alleges that the disputed domain name is used for redirecting to the Complainant’s subsidiary web site in South Africa.
The disputed domain name is not actively used on the date of the decision.
There is a general agreement that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see par. 3.3 of the WIPO Overview 3.0).
One has to look at the circumstances of a case taking into account, in particular, the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use and the implausibility of any good faith use to which the domain name may be put (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CAC Case No. 101691 and CAC Case No. 101640).
The Panel finds that the Complainant’s ArcelorMittal trademark has a strong reputation and is highly distinctive.
Furthermore, the Complainant has been a frequent target of cybersquatters in the past (see e.g. CAC Case No. 102083; CAC Case No. 102029; CAC Case No. 102008 and CAC Case No. 101983).
All the circumstances indicate that the Respondent was aware of the Complainant and its trademark and the registration as domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith (see CAC Case No. 102043). In this case it is hard, if not impossible, to imagine any good faith use of the disputed domain name by the Respondent.
The fact that the disputed domain name has been used for redirecting to the Complainant’s subsidiary site in the past actually supports finding of bad faith in this case.
This clearly demonstrates the Respondent’s awareness of the Complainant and its business. Besides, as confirmed by some previous panels such practice indicates bad faith as this registration and use interferes with Complainant’s ability to control the use of its own trademarks on the Internet, including choosing whether and how domain names incorporating those trademarks resolve to particular web pages, and raises the specter that Respondent could at some future time cause the domain name to resolve to Respondent’s own website or to a competing website (see Ameriquest Mortgage Co. v. Jason Banks, WIPO Case No. D2003-0293; MySpace, Inc. v. Mari Gomez, WIPO Cace No. D2007-1231 and Altavista Co. v. Brunosousa, WIPO Case No. D2002-0109).
Moreover, typosquatting itself can be considered as an additional argument in favor of finding bad faith registration and use (“typosquatting is not only a question of similarity, but can also be an indication of bad faith” – see CAC Case No. 101867).
The Panel holds that the third requirement of the Policy has been satisfied.
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