NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
COMPLAINANT’S CONTENTIONS:
The disputed domain names are confusingly similar to the Complainant’s trademark MITTAL®. Indeed, the trademark MITTAL® is included in its entirety.
The Complainant contends that the addition of the term “METAL”, “METALS” and “LTD” is not sufficient to escape the finding that the disputed domain names are confusingly similar to the trademark MITTAL®. It does not change the overall impression of the designations as being connected to the Complainant’s trademark MITTAL®. It does not prevent the likelihood of confusion between the disputed domain names and the Complainant, its trademark and the domain name associated.
It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. Please see WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin.
On the contrary, the addition of the term “METAL”, in singular or plural form, worsens the likelihood of confusion between the disputed domain names and the Complainant’s trademark MITTAL®. Indeed, this term is related to the Complainant’s activities and the trademark MITTAL is registered in class 6 for several products, including “Common metals”.
Prior panels have held that the addition of words can worsen the confusing similarity between a trademark and a domain name.
Please see for instance WIPO Case No. D2010-2124, Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill: “The addition of certain words, as here, 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.”
Moreover, the Complainant contends that the addition of the generic Top-Level Domain suffix “.COM” does not change the overall impression of the designations as being connected to the trademark MITTAL®. It does not prevent the likelihood of confusion between the disputed domain names and the Complainant, its trademark and its domain name associated.
Please see WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. (“It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”).
Finally, many UDRP decisions have confirmed the Complainant’s rights such as:
- WIPO Case No. Case No. D2018-1086, ArcelorMittal S.A. v. Registrant of lakshmimittal.org, c/o WHOIStrustee.com Limited / Zeus Holding Market Ltd., <lakshmimittal.org>;
- WIPO Case No. D2016-0449, Arcelormittal S.A. v. Ram Mittal, <mittal-investment.com>;
- WIPO Case No. D2014-1677, Arcelormittal S.A. v. Navin Mandla, <lakshmimittal.london>.
Consequently, the disputed domain names are confusingly similar to Complainant’s trademark MITTAL®.
The Respondent does not have any rights or legitimate interest in the disputed domain names.
According to WIPO Case No. D2003-0455 Croatia Airlines d. d. v. Modern Empire Internet Ltd., the 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 Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.
The Complainant asserts that the Respondent is not known as the disputed domain names but as “ANKIT ENTERPRISES”.
Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain names. Please see for instance:
- FORUM Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii).”).
- FORUM Case No. FA 699652, The Braun Corporation v. Wayne Loney.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names and he is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent.
Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark MITTAL®, or apply for registration of the disputed domain names by the Complainant.
Moreover, the disputed domain names resolve to a parking page. The Complainant contends that Respondent did not make any use of disputed domain names since their registration, and it confirms that Respondent has no demonstrable plan to use the disputed domain names. It demonstrates a lack of legitimate interests in respect of the disputed domain names.
Please see FORUM Case No. 1785596, King Ranch IP, LLC v. E Miller (“Additionally, Respondent makes no material demonstrable preparations to use the <kingranchbbq.com> domain name. The domain name simply links to a parking page. Holding a confusingly similar domain name inactively, as does Respondent, is not indicative of any bona fide offering of goods or services under Policy 4(c)(i), nor of a non-commercial or fair use under Policy 4(c)(iii).”).
Thus, in accordance with the foregoing, the Complainant contends that the Respondent has no right or legitimate interest in respect of the disputed domain names.
The disputed domain names have been registered and are being used in bad faith.
The Complainant contends that the disputed domain names are confusingly similar to its distinctive trademark MITTAL®.
The Complainant’s trademark MITTAL® is widely known. Past panels have confirmed the notoriety of the trademark MITTAL® in the following cases:
- WIPO Case No. D2018-1086, ArcelorMittal S.A. v. Registrant of lakshmimittal.org, c/o WHOIStrustee.com Limited / Zeus Holding Market Ltd. ("The Domain Name wholly incorporates a well-known mark [MITTAL]”)
- WIPO Case No. D2010-2049, Arcelormittal v. Mesotek Software Solutions Pvt. Ltd. (“the Complainant’s marks MITTAL and MITTAL STEEL have been widely used and are well-known.”)
Given the distinctiveness of the Complainant's trademarks and reputation, it is reasonable to infer that the Respondent has registered the domain names with full knowledge of the Complainant's trademark.
Moreover, this disputed domain names resolve to a registrar parking page. The Complainant contends that the Respondent fails to make an active use of the disputed domain names. Failure to make an active use of a domain name is evidence of bad faith.
Please see FORUM Case No. FA 1786533, Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen (“As noted previously, Complainant offers screenshots of the resolving webpage for the disputed domain name. The Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy 4(a)(iii).“).
Thus, Complainant contends that Respondent has registered the disputed domain names and is using them in bad faith.
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