Rights
The Complainant states that the disputed domain name is confusingly similar to its name and registered trade mark, the word mark, arcelormittal.
Indeed, the only differences are firstly, the addition of one character, a hyphen, between the two words in the name and mark and secondly, the new word at the end, the place name or geographical term “MONTERREY.” The Complainant says the place name “MONTERREY” here compounds the likelihood of confusion between the disputed domain name and the Complainant’s trade mark as the Complainant is in fact present and doing business in Monterrey, Mexico.
So the addition of that term suggests that the Respondent/its site is the Complainant’s business in Monterrey. This was the finding in the similar case CAC No. 102470, Arcelormittal (SA) v. acero. The Panel accepts this submission.
In terms of the similarity analysis, identity is a strict standard and is not present, however the trade mark and the disputed domain name are clearly similar. The gTLD is disregarded. The hyphen can be disregarded also. Consequently, the disputed domain name is confusingly similar to Complainant’s trade mark, the word mark, Arcelormittal.
Fair Use and Legitimate Interests
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 by the disputed domain name. This is accepted and is clear from the WHOIS information. It is not related in any way to the Complainant and does not carry out any activity for it, nor has any business with it. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trade mark. The Respondent has no fair use or legitimate interests in respect of the disputed domain name on the face of the case and is not, for example, using the mark in a nominative sense to talk about the Complainant.
Further, the disputed domain name resolves to a website which looks like an official website of the Complainant. Thus, the Respondent impersonates or passes itself off as the Complainant or an affiliate of the Complainant and this cannot be a bona fide offering of goods or services or a legitimate non-commercial or fair use. See the Forum Case No. 1649982, DramaFever Corp. v. olxhost c/o olxhost. The Panel notes that the contact details given on the site to which the disputed domain name resolves are or purport to be those of the Complainant.
Fundamentally, use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trade mark owner. Generally speaking, UDRP panels have found that domain names that are near identical to a complainant’s trade mark carry a high risk of implied affiliation. Even where a domain name consists of a trade mark plus an additional term UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. At the offending end of the spectrum are use with geographic terms (e.g., <trade mark-usa.com>, or <trade mark.nyc>), or terms with an “inherent Internet connotation” (e.g., <e-trademark.com>, <buy-trademark.com>, or <trademark.online>) as these are seen as tending to suggest sponsorship or endorsement by the trade mark owner. This is such a case. The content of the website in question removes any margin for error and places this case firmly in the impersonation zone. Therefore the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Bad Faith
The Complainant contends that the disputed domain name was registered in bad faith and is used in bad faith.
When looking at bad faith - the focus is free-riding or taking unfair advantage of a complainant’s mark. This can be established by any of the below factors from the Policy at paragraph 4(b) (although these are non-exclusive, and other scenarios may also arise):
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant cites and relies on (iv) but all are potentially applicable in this case. The Complainant’s trade mark is distinctive and is a well-known mark. Other panels have made the same finding, see CAC Case No. 101908, Arcelormittal v. China Capital (above) and CAC Case No. 101667, Arcelormittal v. Robert Rudd (above). See also CAC Case No. 102470, Arcelormittal (sa) v. Acero and WIPO Case No. DCO2018-0005, ArcelorMittal SA v. Tina Campbell.
Here the disputed domain name resolves to a website which displayed the Complainant’s trade mark. Therefore, there can be no doubt here the Respondent knew about the Complainant and its rights. Even if this was not so, given the distinctiveness of the Complainant's trade mark and the extent of its reputation, it would be clear the Respondent had registered the disputed domain name with full knowledge of the Complainant's trade mark.
The Respondent has not come forward with an explanation for its selection or use of the Complainant’s name and mark. Where a mark is famous and there is no obvious reason for its selection and the Respondent has not come forward to explain, it will often be reasonable to find bad faith. See WIPO case, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here as the disputed domain name resolves to a website which displays the Complainant’s trade mark and misrepresents that it is the Complainant or is connected to it, bad faith is clear.
The Panel accepts that this creates a likelihood of confusion with the Complainant's trade mark and the source, sponsorship, affiliation, or endorsement of the web site.
The Panel finds the Respondent has registered the disputed domain name in bad faith and is using it in bad faith.
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