On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 102379
Time of Filing 2019-03-06 09:53:17
Disputed domain name MITTALSTEELTRADE.COM
Case Administrator
Name Šárka Glasslová
Complainant
Organization ARCELORMITTAL (SA)
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Organization Milen Radumilo
Other Legal Proceedings
The Panel is not aware of any other pending or decided legal proceedings relating to the disputed domain name.
Identification of rights
In these proceedings, the Complainant relies on the following trademarks:

- MITTAL (word), International Registration No. 1198046, registered as of December 5, 2013, in the name of ArcelorMittal (Société Anonyme) (the Complainant);
- MITTAL STEEL (word), EUTM No. 4233301, registered as of January 7, 2005, in the name of ArcelorMittal (the Complainant).

It is worth noting that, the Complainant owns many similar trademarks in various countries, which have not been cited in these proceedings.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a large multinational steel-producing company, initially founded in 1976 and merged into its current legal form in 2006. Ever since, the Complainant has acquired commercial presence all around the world.

The Complainant owns a good-sized portfolio of trademarks including the words "MITTAL" and “MITTAL STEEL”, among which two EU registrations dating back to 2004 and 2005. It also owns a multitude of related domain names (according to the Complainant), like <mittalsteel.com> since January 3, 2003.

The disputed domain name <mittalsteeltrade.com> was registered on February 28, 2019 by the Respondent.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:
The Complainant contends that the disputed domain name is confusingly similar to its MITTAL and MITTAL STEEL trademarks, as it is a combination of these wholly incorporated trademarks and of a generic term. This last element is sufficient to support the finding that the disputed domain name is confusingly similar to the Complainant's trademark. The mere addition of a generic term to the Complainant’s trademark does not change the overall impression of a most likely connection with the trademarks MITTAL and MITTAL STEEL of the Complainant. The specific term (TRADE) makes the confusion stronger, as it relates to the Complainant’s activities. As to the gTLD “.com”, the Complainant suggests that it should be disregarded, as per the usual practice.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent is not known by the disputed domain name, the Complainant is not affiliated with the Respondent nor has it ever authorised the Respondent to register its trademark as a domain name, and the Complainant has no business with the Respondent.

According to the Complainant, given the distinctiveness and reputation of the MITTAL and MITTAL STEEL trademarks, the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark in an intentionally designed way with the aim to create a likelihood of confusion with the Complainant’s trademarks and domain names, and this is evidence of the fact that the disputed domain name was registered in bad faith.

With respect to use in bad faith, the Complainant points out that the Respondent has used the disputed domain name as a parking website with commercial links some of which relate to the Complainant, a fact that -in combination with the incorporation of a famous trademark in a domain name- proves use in bad faith. Further, the Complainant claims that the Respondent has demonstrated a pattern of other bad faith registrations.
For all these reasons, the Complainant concludes that the Respondent registered and used the disputed domain name in bad faith.


RESPONDENT:
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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).

The disputed domain name consists of the Complainant's whole trademarks (MITTAL / MITTAL STEEL), in combination with a generic word (TRADE). The addition of the specific generic word in the disputed domain name is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark of the Complainant. Such word (TRADE) actually reinforces the confusion, as it relates directly to the activities of the Complainant.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

Since proving a negative fact is almost impossible, panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

In the case at issue, the Complainant argued that it had never authorised the Respondent to register the MITTAL or MITTAL STEEL trademark in a domain name, and that it had never licensed its trademarks to the Respondent.

Furthermore, the Respondent has not demonstrated any use of the disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain name.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the disputed domain name.

In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. In order to rebut the Complainant's arguments, the Respondent had the possibility to make his own defence. However, the Respondent has chosen not to file a Response.

Therefore, the Panel is satisfied that also the second requirement under the Policy is met.
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

As far as registration in bad faith is concerned, given the reputation of the Complainant's trademarks and the fact that the disputed domain name fully incorporates these trademarks (even in combination with a generic term), it is evident that, at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant's trademark. 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.

With respect to use in bad faith, the disputed domain name resolves to an inactive website. This fact is to be combined with the full incorporation of the Complainant’s reputable trademark in the disputed domain name. For this Panel, same as for many previous panels, such misleading behaviour clearly amounts to use in bad faith. Consequently, it is impossible to conceive any plausible active use of the disputed domain name that would be legitimate.
Therefore, the Panel finds it clear that the disputed domain name was used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
The disputed domain name wholly incorporates the Complainant's trademarks, written in combination with a generic word. The disputed domain name is therefore confusingly similar to the Complainant's trademark.

The Respondent was not authorised to include the Complainant's trademarks in the disputed domain name, and the Complainant never licensed its trademarks to the Respondent. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered the disputed domain name with full knowledge of the Complainant's reputable trademark. His use of the disputed domain name is in bad faith, as there is no conceivable use of the disputed domain name that could amount to a legitimate use.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) are to be
MITTALSTEELTRADE.COM Transferred to the Complainant
Panellists
Name Sozos-Christos Theodoulou
Date of Panel Decision 2019-04-18
Publication of the Decision
Publish the Decision