Decision for dispute CAC-UDRP-105175

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the largest steel producing company in the world and is the market leader in steel for use in automotive, construction, household appliances and packaging with 69.1 million tonnes crude steel made in 2021. It holds sizeable captive supplies of raw materials and operates extensive distribution networks.

The above trademark is protected in numerous countries.

The Complainant is the largest steel producing company in the world and is the market leader in steel for use in automotive, construction, household appliances and packaging with 69.1 million tonnes crude steel made in 2021.  It holds sizeable captive supplies of raw materials and operates extensive distribution networks.

The disputed domain name <arcelomittalburns.com> was registered on January 31, 2023.

The Complainant states that the disputed domain name <arcelomittalburns.com> is confusingly similar to its trademark ARCELORMITTAL. In particular, in the Complainant's view, the addition of the term "burns" is not sufficient to escape the finding that the domain name is confusingly similar to the trademark ARCELORMITTAL. 

The Complainant states that the Respondent is not affiliated with him nor authorized by him in any way. The Complainant states that the Respondent has no right nor legitimate interest in the disputed domain name and it is not related in any way to its business. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Respondent, according to the Whois database, is not commonly known by <arcelomittalburns.com> or by other names similar to the disputed domain name.

The Complainant also notes that the domain name <arcelomittalburns.com> resolves to a parking page with commercial links and that, given the distinctiveness of the Complainant's trademark and reputation, it is reasonable to infer that the Respondent has registered the domain name with the full knowledge of the Complainant's trademarks. It is the Complainant's view that the Respondent has allowed the disputed domain name to be used with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, affiliation or endorsement of the Respondent's website to which the domain name resolves.

Complainant´s contentions are summarised above.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

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 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).

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).

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.

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant must prove that each of the following elements is present:

1) The Panel is of the opinion that the disputed domain name is confusingly similar to the Complainant's earlier trademark ARCELORMITTAL. As a matter of fact, this trademark is reproduced in the disputed domain name with a small typo contained in the central portion of the trademark. In particular, the element "arcelor" is indicated as "arcelo" in the disputed domain name. However, this minor difference is hardly noticeable, considering that it is placed in the middle of a long wording and that it consists of the mere omission of a single letter. Concerning the addition of the term "burns", the addition of this generic term, clearly associated to the Complainant's business (steel production), enhances the confusing similarity (see Intesa Sanpaolo SPA v. Milen Radumilo, CAC Case No. 103027 related to the domain name <intesasanpalo-convalida.com> and ARCELORMITTAL v. Private Private, CAC Case No. 105049 related to the domain <arcelormittal-burns.com>). Finally, in accordance with the consensus view of past UDRP panels, the Panel finds that the Top-Level domain (".COM" in this case) is not sufficient to exclude the likelihood of confusion since it is a mere technical requirement included in all domain names. The Complainant therefore succeeds on the first element of the Policy.

2) The Complainant has long standing rights in the mark ARCELORMITTAL. The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and as the Respondent was never authorized to use the domain name by the Complainant. The Respondent, in the absence of any response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed domain name. The Complainant has not licenced or otherwise permitted the Respondent to use the Complainant's marks in the disputed domain name. On the basis of the evidences submitted, and in the absence of a response, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant therefore succeeds on the second element of the Policy.

3) Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 Respondent registered the disputed domain names many years after the use and registration of the ARCELORMITTAL mark by the Complainant. In consideration of the reputation achieved by ARCELORMITTAL it is clear that the Respondent was surely aware of the Complainant’s trademark when he registered the domain names in dispute.

The disputed domain names resolve to parked pages with commercial links.  Such use here constitutes bad faith.  In WIPO Case no. D2009-0258 Mpire Corporation vs. Michael Frey, the panel found that “While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” It is the Panel's view that such conduct of using a domain name, to attract Internet users for commercial gain fall within the meaning of paragraph 4(b)(iv) of the Policy. Given the above, the Panel believes that the Respondent has registered the disputed domain names in order to trade off the reputation of the Complainant’s trademark.

The Complainant therefore succeeds also on the third element of the Policy.