Case number | CAC-UDRP-105466 |
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Time of filing | 2023-05-25 08:44:56 |
Domain names | arcelormittal-eu.biz |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
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Complainant
Organization | ARCELORMITTAL (SA) |
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Complainant representative
Organization | NAMESHIELD S.A.S. |
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Respondent
Name | bill chill vhj |
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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 owner of the international trademark No. 947686 ARCELORMITTAL® registered on August 3, 2007 at classes 06, 07, 09, 12, 19, 21, 39, 40 41 & 42.
In addition, the Complainant owns the domain name <arcelormittal.com> created on January 26, 2006.
FACTS PROVIDED BY THE COMPLAINANT:
The Complainant is a company specialized in steel producing in the world and it is the market leader in steel for use in automotive, construction, household appliances and packaging with 69.1 million tons crude steel made in 2021. It holds sizeable captive supplies of raw materials and operates extensive distribution networks.
The Complainant is the owner of the trademark ARCELORMITTAL® and the domain name <arcelormittal.com>.
The disputed domain name <arcelormittal-eu.biz> (hereinafter, the “Disputed Domain Name”) was registered on May 18, 2023 by BILL CHILL VHJ based in Algeria and it resolves to a parking page with active .MX records.
According to Complainant’s non-contested allegations, the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name and he is not related in any way to the Complainant’s business.
For the purpose of this case, the Registrar confirmed that the Respondent is the current registrant of the Disputed Domain Name and that the language of the registration agreement is English.
The Respondent did not reply to the Complaint.
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
COMPLAINANT:
First element: Similarity
The Complainant confirms that the Disputed Domain Name <arcelormittal-eu.biz> is confusingly similar to its trademark ARCELORMITTAL®.
The Complainant states that the geographic term “EU” is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the trademark and branded goods ARCELORMITTAL®. It does not change the overall impression of the designation as being connected to the Complainant’s trademark ARCELORMITTAL®. It does not prevent the likelihood of confusion between the Disputed Domain Name and the Complainant, its trademark and the domain name associated. Furthermore, the Complainant contends that the addition of the gTLD “.BIZ” does not change the overall impression of the designation as being connected to the Complainant’s trademark. It does not prevent the likelihood of confusion between the Disputed Domain Name and the Complainant, its trademark and its domain names associated.
Second element: Rights or legitimate interest
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and he is not related in any way with the Complainant. In addition, the Complainant argues that they do not carry out any activity for, nor has any business with the Respondent.
The Complainant asserts that neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark ARCELORMITTAL® or apply for registration of the Disputed Domain Name by the Complainant.
Moreover, the Disputed Domain Name resolves to a parking page. The Complainant contends that Respondent did not use the Disputed Domain Name since its creation, and it confirms that Respondent has no demonstrable plan to use the Disputed Domain Name.
Third element: Bad faith
The Complainant contends that the Disputed Domain Name <arcelormittal-eu.biz> is confusingly similar to its distinctive trademark ARCELORMITTAL®.
The Complainant indicates that the Complainant’s trademark ARCELORMITTAL® is widely known by showing UDRP decisions issued by different UDRP Panelist where the well-known status of the trademark ARCELORMITTAL® for metal and steel production has been confirmed. Given the distinctiveness of the Complainant's trademark and reputation, the Complainant confirms that it is reasonable to infer that the Respondent has registered the Disputed Domain Name with full knowledge of the Complainant's trademark. Moreover, the Complainant states the misspelling of the trademark ARCELORMITTAL® was intentionally designed to be confusingly similar with the Complainant’s trademark.
The Complainant contends that the Respondent has not demonstrated any activity in respect of the Disputed Domain Name, and it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate, such as an infringement of the Complainant’s rights under trademark law. As prior UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.
Finally, the Complainant indicated that the Respondent has set up the Disputed Domain Name with MX records which suggests that it may be actively used for email purposes.
RESPONDENT
Respondent did not reply to the Complaint.
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 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 DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR TO THE TRADEMARK ARCELORMITTAL® OF THE COMPLAINANT.
The Uniform Domain Name Dispute Resolution Policy (the Policy) in its Paragraph 4(a)(i) indicates the obligation of Complainant to demonstrate that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The Complainant has submitted evidence showing the ownership of the international trademark international trademark No. 947686 ARCELORMITTAL® registered on August 3, 2007 at classes 06, 07, 09, 12, 19, 21, 39, 40 41 & 42.
From the Panel’s perspective, the Disputed Domain Name <arcelormittal-eu.biz> is composed of the trademark “ARCELORMITTAL” with the addition of the term EU – which is the common abbreviation for the European Union preceded by a hyphen. Previous panels have confirmed that where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see paragraph 1.8 WIPO Overview 3.0).
Furthermore, the addition of the Top-Level Domain Name in a domain (.biz for the case at hand) is considered as a standard registration requirement and, therefore, it should be disregarded under the first element confusing similarity test (see paragraph 1.11 WIPO Overview 3.0).
Therefore, the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy and the Disputed Domain Name is confusingly similar to Complainant’s mark.
- RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME.
The second element of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The generally adopted approach by UDRP panels, when considering the second element, is that if a complainant makes out a prima facie case, the burden of proof shifts to the respondent to rebut it (see WIPO Jurisprudential Overview, version 3.0., paragraph 2.1).
The Complainant indicates that the Respondent is not affiliated nor authorized in any way to use the trademark ARCELORMITTAL®. Furthermore, the Complaint argues that it does not carry out any activity for, nor has any business with the Respondent. Finally, the Complainant has not granted a license or authorization to the Respondent to make any use of the trademark ARCELORMITTAL®.
From the information provided by Complainant, there is no evidence or reason to believe that the Respondent (as individual, business or other organization) has been commonly known by the Disputed Domain Name. The Respondent’s name “BILL CHILL VHJ” provided in the Registrar’s verification is all what it links the Disputed Domain Name with the Respondent. Absent of any other evidence such as a personal name, nickname or corporate identifier, the Panel is of the opinion that the Respondent is not commonly known by the Disputed Domain Name.
The Complainant also mentioned that website associated with the Disputed Domain Name resolves to a parked website. Different panels have confirmed that the lack of content at the disputed domain can be considered as a finding that Respondent does not have bona fide offering of goods and services (see, for example, Forum Case No. FA 1773444, Ashley Furniture Industries, Inc v. Joannet Macket/JM Consultants).
The fact that Respondent did not reply to the Complaint gives an additional indication that Respondent lacks rights or legitimate interest since Respondent did not provide with evidence of the types specified in paragraph 4 (c) of the Policy, or of any circumstances, giving rise to rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel concludes that neither the Respondent nor the evidence establishes that the Respondent has any right or legitimate interest to the Disputed Domain Name. The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.
- THE DISPUTED DOMAIN NAME HAS BEEN REGISTERED AND IS BEING USED IN BAD FAITH IN ACCORDANCE WITH THE POLICY.
Paragraph 4(a)(iii) of the Policy indicates that Complainant must assert that the Respondent registered and is using the Disputed Domain Name in bad faith. In this sense, Paragraph 4(b) of the Policy sets out four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 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 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 domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.
The evidence submitted by Complainant confirms that its trademark ARCELORMITTAL® is distinctive and it has a strong reputation in the metal and steel production industry. In this vein, the Complainant referred to different UDRP cases by which the Panels confirmed the well know status of the ARCELORMITTAL® trademarks throughout the world (e.g. CAC Case No. 101667 and CAC Case No. 101908). Absent of Respondent’s reply, the Panel finds that Respondent, prior to the registration of the Disputed Domain Name was aware of Complainant’s trademark, in particular since the Disputed Domain Name was registered on May 18, 2023 and Complainant’s trademarks were registered long before the registration of the Disputed Domain Name.
As indicated by Complainant, the website associated with the Disputed Domain Name resolves to an inactive website. Past panelist have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding and for this purpose, the following factors should be taken into account: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
See paragraph 3.3. of WIPO Overview.
As explained before, the Complainant’s mark is indeed distinctive and it has a strong reputation in the metal and steel production industry and by no replying to this Complaint, the Respondent did not show any evidence regarding the good faith to use the Disputed Domain Name. Thus, the finding of bad faith under the doctrine of passive holding can be applicable to the current case.
Last but not least, the Complainant provided with evidence showing that .MX records are configured. Past Panels have found that the activation of mail exchanger record (MX record) suggests that the Respondent is using or is preparing to use the Disputed Domain Name to send and receive e-mail communications with the purpose to mislead the recipients as to their source. This is an additional circumstance of Respondent’s bad faith. (See, e.g., Decathlon v. Privacy service provided by Withheld for Privacy, WIPO Case No. D2021-4369.
In light of the above-mentioned findings, the Panel finds that the evidence submitted by the Complainant supports the argument that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.
Therefore, the Panel concludes that Respondent registered and is using the Disputed Domain Name in bad faith and thus has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
- arcelormittal-eu.biz: Transferred
PANELLISTS
Name | Victor Garcia Padilla |
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