Decision for dispute CAC-UDRP-107736

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 has evidenced that it is the registered owner of the following trademarks relating to its brand MITTAL:

- word trademark MITTAL, International Registration (WIPO), registration No.: 1198046, registration date: December 5, 2013, status: active;

- word trademark MITTAL European Union Registration (EUIPO), registration No.: 003975786, registration date: August 9, 2004, status: active.

Moreover, the Complainant has demonstrated to own since 2009 the domain name <mittal-steel.com>, which resolves to the Complainant’s main website at “www.arcelormittal.com”, used to promote the Complainant’s products and related services in the steel industry internationally.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

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.

First, the Panel finds that the disputed domain name is confusingly similar to the MITTAL trademark in which the Complainant has rights. The disputed domain name incorporates the MITTAL trademark entirely, simply adding the term “vendas”, which is the Portuguese term for “sales”.  Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark. Moreover, it has also been held in many UDRP decisions and has meanwhile become a consensus view among UDRP panels that the mere addition of descriptive or other terms, such as e.g. the term “vendas”, is not capable to dispel the confusing similarity arising from such entire incorporation of the Complainant’s MITTAL trademark in the disputed domain name, especially when taking into account that this added term directly refers to the Complainant’s business of selling steel products.

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Second, the Complainant contends, and the Respondent has not objected to these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name, nor is the Respondent commonly known thereunder. The Respondent has not been authorized to use the Complainant’s MITTAL trademark, either as a domain name or in any other way.  Also, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain name, and the Respondent does not appear to have any trademark rights associated with e.g. the term “mittal” whatsoever.  Moreover, the Complainant has demonstrated that the disputed domain name resolves to a typical Parking website, and, thus, is passively held. Many UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (such as e.g. the term “vendas”), may not of itself confer rights or legitimate interests in a disputed domain name. Finally, the Complainant has also evidenced that MX servers have been activated under the disputed domain name, possibly for the purpose of sending unauthorized/illegal emails thereunder. Such making use of the disputed domain name, obviously in a fraudulent manner, again neither qualifies as a bona fide nor as a legitimate noncommercial or fair use under the UDRP and may not of itself confer rights or legitimate interests therein.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that, therefore, the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Third, the Panel holds that the disputed domain name was registered and is being used by the Respondent in bad faith. There is a consensus view among UDRP panelists that a passive holding of a disputed domain name may, in appropriate circumstances, be consistent with the finding of bad faith, in particular in circumstances in which, for example, a complainant’s trademark is well-known, and there is no conceivable use that could be made of the disputed domain name and would not amount to an infringement of the complainant’s trademark’s rights. In the case at hand, in the absence of any other reasonable explanation as to why the Respondent should rely on the disputed domain name which includes the Complainant’s undisputedly reputed MITTAL trademark entirely, and given that the Respondent has brought forward nothing in substance relating to the intended use of the disputed domain name, the Panel finds that the Respondent has registered and is making use of the disputed domain name in a manner which at least takes unjustified and unfair advantage of the Complainant’s MITTAL trademark’s reputation and must, therefore, be considered as registered and being used in bad faith within the meaning of the Policy. Also, activating MX servers under the disputed domain name at least allows the assumption that the Respondent intends to make use at some point of the disputed domain name in connection with unauthorized email services which, in turn, are inconceivable of being of a good faith nature, either. Accordingly, such circumstances are further evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy. Finally, it also carries weight in the eyes of the Panel that the Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain name (e.g. the last name “email”), which at least supports the Panel’s bad faith finding.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).