Decision for dispute CAC-UDRP-107954

The Complainant also refers to ownership over the domain name <arcelormittal.com> that incorporates its ARCELORMITTAL trademark, and which is registered since January 27, 2006.

• that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
• that the disputed domain name has been registered and is being used in bad faith.

1. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name, as stipulated in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

The Complainant has shown rights in respect of the ARCELORMITTAL trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.2.1).

The entirety of the Complainant’s trademark is reproduced within the disputed domain name.  Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.7).

Although the addition of other terms, here “br” (i.e. ISO 3166-1 alpha-2 two-letter country code for Brazil), may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.8).

Previous UDRP panels have consistently held that the applicable Top Level Domain (“TLD”) in a domain name (eg, “.com”, “.club”, “.nyc” or ".online" in this case) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11.1).

In accordance with the above, the Panel finds that the first element of the Policy has been established and that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. 

2. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In particular, the Panel notes that there appears to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s ARCELORMITTAL trademark. There appears to be no element from which the Panel could infer the Respondent’s rights and legitimate interests in the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

Furthermore, based on the evidence provided by the Complainant, the disputed domain name was used for a website offering steel materials. The use of the disputed domain name for a website offering and promoting competing services to those of the Complainant would not support a claim to rights or legitimate interests (see WIPO Overview 3.0, section 2.5.3).

The Panel also finds that the structure of the disputed domain name, which contains the Complainant’s ARCELORMITTAL trademark in combination with the term "br" (i.e. ISO 3166-1 alpha-2 two-letter country code for Brazil), carries a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1).

Having in mind the above, the Panel finds the second element of the Policy has been established.

3. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.  

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (see WIPO Overview 3.0, section 3.2.1).

Regarding the registration of the disputed domain name in bad faith, the Panel holds that the Respondent had the Complainant in mind when registering the disputed domain name. The Complainant’s ARCELORMITTAL trademark has been registered and used long before the Respondent registered the disputed domain name, so it is unlikely that the Respondent was not aware of this trademark, especially having in mind its distinctiveness and reputation. Furthermore, the previous use of the disputed domain name to promote and offer competing services indicates that the Respondent was well-aware of the Complainant and its ARCELORMITTAL trademark and evidences that the Respondent actually had the Complainant in mind when registering the disputed domain name.  

Due to the above, the Panel finds that the disputed domain name has been registered in bad faith. 

As indicated above, based on the undisputed evidence provided by the Complainant, the disputed domain name used to resolve to a website offering steel materials. Such use manifestly indicates bad faith on the Respondent’s side. In that sense, it appears that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website which is clear evidence of bad faith in accordance with Paragraph 4(b)(iv) of the Policy.

While the disputed domain name no longer resolves to an active website, such a change of use and current passive holding does not prevent a finding of bad faith given the totality of the circumstances of the case at hand (WIPO Overview 3.0, section 3.3).

The Panel finds that the disputed domain name has been both registered and is being used in bad faith, and consequently that the Complainant has established the third element of the Policy.