Decision for dispute CAC-UDRP-107998

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 bases its Complaint on the following trademark:

- International trademark registration “ARCELORMITTAL”, no. 947686, registered on August 3, 2007, for goods and services in classes 6, 7, 9, 12, 19, 21, 39, 40, 41, 42.

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

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.

1. Confusing Similarity

The Panel agrees that the disputed domain name <arcelormittalcons.com> is confusingly similar to the Complainant's earlier trademark ARCELORMITTAL. The disputed domain name incorporates entirely the Complainant’s earlier ARCELORMITTAL trademark with the addition of the term “cons”, which is not sufficient to prevent the finding that the domain name is confusingly similar to the Complainant’s trademark.

Moreover, the extension “.com” is not to be taken into consideration when examining the similarity between the Complainant’s trademark and the disputed domain name (WIPO Case No. D2005-0016, Accor v. Noldc Inc.). The mere adjunction of a gTLD such as “.com” is irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity (WIPO Case No. 2013-0820, L’Oréal v Tina Smith, WIPO Case No. D2008-0820 Titoni AG v Runxin Wang and WIPO Case No. D2009-0877, Alstom v. Itete Peru S.A.).

Therefore, the Panel is satisfied that the first condition under the Policy is met.

2. Lack of Respondent's rights or legitimate interests

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Based on the available evidence, the Respondent does not appear to be known by the disputed domain name as such is not identified in the WHOIS database as the disputed domain name.  

Moreover, the Respondent is not related to the Complainant in any way. The Complainant does not carry out any activity for, nor has any business with the Respondent.

No license nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trademark ARCELORMITTAL, or to apply for registration of the disputed domain name.

The disputed domain name resolves to a website under construction, while MX servers are configured for the disputed domain name, an aspect which might lead to a risk of confusion with the Complainant and its trademark, as well as to a possible risk of fraudulent activity.

The Respondent had an opportunity to comment on the Complaint’s allegations by filing a Response, which the Respondent failed to do.

All the above do not amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain name.

Thus, the Panel is satisfied that the Complainant has at least established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel takes the view that also the second requirement under the Policy is met.

3. Bad Faith

The Complainant’s trademark ARCELORMITTAL predates the registration date of the disputed domain name and enjoys a distinctive character. The Respondent has chosen to register the disputed domain name which incorporates entirely the Complainant’s earlier ARCELORMITTAL trademark with the addition of the term “cons” in order to create confusion with such trademark. Therefore, the Panel concludes that at the time of registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademark and has intentionally registered it in order to benefit from the distinctive character of the Complainant’s trademark.

In the present case, the following factors should be considered:

• the Complainant's ARCELORMITTAL trademark predates the registration date of the disputed domain name, being a trademark with a distinctive character;
• the Respondent failed to submit any response and has not provided any evidence of actual or contemplated good faith use of the disputed domain name;
• the Respondent registered the disputed domain name, which includes in its entirety the Complainant’s earlier ARCELORMITTAL trademark with the addition of the term “cons” in order to create confusion with such trademark;
• the disputed domain name resolves to a website under construction, while MX servers are configured for the disputed domain name, aspect which might lead to a risk of confusion with the Complainant and its trademark, as well as to a possible risk of a fraudulent activity;
• any good faith use of the disputed domain name would be implausible, as the trademark ARCELORMITTAL is linked to the Complainant and the Respondent has no business relationship with the Complainant, nor was ever authorised to use a domain name confusingly similar to the Complainant's trademark.

In light of the foregoing, the Panel concludes that the Respondent has registered and has been using the disputed domain name in bad faith. Thus, the third and last condition under the Policy is also satisfied.