Decision for dispute CAC-UDRP-108519

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 n° 778212 ARCELOR registered on February 25, 2002. The Complainant also owns an important domain names portfolio including the same distinctive wording ARCELOR, such as <arcelor.com> registered and used since August 29, 2001 <arcelormittaltrades.com> registered since July 6, 2022 and <arcelormeittertrades.com> registered since December 23 , 2023.

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 58.1 million tons of crude steel made in 2023. It holds sizeable captive supplies of raw materials and operates extensive distribution networks. It has an international reputation. In its niche it is well-known as attested to by earlier cases entering awards transferring infringing domain names to its account. 

Parties Contentions

COMPLAINANT

Complainant contends

1. The disputed domain name <arceloxmeittatrades.com> (registered on March 12, 2024), which currently resolves to a website related to cryptocurrency, is confusingly similar to its trademark ARCELOR. It is also confusingly similar to the Complainant's domain name <arcelormeittaltrades.com> although the Panel points out that a domain name is not a trademark. Nevertheless, the trademark ARCELOR® is recognizable in the typosquatted version of the disputed domain name ("arcelox" substituting an "x" or an "r").

2. As ARCELOR® is exclusively associated with Complainant, and as Respondent has appropriated the trademark to resolve to a website regarding cryptocurrency, the Respondent lacks rights or legitimate interests in the disputed domain name and its registration is abusive and in violation of the UDRP.

3. The disputed domain name is allegedly operated by the company ARCELORMEITTER TRADES. However, there is no clear information to identify this company on the website. Indeed, there is no legal address nor company number. The only contact information on the related website is an email address using the Complainant’s domain name (support@) <arcelormeittertrades.com>, the same tactic used by another registrant which was the subject of an earlier decision for the transfer of the domain name in favor of the Complainant, ARCELORMITTAL v. Carolyn G. Olson (jitecer), CAC-UDRP-106160.

4. As the website to which the disputed domain name resolves is mala fides and as the Respondent uses the disputed domain name to attract Internet users by creating a likelihood of confusion between the disputed domain name and the Complainant’s trademark for its commercial gain the Respondent registered and is using the disputed domain name in bad faith.

RESPONDENT:

The Respondent has not appeared formally or informally to controvert the evidence submitted by the Complainant.

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.

The Respondent did not reply to the Complainant's contentions and did not submit any arguments or evidence in its defense. In such an event, UDRP Rule 14 provides (a) that the "Panel shall proceed to a decision on the complaint" and (b) that "the Panel shall draw such inferences therefrom as it considers appropriate." In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.1 at Para. 4.3. "Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent." Such is the case here.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent has registered and is using the domain name in bad faith.

In this case, the Czech Arbitration Court has employed the required measures to achieve actual notice of the Complaint to the Respondent, and the Respondent was given a fair opportunity to present its case and defend its registration of <arceloxmeittatrades.com> the subject domain name.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name ..." Notwithstanding Respondent's default, however, Complainant is not relieved from the burden of establishing its claim. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.1, § 4.3: "Noting that the burden of proof is on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s contentions are accurate." However, if a complainant's adduced evidence supports any element of the Policy, a respondent has an opportunity to contest the contention that its registration of the challenged domain name was unlawful. Here, Respondent has not availed itself of contesting the evidence, and for the reasons further explained the disputed domain name is forfeited to Complainant.

1. Identical or confusingly similar, §4(a)(i).

This first limb of the Policy requires Complainant to prove that it has a trademark right and that the disputed domain name is identical or confusingly similar to that mark. The Panel finds that Complainant has demonstrated that it has a registered trademark right to the term ARCELOR. Having established that element of the Policy the next question is whether the disputed domain name is identical or confusingly similar to Complainant's mark. 

In specific, the Complainant asserts that the substitution of the letter “R” by the letter “X”, the addition of the term “MEITTA” (which evokes the sequence “MITTAL” of the Complainant’s company and trade name) and the generic term “TRADES” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark. It does not change the overall impression of the designation as being connected to the Complainant’s trademark. 

A side-by-side comparison of the domain name and the ARCELOR trademark indicates that <arceloxmeittatrades.com> is confusingly similar to the mark in that it incorporates Complainant's trademark, albeit a typosquatted version. At the threshold it is necessary only to consider "whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of a domain name." 

Previous panels have found that slight spelling variations do not prevent a domain name from being confusingly similar to the Complainant's trademark. See WIPO Case No. D2020-3457, ArcelorMittal (Societe Anonyme) v. Name Redacted <arcelormltal.com> ("As the disputed domain name differs from the Complainant's trademark by just two letters, it must be considered a prototypical example of typosquatting — which intentionally takes advantage of Internet users that inadvertently type an incorrect address (often a misspelling of the complainant's trademark) when seeking to access the trademark owner's website. WIPO Overview 3.1 at section 1.9 states that "[a] domain name which consists of a common, obvious, or misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes the first element.").

Furthermore, the Complainant contends that the addition of the gTLD ".COM" does not change the overall impression of the designation as being connected to the Complainant's trademark. Panelists generally disregard the top-level suffixes as functional necessities, thus the top-level extension is irrelevant in determining the issue under the first requirement of the Policy. See WIPO Overview 3.1, sec 1.11.1 The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Having demonstrated that <arceloxmeittatrades.com> is confusingly similar to Complainant's ARCELOR trademark, the Panel finds Complainant has satisfied Para. §4(a)(i) of the Policy.

      2.  Rights and legitimate interests, Para. 4(a)(ii)

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent lacks rights or legitimate interests in respect of the disputed domain name but for the reasons explained in past cases, this burden is light. It is sufficient in the first instance for Complainant to allege a prima facie case, and if the evidence presented is conclusive or yields a positive inference that Respondent lacks rights or legitimate interests, the burden shifts to Respondent to rebut the allegations. This concept of shifting burdens is clearly explained in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 in which the Panel held that "[s]ince it is difficult to prove a negative ... especially where the Respondent, rather than complainant, would be best placed to have specific knowledge of such rights or interests—and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light."

Here, the Complainant has presented more than sufficient evidence to establish a prima facie case. Once the complainant makes such a prima facie showing, as the Complainant has in this case, "the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence rebutting the prima facie case or showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP," Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No: D2008-1393. Finally, "in the absence of direct evidence, complainant and the panel must resort to reasonable inferences from whatever evidence is in the record," Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No: D2000-1195.

Once the burden shifts, Respondent has the opportunity of demonstrating its right or legitimate interest by showing the existence of any of the following nonexclusive circumstances:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If a respondent proves any of these circumstances or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the respondent must succeed. However, where respondent fails to respond, the Panel must assess the record before it. 

In this case, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name in that in default of its responding to the complaint there is no evidence that any of the circumstances set forth above apply in defense.

First, Complainant has established that it did not authorize the Respondent to register or use the disputed domain name (Para. 4(c)(i) of the Policy). Second, the evidence in the record is conclusive that Respondent Deborah Goodrich is not commonly known under the disputed domain name. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group, Forum Case No: FA1804001781783 ("Here, the WHOIS information of record identifies Respondent as "Chad Moston / Elite Media Group." The Panel therefore finds under Policy 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii)"); Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, Case Number FA 1741129 (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same).

Nor is there any evidence that the use of the disputed domain name is for the purpose of making "a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." Rather, the Panel finds the opposite is the case. Since there is no proof otherwise, the record supports the conclusion that Respondent lacks any right or legitimate interest as measured by the three circumstances of paragraph 4(c). See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004 -0487 (holding that "once a complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP), similarly in Malayan Banking Berhad, supra. (holding that "[i]f the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.").

Accordingly, as the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name, Complainant has satisfied Paragraph §4(a)(ii) of the Policy.

      3. Registered and Used in Bad Faith, §4(a)(iii)

Having determined that Respondent lacks rights or legitimate interests, the Complainant must then prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. The consensus is expressed in WIPO Overview 3.1, section 3.1.4. is that "the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a well-known trademark . . . can by itself create a presumption of bad faith." Absent a cogent explanation from Respondent justifying its choice of domain name, this supports the conclusion that it registered <arceloxmeittatrades.com> with the purpose of taking advantage of its goodwill and reputation and committing fraud on consumers and Complainant's customers.

The Panel finds that the present case is one in which the presumption of bad faith is satisfied. The presumption is further strengthened by the strong inference of Respondent's actual knowledge of Complainant's and its ARCELOR trademark and of its intention to take advantage of its attractive value on the Internet solely for the reason of its goodwill flowing from its widely known brand. Paragraph 4(b) of the Policy sets out four nonexclusive circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.  

The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 the respondent has engaged in a pattern of such conduct; or 

(iii) the respondent has registered the 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 or service on the site or location.

Of the four circumstances, the fourth most readily applies as the domain name is clearly intended to attract Internet users seeking to reach Complainant's website or offer fraudulent services. The domain name in this case is passively held, but for no conceivably lawful use. Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 ; also National Football League v. Thomas Trainer, WIPO Case No. D2006-1440 (<nflnetwork.com>, holding that "when a registrant, such as respondent here, obtains a domain name that is [confusingly similar and] to a famous mark, with no apparent rights or legitimate interests in the name, and then fails to respond to infringement claims and a UDRP Complaint, an inference of bad faith is warranted.").

Where the facts demonstrate an intent to capitalize on an owner's mark in the manner in which Complainant describes and which is supported by proof in the record, the registration is prima facie abusive. Royal Bank of Canada - Banque Royale Du Canada v. Registration Private, Domains By Proxy, LLC / Randy Cass, WIPO Case No. D2019-2803 (<investease.com>. "It is clear that where the facts of the case establish that the respondent's intent in registering or acquiring a domain name was to unfairly capitalize on the complainant's nascent .. . trademark, panels have been prepared to find the respondent acted in bad faith.). See WIPO Overview 3.1, section 3.8.2. The Panel finds that the Complainant has shown that the Respondent registered and is using the disputed domain name in bad faith both in general and in particular because the Respondent's conduct puts the case squarely within paragraph 4(b)(iv) as well as within the larger notion of abusive conduct. The Panel finds that Complainant has adduced more than sufficient evidence to prove Respondent's bad faith based on the foregoing considerations.

Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith and that its conduct firmly supports the conclusion that the registration of <arceloxmeittatrades.com> was abusive. Having thus demonstrated that Respondent registered and is using the contested domain name in bad faith, Complainant has also satisfied ¶4(a)(iii) of the Policy.