The Complainant is Arcelormittal (SA) of Luxembourg, represented by Nameshield, France.
The Respondent is Manuel Lopez, Manuel Lopez Cantu of Mexico City, Mexico.
The disputed domain name <ventasarcelormittalmx.com> is registered with Hostinger, UAB (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2019. On March 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 16, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Luxemburg company, which plays a leading role in the steel producing industry, operating internationally in more than 60 countries and with extensive distribution networks worldwide. It is a market leader in steel for use in automotive, construction, household appliances and packaging, operating under the trademark ARCELORMITTAL.
The Complainant uses the mark ARCELORMITTAL to identify and promote its products and services, holding among others, International Trademark Registration No. 947686 ARCELORMITTAL, registered on August 3, 2007, in classes 6, 7, 9, 12,19, 21, 39, 40, 41 and 42.
The Complainant further owns a domain name portfolio comprising its mark ARCELORMITTAL, including <arcelormittal.com>, registered on January 26, 2006, which is linked to its corporate website in connection with its products and services.
The disputed domain name was registered on March 14, 2019. It resolves to an error 404 page in various languages containing the message “sorry, you’ve been redirected to our 404 page, we doubt that this is the page you were looking for, no worries, it’s just an unintentional accident, we apologize for any inconvenience caused”. This same error page includes the name of the Registrar on its top left heading, providing information and offers regarding various services related to website hosting and cloud hosting plans, as well as website builder and domain names registration services, and it further includes a direct link to the Registrar website.
Key contentions of the Complaint may be summarized as follows:
The Complainant’s trademark ARCELORMITTAL is included in its entirety in the disputed domain name, which it is therefore confusingly similar to this mark. The addition of the terms “ventas” (which means “sales” in English) and “mx” (which refers to Mexico) do not exclude the finding of confusingly similarity, as these terms do not change the overall impression of the disputed domain name as being connected to the Complainant’s trademark and domain names. Further, the generic Top Level Domain (“gTLD”) “.com” should be disregarded in the assessment under paragraph 4(a)(i) of the Policy, as it does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known as the disputed domain name, but as “Manuel Lopez Cantu” which is the name that appears in the WhoIs information. Further, the Respondent has no relationship with the Complainant’s business, and it is not affiliated or authorized for the use of the trademark ARCELORMITTAL. Furthermore, the disputed domain name resolves to an error page, which confirms that the Respondent never used or made any demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods and/or services.
The Complainant contends that its trademark ARCELORMITTAL is widely known. Its notoriety has been recognized in various decisions under the Policy related to other proceedings. Therefore, due to the distinctiveness and reputation of the Complainant’s mark, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of this mark.
As many decisions under the Policy have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may evidence a bad faith registration and use of the said domain name.
The disputed domain name currently resolves to an error page, no activity regarding it has been demonstrated, and it is not possible to conceive any plausible actual or contemplated active use of it by the Respondent that would be legitimate.
Furthermore, the Respondent owns another domain name, registered the same day as the disputed domain name, which incorporates another of Complainant’s trademarks, namely <mittal.mx> that incorporates the Complainant’s trademark MITTAL (protected under International Trademark Registration No. 1198046 MITTAL, registered on December 5, 2013, in classes 6 and 40). Therefore, the Respondent is engaged in a pattern of conduct that evidences bad faith.
The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties.
The Complainant indisputably has rights in the registered mark ARCELORMITTAL.
The disputed domain name incorporates the Complainant’s mark in its entirety with the addition of the terms “ventas”, a word in Spanish language that means “sales”, and “mx”, which is the common international abbreviation for Mexico as well as coinciding with its country code Top Level Domain (“ccTLD”). The added terms do not avoid the direct perception of the mark ARCELORMITTAL, which is directly recognizable in the disputed domain name.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further to be noted that the gTLD “.com” is a technical requirement generally disregarded for the purpose of the analysis of the confusing similarity. The applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you 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 (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 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.”
The Complainant has alleged that there is no evidence that the Respondent is commonly known by the term “arcelormittal”. On the contrary, the Respondent is identified by a different name in the disputed domain name WhoIs information. Furthermore, the Complainant has asserted that the Respondent has not been authorized to use the trademark ARCELORMITTAL, not having any Intellectual Property rights over this term, and that there is no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has not replied to the Complaint.
A core factor in assessing fair use of the domain names is that they do not falsely suggest affiliation with the complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding the term “ventas” (sales) before the mark as well as the abbreviation and ccTLD related to Mexico “mx” at end of the disputed domain name (right after the Complainant’s mark and before the gTLD “.com”). The Panel considers that the additional terms (“ventas” and “mx”) reinforce the association with the targeted trademark, attributing the disputed domain name a certain affiliation to this mark as a place or site for acquiring ARCELORMITTAL products in Mexico, giving the impression of being an official dealer, distributor or otherwise authorized by the Complainant. Therefore, the Panel considers that there is a high risk of implied affiliation.
The Panel further notes the extensive presence of the trademark ARCELORMITTAL over the Internet and its extensive use worldwide, including Mexico, where the Complainant operates six facilities in three ports and maintain a corporate and sales office precisely in Mexico City, where the Respondent is located.
Furthermore, the website linked to the disputed domain name is an error 404 page not providing information about any preparations to use the disputed domain name in relation to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
It is further remarkable that the Respondent has deliberately chosen not to give any explanation or evidence of any rights or legitimate interests in the disputed domain name, not replying to the Complaint, and that it has registered another domain name that reproduces the Complainant’s trademark MITTAL.
All the above-mentioned facts and circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and that these cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about ARCELORMITTAL mark, and did not have it in mind. Several factors in this case lead to this conclusion. Particularly, the Panel notes the extensive presence of the trademark ARCELORMITTAL over the Internet, as well as its extensive use and promotion worldwide, including Mexico. It is further to be noted that Mexico is one of the countries where the Complainant operates having several facilities as well as a corporate and sales office in Mexico City, where the Respondent is located. Furthermore, the Respondent registered on the same date as the disputed domain name another domain name that also reproduces another Complainant’s trademark (MITTAL).
The Panel further notes that the disputed domain name incorporates the Complainant’s trademark ARCELORMITTAL in its entirety, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation. Further, the additional terms “ventas” (Spanish word meaning sales) and “mx” (geographical abbreviation and ccTLD for Mexico) may point as well to the Complainant, its worldwide business, and its operations and product’s sales in Mexico.
The Panel considers that the above-mentioned cumulative circumstances point to bad faith in the disputed domain name’s registration.
The Respondent’s use of the disputed domain name may corroborate the above conclusion. The disputed domain name is linked to an error 404 page containing the message “sorry, you’ve been redirected to our 404 page, we doubt that this is the page you were looking for, no worries, it’s just an unintentional accident, we apologize for any inconvenience caused”. The said error page does not include any reference to its owner and/or to any planned legitimate business, nor does it contain any reference to the absence of affiliation with the Complainant and its trademark. However, this error page includes the name of the Registrar on its top left heading, providing information and offers regarding various services related to website hosting and cloud hosting plans, as well as website builder and domain names registration services, and it further contains a direct link to the Registrar website.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
As analyzed, the website linked to the disputed domain name is an error 404 page not providing information about any preparations to use the disputed domain name in relation to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
It is further to be noted that a 404 error is a standard http error message code that means the website the user is trying to reach could not be found on the server, meaning either the website was removed or moved and the URL has not been changed accordingly, or the person just typed in the URL incorrectly. However, this customized 404-error page includes information about the Registrar’s offers and services, as well a direct link to the Registrar’s website, which likely attributes this site the functionality of a parking page that aims to attract Internet users for a promotional purpose. Therefore, the Panel considers that is more likely that the Respondent has not used the disputed domain name with the intention to attract Internet users for a commercial gain or any other sort of benefit.
It is important to note that the Respondent cannot deny responsibility for the content that appears on the website linked to the disputed domain name. The fact that such content or any links included in the disputed domain name have been generated by a third party, such as a Registrar, or that the Respondent has not directly benefited, is not sufficient to prevent a declaration of bad faith. See section 3.5, WIPO Overview 3.0.
It is further remarkable that the domain name <mittal.mx> also registered by the Respondent (on the same day as the disputed domain name), is linked to an identical error 404 page where the same error message is included as well as the same promotional and commercial content related to the Registrar.
Taking into account all these cumulative circumstances, the Panel considers that it is likely that the disputed domain name was registered targeting the Complainant’s trademark ARCELORMITTAL, and it is been used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its mark to misleadingly attract Internet users disrupting the Complainant’s business.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ventasarcelormittalmx.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: April 18, 2019