The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Casio Perez, Mexico.
The disputed domain name <arcelormittalmexico.org> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2020, 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 June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 14, 2020.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 21, 2020. 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 company based in Luxembourg and operates worldwide in the mining and steel manufacturing businesses. It has functioned since 2006 under the ARCELORMITTAL trademark, which is registered throughout the world, including with the Mexican Institute for Intellectual Property (“IMPI”) (e.g., Registration No. 1103534; registered on June 4, 2020).
The Respondent registered the disputed domain name <arcelormittalmexico.org> on May 27, 2020. The disputed domain name resolves to a website that resembles the Complainant's website, including the Complainant's trademark and logo, and with a similar color scheme. The Respondent's website found at the disputed domain name also offers email response services.
- The Complainant is based in Luxembourg and resulted from a merger of two companies, Arcelor and Mittal Steel Technologies, in 2006. It is currently the largest steel and mining company in the world, producing annually over 89 million tons of steel globally, with over 191,000 employees and customers in 160 countries.
- The Complainant does business under the ARCELORMITTAL trademark, which receives substantial time, effort and money in marketing and promotion from the Complainant. The mark is registered in countries throughout the world, including Mexico, the domicile of the Respondent. The Complainant also relies on its website found at <arcelormittal.com> in conducting its operations.
- The disputed domain name, <arcelormittalmexico.org>, is confusingly similar to the ARCELORMITTAL trademark. The mark is fully contained within the disputed domain name, and the addition of the geographical term Mexico does not effectively distinguish the two. In fact, the confusion is increased because the Complainant operates numerous mines in Mexico, obtaining a market share of 22-25%. Also, the addition of the generic Top-Level Domain (“gTLD”) “.org” should be disregarded in the analysis of confusing similarity between the disputed domain name and the Complainant's mark.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant and moreover, the Complainant has never permitted the Respondent to use the Complainant's trademark in any manner. Furthermore, the website associated with the disputed domain name is nearly a replica of the Complainant's own website, and features the same trademark, logo and color scheme, which does not give rise to legitimate or fair use of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The Complainant and its ARCELORMITTAL mark are well-known throughout the world, so it is unbelievable that the Respondent was unaware of them when registering and using the disputed domain name. Moreover, the Respondent is attempting to gain commercially through confusion between the disputed domain name and the trademark, as the website connected with the disputed domain name offers the Complainant's own products for sale. The Respondent's actions with the disputed domain name also cause disruption to the Complainant's business. Furthermore, the use of an email address that is attached to the disputed domain name indicates that the Respondent may be engaged in phishing for Internet user private information and, worse, is probably acting in conjunction with another cybersquatter who was found by a previous UDRP panel to have conducted the same sort of phishing activity with respect to the Complainant's trademark. Lastly, the Respondent has lost prior UDRP cases as a respondent, confirming a pattern of registering and using domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to UDRP paragraphs 4(a)(i)-(iii), the Panel may find for the Complainant and grant it a transfer of the disputed domain name, <arcelormittalmexico.com>, provided the Complainant demonstrates that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
As the Complainant has furnished the Panel with clear evidence that the Complainant has registered its ARCELORMITTAL trademark with the IMPI, the Panel concludes that the Complainant has valid rights in that mark for the purposes of Policy paragraph 4(a)(i). See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”); and Proeza, S.A. de C.V. v. Domain Admin, WIPO Case No. D2018-0535 (“The Panel concludes that Complainant has trademark rights in the mark PROEZA through registration in Mexico.”).
The disputed domain name contains the Complainant's ARCELORMITTAL mark in full as the first component. Since the disputed domain name also contains the word “mexico”, the disputed domain name is not identical to that mark. However, that additional term is a descriptive geographical term, and the overwhelming consensus of prior UDRP panels is that those kinds of add-ons to disputed domain names which are dominated by valid trademarks are insufficient to escape a finding of confusing similarity to the trademarks. For the same reason, the Panel also dismisses the addition of the gTLD “.org” as inconsequential in the analysis of confusing similarity between the disputed domain name and the Complainant's trademark. Ergo, the Panel determines that the disputed domain name is confusingly similar to that mark. See, ArcelorMittal (Société Anonyme) v. El Manuel Es Pura Bellesa, Acero, WIPO Case No. D2020-0868 (finding that <mitalmexico.com> is confusingly similar to the MITTAL mark); Ternium México, S.A. de C.V., Hylsa S.A. de. C.V. v. Alejandro Lascurain, WIPO Case No. D2019-1479 (finding the disputed domain name <hylsamexico.com> to be confusingly similar to the HYLSA mark); and ENEDIS v. Jason Watson, WIPO Case No. D2018-0232 (“The gTLD “.org” may be disregarded for the purposes of determining identity.”)
The Panel finds that the Complainant has satisfied the first element required under the Policy.
The Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademark and asserts clearly that it has not authorized the Respondent to use the mark for any purpose. Given this prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to come forward with evidence to rebut this prima facie case. See, WIPO Overview 3.0, section 2.1 (“...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.”).
Because the Respondent has failed to file a Response and thus failed to come forward with any evidence, the Panel will examine the record having regard to the criteria in Policy paragraph 4(c) to determine whether there is any reason to believe that the Respondent has rights or legitimate interests in the disputed domain name.
The Complainant contends, supported by clear evidence in the form of screenshots, that the Respondent's website connected to the disputed domain name replicates portions of the Complainant's website with respect to trademark, logo, and color scheme. The Respondent's website also offers to sell the Complainant's products. In line with prior Policy decisions, the Panel does not view this sort of action as “a bona fide offering of goods or services” per Policy paragraph 4(c)(i). See, ArcelorMittal (Société Anonyme) v. El Manuel Es Pura Bellesa, Acero, supra; and Syngenta Participations AG v. Maksim Ivanov, WIPO Case No. D2016-0310 (“...using the disputed domain name to redirect to a website that obviously has been set up by copying the content from Complainant’s official US website [does not qualify] as a bona fide offering of goods or services...”).
The Respondent's name is Casio Perez, and since that name bears no resemblance to the disputed domain name <arcelormittalmexico.com>, the Panel concludes that he has not been commonly known as the disputed domain name. Moreover, as there is also no evidence that the Respondent owns or is a principal in a company with a name similar to the disputed domain name, the Panel determines that Policy paragraph 4(c)(ii) also is inapplicable to this case. See, Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“Regarding paragraph 4(c)(ii) of the Policy, the Panel notes that the Respondent’s name is “Bestinfo” and that it can therefore not be “commonly known by the [disputed] Domain Name [<moncler.com>]”.)
Again referencing the Complainant's submission of screenshots of the Respondent's website as evidence, the Panel concludes that the Respondent is attempting to sell the Complainant's products for monetary gain by impersonating the Complainant, and thus is certainly not making use of the disputed domain name in “a legitimate noncommercial or fair use” manner. Therefore, the Panel cannot cite Policy paragraph 4(c)(iii) in the Respondent's favor.
Since the Panel has found no evidence in the record causing it to invoke Policy paragraph 4(c) on behalf of the Respondent, and as there is no other evidence suggesting that the Respondent has any rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant's prima facie case is conclusive.
The Panel accordingly finds that the Complainant has satisfied the second element required under the Policy.
The Complainant contends that there are many reasons for the Panel to find that the Respondent has registered and is using the disputed domain name in bad faith. However, the Panel need look no further than the criteria listed in Policy paragraph 4(b) to reach this conclusion. The offer of the Complainant's products for sale on the Respondent's website connected to the disputed domain name, which has been found above to be confusingly similar to the Complainant's trademark, demonstrates that the Respondent intends to gain commercially through said confusion as to the source, sponsorship, affiliation or endorsement of that website, thus meeting the criterion for bad faith registration and use of a disputed domain name listed in Policy paragraph 4(b)(iv). Moreover, the offer to sell the Complainant's products, without any evidence that the Respondent has been licensed or authorized to do so, clearly constitutes a direct attempt to disrupt the Complainant's business per the bad faith criterion listed in Policy paragraph 4(b)(iii). Therefore, the Panel has no difficulty in determining that the disputed domain name was registered and is being used in bad faith under both Policy paragraphs 4(b)(iii) and (iv). See Pierre Balmain S.A. v. Liu Fang, WIPO Case No. D2016-0965, (“...[the Respondent] attempts to sell the Complainant's products on websites accessed by the disputed domain names. The confusion to Internet users is obvious as is the potential disruption to the Complainant's legitimate business of selling its products on the Internet.").
The Panel thus finds that the Complainant has satisfied the third element required under 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 <arcelormittalmexico.org> be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: August 4, 2020