Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Myke Towers, Venezuela (Bolivarian Republic of).
The disputed domain name <arcelormittaldemexico.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2021 the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 10, 2021. 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.
Complainant is a multinational steel and mining company. Formed in 2006 via a merger of Arcelor and Mittal Steel, Complainant has since conducted operations under the mark ARCELORMITTAL.
Complainant has several registered trademarks for its ARCELORMITTAL mark. These include, among others, International Registration No. 0947686 (registered March 8, 2007); and United States Registration No. 3643643 (registered June 23, 2009).
Complainant owns the registration for domain names that incorporate its ARCELORMITTAL mark. These include <arcelormittal.com> (registered January 27, 2006). Complainant uses the website associated with this domain name to inform customers about its ARCELORMITTAL mark and its steel and mining operations including in the country of Mexico.
The disputed domain name <arcelormittaldemexico.com> was registered on March 23, 2021. Respondent has no affiliation with Complainant. Although not currently active, Respondent has used the disputed domain name to resolve to a webpage that appears to mimic an official website of Complainant, including display of Complainant’s ARCELORMITTAL mark and logo. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it has a distinctive and well-known mark, and that Complainant is the “world’s leading steel and mining company”, having been awarded various awards and honors. Complainant contends that it has trademark registrations for its ARCELORMITTAL mark. Complainant contends that Respondent has merely added the generic or descriptive wording “de”, translated from Spanish to English as “of” or “from”, along with the geographically descriptive term “mexico”, which is likely to confuse prospective online consumers into thinking that the disputed domain name is affiliated or endorsed by Complainant, including its global operations of/from Mexico.
Complainant contends that Respondent has previously used the disputed domain name to set up a webpage meant to lure in customers looking for Complainant, likely in a “phishing” scheme. Complainant further contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights. In addition, Complainant contends that Respondent has engaged in a pattern of cybersquatting, by registering various domain names that incorporate well-known marks.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark ARCELORMITTAL, and merely adds the terms “de” and “mexico”.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words, including geographically descriptive wording, does not prevent a finding of confusing similarity for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614; General Electric Company v. Recruiters, WIPO Case No. D2007-0584; Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a webpage that appears to mimic Complaint’s website but which is unaffiliated with Complainant or Complainant’s products and services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.
Furthermore, the nature of the disputed domain name, comprising Complainant’s well known trademark and descriptive geographical terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1).
The Panel therefore finds that Complainant has satisfied its burden in accordance with paragraph 4(a)(ii) of the Policy.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has in the past set up a webpage associated with the disputed domain name that appears to mimic an official website of Complainant, and which attempts to confuse consumers by displaying Complainant’s mark and logo.
Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Complainant has further presented evidence that Respondent has engaged in a pattern of registering domain names that incorporate well-known third party marks. This further supports an inference of bad faith in accordance with paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <arcelormittaldemexico.com> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: August 24, 2021