WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. xing ye lin, lin xing ye

Case No. D2020-0767

1. The Parties

The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is xing ye lin, lin xing ye, China.

2. The Domain Name and Registrar

The disputed domain name <marcelormittal.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 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 and disclosing Registrar information for the disputed domain name which differed from the named Registrar in the Complaint. The Center sent an email communication to the Complainant on April 8, 2020 providing the Registrar information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 9, 2020.

The Center verified that the Complaint together with the amended 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 April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2020.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 11, 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.

4. Factual Background

The Complainant states that Mittal Steel Technologies Limited was formed in 1977 by Lakshmi Mittal. In 2006, the Complainant states that Mittal Steel Technologies Limited merged with Arcelor to form ArcelorMittal to become the world’s leading steel and mining company. Headquartered in Luxembourg, the Complainant states that it is the world’s largest steel manufacturer, producing steel in 18 countries around the world, employing over 191,000 staff, and serving customers in 160 countries. The Complainant also states that it is listed on various stock exchanges and has received various awards and recognition in the industry.

The Complainant is the owner of the following relevant trademark registrations in the United States of America (“United States”) and in China:

These are collectively referred to as the ARCELORMITTAL Mark.

Finally, the Complainant’s evidence is that it has a large Internet presence and shares information about its products, services, and news on its primary website at <arcelormittal.com>. The Complainant states that this domain name was first registered on January 26, 2006.

The Respondent registered the disputed domain name <marcelormittal.com> on January 18, 2020. The disputed domain name resolves to a website appearing to duplicate the official website of KDX Group / KDX Window Film Company and occasionally resolves to an online betting website. The products and services offered via the disputed domain name are wholly unrelated to the Complainant and its steel manufacturing and mining business.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the ARCELORMITTAL Mark. The Complainant contends that the disputed domain name is confusingly similar to its ARCELORMITTAL Mark. The Complainant states that the disputed domain name comprises a purposeful misspelling of its ARCELORMITTAL Mark. In this respect, the Complainant states that the Respondent has added a letter “m” to the ARCELORMITTAL Mark, such that the word “ARCELOR” in the disputed domain name differs from the ARCELORMITTAL Mark by only one letter to “[M]ARCELORMITTAL”.

The Complainant also requests that the generic Top-Level Domain (“gTLD”) “.com” be disregarded for the purposes of comparison under the first element.

The Complainant asserts that the Respondent has no rights in respect of the disputed domain name. In this respect, the Complainant states that the Respondent is not affiliated to or connected with it in any way and is not licensed by it or otherwise authorized to use the ARCELORMITTAL Mark. The Complainant states that the Respondent is not commonly known by the disputed domain name and has not acquired any registered trademark rights or unregistered rights in the ARCELORMITTAL Mark or name.

The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name.

The Complainant’s evidence is that the Respondent has used the disputed domain name to redirect Internet users to a website comprising content unrelated to the Complainant, in what the Complainant asserts is an attempt to duplicate the official website of KDX Group / KDX Window Film Company (see Annex 3 to the Complaint). The Complainant also contends that the disputed domain name occasionally redirects Internet users to a third-party website that offers online gambling and soccer betting services (see Annex 3 to the Complaint).

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant states that at the time of registration of the disputed domain name, the Respondent knew of, or should have known of, the existence of the ARCELORMITTAL Mark and business. The Complainant asserts that it is more likely than not that the Respondent knew of and targeted the ARCELORMITTAL Mark. The Complainant’s evidence is that in addition to the disputed domain name, the Respondent currently holds registrations for over 1,200 other domain names, several of which, the Complainant states, misappropriate the trademarks of well-known brands and businesses. The Complainant has provided the following four examples:

- <baiduyunfuli.com> (Baidu Online Network Technology (Beijing) Co., Ltd - BAIDU)

- <banareplublic.com> (Banana Republic (Apparel) LLC – BANANA REPUBLIC)

- <chinaweixinqq.cn> (Tencent Holdings Limited – WEIXIN, QQ)

- <huaweisolution.com> (Huawei Technologies Co., Ltd - HUAWEI)

The Complainant asserts that these examples demonstrate the Respondent is engaged in a pattern of so-called cyber-squatting and typo-squatting whereby the Respondent intends to take advantage of Internet users who inadvertently misspell a well-known brand’s websites address. The Complainant has provided copies of three cease and desist letters it sent to the Respondent (see Annex 10 to the Complaint), and states it has not received a response to those requests for voluntary transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations in relation to the ARCELORMITTAL Mark in China and the United States. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the ARCELORMITTAL Mark with a history of use going back to 2006. Trademark registrations constitute prima facie evidence of the validity of the trademark. See for example Backstreet Prods., v. Zuccarini, WIPO Case No. D2001-0654.

The Panel notes that, although the content of the website (to which the disputed domain redirects Internet users) has very different content from that of the genuine website of ARCELORMITTAL, this difference is irrelevant to the issue of confusing similarity. (This is for the practical reason that where a potential visitor does not immediately reach the intended site after typing in a confusingly similar domain name, their exposure to offensive, irrelevant, or commercial content can deter them from persevering to the trademark holder’s official website.) A determination on confusing similarity is therefore confined to a comparison of the trademark and the disputed domain name itself.

The Panel considers that the disputed domain name is a purposeful misspelling of the Complainant’s ARCELORMITTAL Mark. It is the Panel’s view that because the disputed domain name differs from the ARCELORMITTAL Mark by the addition of one letter, the disputed domain name is an example of typo-squatting whereby the Respondent intends to take advantage of Internet users who inadvertently misspell the Complainant’s ARCELORMITTAL Mark.

Previous UDRP panels have found a respondent’s typo-squatting constitutes confusing similarity to a trademark. Accordingly the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.9 states that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

It is the Panel’s view that the disputed domain name <marcelormittal.com> is confusingly similar by design, and clearly contains the recognizable ARCELORMITTAL Mark. The Panel finds that the Complainant has met its burden of proof and has established that the disputed domain name, while not identical to the ARCELORMITTAL Mark, is confusingly similar to the ARCELORMITTAL Mark in which the Complainant has rights.

The Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:

(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or

(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

The Complainant has stated, and the Panel accepts, that the Respondent has no genuine business relating to the disputed domain name. In this respect, the Complainant has provided evidence (attached to the Complaint as Annex 3) that the website to which the disputed domain name revolves appears to duplicate the official website of KDX Group / KDX Window Film Company and occasionally revolves to a betting website.

The Complainant has also provided evidence as Annex 2 to the Complaint that the Respondent is not commonly known by the disputed domain name.

The WhoIs information the Complainant has provided identifies the Registrant as “xing ye lin, lin xing ye”, which does not resemble the disputed domain name in any manner. The Panel finds that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name and the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii) of the Policy. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.

The Panel further accepts that the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s ARCELORMITTAL Mark. Attached to the Complaint as Annex 10 are three letters dated February 21, 2020, February 28, 2020, and March 6, 2020 from the Complainant ’s representative to the Respondent informing the Respondent of its infringing use of the ARCELORMITTAL Mark, requesting transfer the disputed domain name, and offering to reimburse the Respondent for its associated out-of-pocket expenses. The Panel finds that, in the absence of any license or permission from the Complainant to use its ARCELORMITTAL Mark, no actual or contemplated bona fide or legitimate use of the disputed domain name can reasonably be claimed. See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

Accordingly, the Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:

(i) The Panel accepts the Complainant’s assertion that its ARCELORMITTAL Mark is internationally well-known in the steel manufacturing and mining field. The Combination ARECELORMITTAL is an unusual and highly distinctive one and, as noted earlier, was formed from the merger of two separate companies. The Respondent clearly was aware of this entity at the time it registered the disputed domain name by adding the letter “m” to the Complainant’s mark. Typo-squatting of a widely-known trademark creates a presumption of bad faith registration and use (See WIPO Overview 3.0 at section 3.1.4, see also Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069. The Panel also notes that the Respondent has not made any substantive response.

(ii) The Panel is also satisfied that the Respondent intentionally registered a misspelling of the Complainant’s distinctive ARCELORMITTAL Mark, in order to take advantage of the considerable goodwill and reputation which that Mark enjoys, by redirecting Internet users who inadvertently misspell that Mark when searching for the Complainant’s website.

(iii) The Panel accepts the evidence provided by the Complainant of the Respondent’s other well-known trademark typo-squatting. It is the Panel’s view that this evidence suggests that the Respondent is engaged in a pattern of typo-squatting, which itself indicates bad faith registration and use of the disputed domain name. See Yale University v. Domain Holding Corp. AS and Eric Keller, WIPO Case No. D2013-1404.

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

(i) The disputed domain name resolves to a website appearing to duplicate the official site of KDX Group / KDX Window Film Company and occasionally resolves to an online betting website. The products and services offered via the disputed domain name are wholly unrelated to the Complainant and its steel manufacturing and mining business (see Annex 3 to the Complaint). The Panel accepts that this misdirection has the propensity to confuse Internet users into believing that they are visiting the Complainant’s site, only to discover that the disputed domain name is completely unconnected to the Complainant. This activity is recognised as an indication of opportunistic bad faith registration and use (see Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). The Panel accordingly finds that the Respondent has used the disputed domain name in bad faith.

(ii) The Panel notes the Complainant’s evidence that it sent three warning letters to the Respondent notifying the Respondent of its trademark rights, requesting a voluntary transfer of the disputed domain name, and offering to reimburse the Respondent’s out-of-pocket expenses. No response was received by the Complainant to the three warning letters, nor has there been any response filed to the Complaint.

For all these reasons, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

7. Decision

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 <marcelormittal.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: May 22, 2020