The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is El Manuel Es Pura Bellesa, Acero, Mexico.
The disputed domain name <mitalmexico.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 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 April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 7, 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 states that Mittal Steel Technologies Limited was formed in 1977 by Lakshmi Mittal. In 2006, 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. The Complainant also states that it is listed on various stock exchanges and has received various awards and recognition in the industry.
The Complainant states that it has spent substantial time, effort and money in marketing and promoting its MITTAL brand, which is a direct reference to the company’s origins and founder. The Complainant also states that it has is the owner of trademark registrations across various jurisdictions and, by way of example, refers to the following trademark registrations:
Trademark | Jurisdiction / TM Office | Registration No. | Registration Date | IC Class |
|
MITTAL |
MX / IMPI |
1649808 |
June 30, 2016 |
06 |
|
MITTAL |
MX / IMPI |
1649809 |
June 30, 2016 |
40 |
|
MITTAL |
WO / WIPO |
1198046 |
December 5, 2013 |
06, 40 |
|
MITTAL |
US / USPTO |
79145018 |
February 17, 2015 |
39 |
|
MITTAL |
EU / EUIPO |
003975786 |
December 1, 2005 |
06,40 |
These are collectively referred to as the “MITTAL Mark”.
Finally, the Complainant states 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 website was first registered on January 26, 2006. The Complainant also states that it has a website aimed at the Mexican market at the subdomain <mexico.arcelormittal.com>.
The Respondent registered the disputed domain name <mitalmexico.com> on August 1, 2019.
The Complainant asserts its rights in the MITTAL Mark. The Complainant contends that the disputed domain name is confusingly similar to its MITTAL Mark. First, the Complainant states that the disputed domain name comprises, as the dominant part, a purposeful misspelling of the MITTAL Mark. In this respect, the Complainant states that the Respondent has removed a letter “t” from the MITTAL Mark such that the word “mital” in the disputed domain name varies from the MITTAL Mark by only one letter. Secondly, the Complainant states that the word “mexico” in the disputed domain name is a generic, geographical term which is closely linked and associated with it as the Complainant operates several mines in Mexico. The Complainant therefore asserts that use of the term “mexico” serves to underscore and increase the confusing similarity between the MITTAL Mark and the disputed domain name. 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 also contends that the content of the disputed domain name copies the logo, colour theme and general aesthetic of its webpage aimed at the Mexican market at <mexico.arcelormittal.com> and that this provides further evidence that the disputed domain name is confusingly similar to the MITTAL Mark.
The Complainant contends that the Respondent has no rights in respect of the disputed domain name; the Respondent is not a licensee of, sponsored by or affiliated in any way with the Complainant, nor has it been otherwise allowed by the Complainant to make use of the MITTAL Mark. Further, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent has used the disputed domain name in various ways. First, the Complainant contends that the Respondent used the disputed domain name as part of an email phishing scheme in an attempt to solicit payment of fraudulent invoices. Secondly, the Complainant contends that, prior to the website being taken down, the Respondent used the disputed domain name to redirect Internet users to a website that copied and attempted to duplicate its official website to deceive Internet users into believing that the disputed domain name and its website were associated with the Complainant. Thirdly, the Complainant contends that the Respondent is currently using the disputed domain name to redirect Internet users to a parked GoDaddy website that lacks content and has not demonstrated any attempt to make legitimate use of the disputed domain name.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith and in full knowledge of the Complainant’s rights. The Complainant states that the actions of the Respondent in its various uses of the disputed domain name demonstrate that it is more likely than not that the Respondent knew of and targeted the Complainant’s MITTAL Mark and business.
The Respondent did not reply to the Complainant’s contentions.
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:
That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
That the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of its registrations in relation to the MITTAL Mark in Mexico, the United States, Europe, and the World Intellectual Property Organization which date back to 2013 at the earliest. The Complainant has also stated that use of the MITTAL Mark first began in 1977. The Complainant has also provided evidence of its use of the MITTAL Mark in its main website <arcelormittal.com> and at the subdomain <mexico.arcelormittal.com>. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the MITTAL Mark. The Panel is also satisfied that the Complainant is well-known by its MITTAL Mark as a world leading steel and mining company.
The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s MITTAL Mark. First, the Panel considers that the term “mital” is sufficiently recognizable as the MITTAL Mark and therefore constitutes an obvious, or intentional misspelling of the MITTAL Mark. As such, it is the Panel’s view that the dominant part of the disputed domain name is the word “mital”.
Secondly, the Panel accepts that the Respondent’s registration of the disputed domain name is a clear example of typo-squatting. The omission of a single “t” in the disputed domain name is an example of confusing similarity brought about by an easily made typing error made by an Internet user: rather than typing two “t” to arrive at the Complainant’s website, an Internet user could easily type a single “t” and be diverted to the Respondent’s website. The practice of “typo-squatting” has been consistently regarded in previously URDP decisions as creating domain names confusingly similar to the relevant mark. See Edmunds.com, Inc. v. Digi Real Estate Foundation ( WIPO Case No. D2006-1043). See also Sanofi, Genzyme Corporation v. Domain Privacy ( WIPO Case No. D2016-1193) which notes that there “is a consensus view among URDP panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principle component of the domain name”.
Thirdly, the Panel accepts that the word “mexico” is a geographical term and does not suffice to prevent a finding of confusing similarity between the disputed domain name and the MITTAL Mark (see Allianz SE v. IP Legal, Allianz Bank Limited ( WIPO Case No. D2017-0287)).
Finally, the Panel accepts that the gTLD “.com” may be disregarded for the purposes of comparison under the first element.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
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 trademark 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 trademark 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 is not sponsored by or affiliated with the Complainant in any way.
The Complainant has further stated, and the Panel accepts, that it has not authorized the Respondent to use its MITTAL Mark as “mital”.
The Complainant has also stated, and the Panel accepts, that there is no evidence that the Respondent is known or has ever been known as “mittal” or “mital”.
In addition, the Complainant has provided as evidence a phishing email sent by the Respondent from the disputed domain name (Annex 7 of the Complaint). In the phishing email, the Respondent has attempted to “phish” personal information from the Complainant’s business associate and to obtain payment of a fraudulent invoice. The Complainant has also provided as evidence a screenshot of the website to which the disputed domain name previously resolved (Annex 3.1 of the Complaint). This screenshot shows that the Respondent has attempted to duplicate the Complainant’s website at its subdomain <mexico.arcelormittal.com> by adopting the same colour scheme and general aesthetic of the Complainant’s website. The Complainant’s logo and the correct spelling ArcelorMittal is also clearly displayed on the website to which the disputed domain name previously resolved. It is therefore evident from this evidence that the Respondent was, and is, aware of the Complainant and its MITTAL Mark and does not have any rights or legitimate interests in the disputed domain name.
The Respondent has not provided any evidence to show that it has used the disputed domain name in connection with a bona fide offering of goods or service or a legitimate noncommercial or fair use. Rather, the evidence at Annex 7 of the Complaint show that the Respondent attempted to pass itself off as the Complainant. Likewise, the evidence at Annex 3.1 of the Complaint shows that the Respondent attempted to deceive Internet users into believing that the disputed domain name and its website were associated with the Complainant. Such use does not confer any rights or legitimate interests in the disputed domain name to the Respondent and does not serve as evidence of rights or legitimate interest (see FXCM Global Services LLC v WhoisGuard Protected, WhoisGuard Inc. / Jenny Sohia, WIPO Case No. D2018-1111 (quoting Ann Summers Limited v Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 and Carrefour v WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533)).
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 accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) The Panel is satisfied that the Complainant’s MITTAL Mark is well-known in its industry. As noted above, the Panel is also satisfied that the Respondent was aware of the Complainant and its MITTAL Mark. This is evidenced by the facts that (a) the disputed domain name is a misspelling of the Complainant’s distinctive MITTAL Mark and (b) that after registration the Respondent used the disputed domain name to host a website and a page duplicating the Complainant’s own website page including its trade mark ARCELORMITTAL (spelled correctly). See also Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 which states that where a disputed domain name is “so obviously connected with such a well-known name and products … its very use by someone with no connection with the products suggests opportunistic bad faith”.
(ii) The Respondent has not responded to the Complaint and so has not provided any explanation as to why it had any claim to register a domain name containing a misspelling of the Complainant’s MITTAL Mark. As noted above, the Panel is satisfied that the disputed domain name is a typo-squatting registration which is itself evidence of a bad faith registration and is well established (see for example, Wikimedia Foundation Inc. v. Domain Admin, WhoIs Privacy Corp. / Ryan G Foo, PPA Media, WIPO Case No. D2015-1705 and Moneyweek Limited v he jianyi, WIPO Case No. D2015-1700)
The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:
(i) It is well established that a typo-squatting registration is also evidence of use in bad faith (see for example, Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600).
(ii) Section 3.1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that under section 2.13.1, “the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent” it follows that “such behavior is manifestly considered evidence of bad faith”. In the present case, the Complainant provided evidence that prior to it requesting a website takedown, the Respondent had been using the website at the disputed domain name to fraudulently pose as the Complainant for the purposes of sending phishing emails containing fake invoices to incite payment from unsuspecting third parties. This is manifestly evidence of use in bad faith. See Hama GmbH & Co. KG v. Duke Imoh / Hewlett, WIPO Case No. D2015-1372 – “Establishing a phishing website using a domain name that incorporates the Complainant’s mark is a strong example of bad faith under the Policy” and Ingenico Group v. Sammi Wilhi, Lng Group Pty Ltd, WIPO Case No. D2019-1079 – “… the Respondent’s use of the disputed domain name for phishing purposes constitutes bad faith in and of itself”.
(iii) The Respondent’s previous use of the disputed domain name (prior to the Complainant requesting a website takedown) to redirect to a website which copied and attempted to duplicate the Complainant’s official website (including the Complainant’s logo trade mark spelled correctly) is further evidence of use in bad faith. Such use would have reinforced the likelihood of confusion arising from the confusing similarity of the disputed domain name to the Complainant’s MITTAL Mark. Internet users would likely have considered the disputed domain name as being in some way endorsed by or connected with the Complainant, particularly taking into account the Complainant’s exclusive rights to the MITTAL Mark and the substantial goodwill and reputation residing in the MITTAL Mark.
(iv) As at the date of the Complaint, the Complainant states that the disputed domain name resolved to a parked register site. However, section 3.3 of WIPO Overview 3.0 also states that passive holding may be evidence of registration and use in bad faith, depending on:
(i) the degree of distinctiveness or reputation of the Complainant’s mark;
(ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and
(iv) the implausibility of any good faith to which the domain name may be put.
The Panel notes that the Respondent failed to provide any response or evidence of actual or contemplated good faith use. The Respondent’s previous use of the disputed domain name as part of a phishing scheme counters any plausible argument that the Respondent intended to put the disputed domain name to any good faith use.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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, <mitalmexico.com> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: May 14, 2020