WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arcelormittal (SA) v. Vera Widjaja, verawebhost

Case No. D2018-1087

1. The Parties

The Complainant is Arcelormittal (SA) of Luxembourg, Luxembourg, represented by Nameshield, France.

The Respondent is Vera Widjaja, verawebhost of Turin, Italy.

2. The Domain Name and Registrar

The disputed domain name <arceloremittal.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s 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 May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2018.

The Center appointed Alexander Duisberg as the sole panelist in this matter on June 28, 2018. 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 is one of the largest steel producing companies in the world with operations in more than 60 countries.

The Complainant is the owner of the international trademark registration ARCELORMITTAL (trademark No. 947686, registered on August 3, 2007). The ARCELORMITTAL trademark enjoys protection, inter alia, in the European Union.

Furthermore, the Complainant has registered domain names containing the designation ARCELORMITTAL, such as the domain name <arcelormittal.com>, which is registered and used since January 27, 2006.

The disputed domain name <arceloremittal.com> was registered on April 20, 2018. The trademark registration ARCELORMITTAL of the Complainant as well as the Complainant’s domain name registration of the domain name <arcelormittal.com> took place before the date of registration of the disputed domain name.

There is currently no content available under the disputed domain name <arceloremittal.com>.

The Respondent did not reply to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name <arceloremittal.com> is confusingly similar to the Complainant’s famous trademark ARCELORMITTAL. The addition of the letter “e” in the middle of the disputed domain name is an obvious misspelling of the protected trademark ARCELORMITTAL and, thus, constitutes an unlawful act of “typosquatting”. Moreover, the addition of the gTLD “.com” does not change the similarity between the disputed domain name and the Complainant’s trademark and, hence, cannot prevent the likelihood of confusion.

Furthermore, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant nor authorized by the Complainant in any way to use the ARCELORMITTAL trademark. The Respondent is not commonly known by the disputed domain name. Moreover, according to the Complainant, the disputed domain name is inactive since its registration which also indicates a lack of legitimate interests in respect of the disputed domain name.

According to the Complainant, the disputed domain name is also registered and used in bad faith. The incorporation of the Complainant’s distinctive and well-known trademark ARCELORMITTAL in combination with the misspelling of this trademark could only be deemed as an act of bad faith.

Against this background, the Complainant requests that the Panel order the disputed domain name to be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel acknowledges the consensus view − as set forth in paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) − that the Respondent’s default to respond to the Complaint does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding. In view of the Panel, the Complainant has established sufficient evidence in its favor in the case at hand.

In line with previous UDRP decisions, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production of evidence to the Respondent (see, inter alia, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <arceloremittal.com> is confusingly similar to the well-known Complainant’s trademark ARCELORMITTAL, and thus finds the requirement of paragraph 4(a)(i) of the Policy to be met.

The disputed domain name <arceloremittal.com> merely differs from the Complainant’s famous trademark ARCELORMITTAL in the addition of the letter “e” in the middle of the disputed domain name.

In view of the Panel, the addition of the letter “e” is a clear case of “typosquatting” and cannot rule out the overall confusing similarity between the disputed domain name and the Complainant’s ARCELORMITTAL trademark as this constitutes only minor aural and visual differences. The Panel holds with previous UDRP panel decisions that “typosquatting” domain names is characterized as constituting “essential” or “virtual” identity being confusingly similar to the trademarks that have been “squatted” (see, inter alia, Edmunds.com, Incv. Yingkun Guo, WIPO Case No. D2006-0694; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489). The Panel shares also the view of previous panel decisions that slight spelling variations do not rule out the confusing similarity between the disputed domain name and the Complainant’s trademark (see Arcelormittal S.A. v. Cees Willemsen, WIPO Case No. D2016-1853).

Furthermore, the addition of the gTLD “.com” does not differentiate the disputed domain name from the Complainant’s trademark. Hence, the gTLD “.com” does not have a distinguishing effect and can be ignored when comparing the disputed domain name to the Complainant’s trademark (see Accor v. Noldc Inc., WIPO Case No. D2005-0016).

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, unrebutted by the Respondent.

The Complainant’s ARCELORMITTAL trademark is well-known and has been registered and used for many years preceding the date of the Respondent’s registration of the disputed domain name. The Complainant has neither authorized the Respondent to use the trademark ARCELORMITTAL nor is the Respondent in whatever manner affiliated with the Complainant.

The Respondent has failed to show any rights or legitimate interests in the disputed domain name according to paragraph 4(c) of the Policy. The Panel finds that the “typosquatting” at hand with regard to the Complainant’s trademark ARCELORMITTAL is just the opposite of a legitimate noncommercial or fair use of a domain name. The contradiction between “typosquatting” and the fair use of a domain name has been confirmed in earlier panel decisions (see, for example, Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554; Comerica Incorporated v. Kevin Wall and Domains By Proxy, LLC, WIPO Case No. D2013-1218).

The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the disputed domain name is currently not being used to point to an active website. Neither can the Respondent be said to be making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii), without any active usage of the disputed domain name (see Arnold Clark Automobiles Limited v. Whois Agent, Whois Privacy Protection Service, Inc. / Arnold Clark, WIPO Case No. D2018-0571). Furthermore, the Complainant has stated that it has not authorized the Respondent to make any use of its trademark. It is highly unlikely that the Respondent would be “commonly known” by the disputed domain name, as referred to in paragraph 4(c)(ii), given that the registration name of the Respondent is “VERAWEBHOST” and no other evidence has been brought forward to prove that the Respondent is commonly known by the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name <arceloremittal.com> has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

In view of the distinctive and well-known character of the trademark ARCELORMITTAL of the Complainant, the Panel holds that the Respondent must have been certainly aware of the Complainant’s trademark and the Complainant’s earlier domain name <arcelormittal.com> when registering the disputed domain name.

Further, the Panel finds that the “typosquatting” at hand is to be regarded per se as evidence of a bad faith registration and use of the disputed domain. This is supported by various UDRP panel decisions (see Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302; Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).

As far as the use of the disputed domain name is concerned, it has long been established that passive holding of a domain name does not prevent a finding of bad faith. Under the given circumstances, including the Complainant’s notoriety and the nature of the disputed domain name (reflecting almost identically the Complainant’s distinctive trademark), the Panel here finds sufficient indicia of bad faith to satisfy the Policy.

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 <arceloremittal.com> be transferred to the Complainant.

Alexander Duisberg
Sole Panelist
Date: July 12, 2018