WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. Florentino Lara, Ventas Ternium

Case No. D2020-2897

1. The Parties

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

The Respondent is Florentino Lara, Ventas Ternium, Mexico.

2. The Domain Name and Registrar

The disputed domain name <mexarcelormittal.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2020. On November 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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.

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 November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2020.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 29, 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 is a Luxembourgish multinational known as one of the world’s largest steel producers.

The trademark ARCELORMITTAL was registered by the Complainant in several regions of the world, including in Mexico (registration number 1103534, registered on June 4, 2009) and in the United States of America (registration number 3643643, registered on June 23, 2009).

The Complainant is also the holder of the domain name <arcelormittal.com>, registered on January 26, 2006.

The Respondent registered the disputed domain name <mexarcelormittal.com> on October 7, 2020. The Panel accessed the disputed domain name on January 10, 2021, at which time the disputed domain name was not pointing to any active webpage. However, according to the Complaint, the disputed domain name has been used in connection with a website reproducing the Complainant’s logo, as well as the color theme and general aesthetic of the Complainant’s primary Mexican website at <mexico.arcelormittal.com>.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the ARCELORMITTAL trademark. It is standard practice when comparing a disputed domain name to a complainant’s trademarks to ignore the extension. In creating the disputed domain name, the Respondent has added the geographically descriptive term “mex” (an abbreviation for “Mexico”) to the beginning of the Complainant’s ARCELORMITTAL trademark, thereby making the disputed domain name confusingly similar to the Complainant’s trademark. It is well established that the addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity. Additionally, the Respondent’s use of the disputed domain name contributes to the confusion. The Respondent is using the disputed domain name to impersonate the Complainant, by copying the Complainant’s logo, the color theme and general aesthetic of the Complainant’s primary website aimed at the Mexican market, at <mexico.arcelormittal.com>. Such use indicates that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in the disputed domain name. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. The pertinent WhoIs information identifies the Registrant as “ventas ternium”, which does not resemble the disputed domain name in any manner. The disputed domain name’s website has purposely been designed to serve as an exact replica of the Complainant’s website, as a means of deceiving Internet users into believing that the disputed domain name and its website are associated with the Complainant. The Respondent’s attempt to pass off the disputed domain name as being affiliated with the Complainant, and in fact as being the Complainant, is in itself evidence of the fact that the Respondent does not have rights and legitimate interests in the disputed domain name. The Respondent registered the disputed domain name on October 7, 2020, which is significantly after the Complainant registered its trademark ARCELORMITTAL and official domain name <arcelormittal.com>.

- The disputed domain name was registered and is being used in bad faith. The Complainant and its ARCELORMITTAL trademarks are known internationally, with trademark registrations across numerous jurisdictions. The Complainant has marketed and sold its goods and services using this trademark since 2006. By registering a domain name that comprises the Complainant’s ARCELORMITTAL trademark in its entirety, with the mere addition of the geographical term “mex”, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Additionally, the Respondent attempted to impersonate the Complainant, presumably for its own financial gain. At the time of registration of the disputed domain name, the Respondent knew of the existence of the Complainant’s trademarks and that the registration of domain names containing well-known trademarks constitutes bad faith per se. The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use. The Complainant believes the Respondent has a pattern of cybersquatting, showed in previous UDRP cases. Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

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

A. Identical or Confusingly Similar

Annex 1 to the Complaint shows trademark registrations for ARCELORMITTAL obtained by the Complainant as early as in 2007.

The disputed domain name differs from the Complainant’s trademark ARCELORMITTAL by the addition of the prefix “mex” (common acronym for Mexico), as well as the generic Top-Level Domain (“gTLD) “.com”.

Previous UDRP decisions have found that the mere addition of descriptive/geographical terms to a trademark in a domain name do not prevent a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal‑Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is also already well established that the addition of a gTLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

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

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant referred – and was not challenged by the Respondent – that the disputed domain name was recently used in connection with a website reproducing the trade dress of the Complainant’s Mexican website.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent in 2020, the trademark ARCELORMITTAL was already directly connected to the Complainant for more than a decade.

Besides the gTLD “.com”, the disputed domain name is comprised of the common acronym for Mexico (“mex”) and of the Complainant’s trademark ARCELORMITTAL. The Respondent has not provided any justification for the registration of a domain name containing a famous third-party trademark and a reference to such country.

The term “arcelormittal” has no dictionary meaning and is composed by the former trademarks of the companies that came together to form the Complainant: ARCELOR and MITTAL.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “mexarcelormittal” could be a mere coincidence.

Currently, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent is, (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing third-party famous trademark, certainly cannot be used in benefit of the Respondent in the present case.

Furthermore, in the Panel’s view, the references – not challenged – that the Respondent has recently used the disputed domain name in connection with a website reproducing the Complainant’s logo and the trade dress of the Complainant’s Mexican website additionally support a finding of bad faith registration and use of the disputed domain name by the Respondent in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of 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 <mexarcelormittal.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: January 12, 2021