WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ArcelorMittal (Société Anonyme) v. Cooperative Business Innovation
Case No. D2020-3262
1. The Parties
The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Cooperative Business Innovation, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <arcelormlttals.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 December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 for the disputed domain name.
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 December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 6, 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.
4. Factual Background
The Complainant is a Luxembourgish multinational known as the world’s largest steel producer.
The trademark ARCELORMITTAL was registered by the Complainant in several regions of the world, including in the United States (registrations numbers 3643643 and 3908649, obtained respectively on June 23, 2009 and January 18, 2011).
The Complainant is also the holder of the domain name <arcelormittal.com>, registered on January 26, 2006.
The Respondent registered the disputed domain name <arcelormlttals.com> on November 10, 2020.
The Panel accessed the disputed domain name on January 18, 2021, at which time the disputed domain name was not pointing to any active webpage. However, the Complainant presented evidence that the disputed domain name has been used to send emails to the Complainant’s customers requesting wire transfers and seeking to confuse them into believing these emails were from the Complainant.
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. The disputed domain name is a purposeful misspelling of the Complainant’s ARCELORMITTAL trademark and must be considered confusingly similar to the Complainant’s trademark. The disputed domain name varies from the Complainant’s trademark by only two letters – the Respondent has replaced the letter “i” from ARCELORMITTAL with the letter “l” and added the letter “s” at the end of the trademark. As the disputed domain name differs from the Complainant’s trademark by just two letters, it must be considered a prototypical example of typosquatting – which intentionally takes advantage of Internet users that inadvertently type an incorrect address – often a misspelling of the Complainant’s trademark – when seeking to access the trademark owner’s website. The disputed domain name must be considered confusingly similar to the Complainant’s ARCELORMITTAL trademark in that it is similar to such trademark in both sight and sound. Additionally, the disputed domain name is also phonetically similar to the Complainant’s trademark in terms of pronunciation.
- 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.
In the instant case, the pertinent WhoIs information identifies the Respondent as “Cooperative Business Innovation”, which does not resemble the disputed domain name in any manner. The Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent is using the disputed domain name to send emails with the appearance of coming from the Complainant’s employees, aiming to obtain wire payments from unsuspecting users, as well as attempting to hide the fraud by spoofing the Complainant’s actual email. The Respondent is therefore attempting to impersonate the Complainant as part of such fraudulent email phishing scheme. The Respondent is otherwise using the disputed domain name to redirect Internet users to a parked hosting provider website. The Respondent has, therefore, failed to make use of the disputed domain name’s website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evidences a lack of rights or legitimate interests in the disputed domain name, as confirmed by numerous past UDRP panels.
- 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 is a two-letter misspelling of the Complainant’s ARCELORMITTAL trademark, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Additionally, the Respondent has used the disputed domain name for the purpose of engaging in email fraud, by purporting to pass itself off as the Complainant to deceive the Complainant’s customers into making wire payments. In light of the facts set forth within the Complaint, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered. The Respondent registered and used the disputed domain name with the primary aim of launching a phishing attack, which is clear evidence of bad faith registration and use. As part of this fraud, the Respondent has created numerous email addresses based on the disputed domain name and using the names of the Complainant’s employees. 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. 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 merely by the replacement of the letter “i” with the letter “l” and the addition of the letter “s” at the end of the trademark ARCELORMITTAL, as well as by the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Panel concludes that such misspelling of the Complainant’s trademark characterizes what is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky,
WIPO Case No. D2006-0201).
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 brought evidence that the disputed domain name has been used in connection with a fraudulent phishing scheme, using the names of the Complainant’s employees to request money transfers supposedly on behalf of the Complainant.
Consequently, the Panel is satisfied and finds 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 a misspelling of the Complainant’s trademark ARCELORMITTAL. The Respondent has not provided any justification for the registration of a domain name containing a variation of a famous third-party trademark.
The term “arcelormittal” – or its misspelling version registered by the Respondent – has no dictionary meaning. The trademark is composed by the former marks 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 “arcelormlttals” could be a mere coincidence.
Currently, no active website is 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.
Such circumstances, associated with:
(a) the evidences that the disputed domain name has been used in connection with a fraudulent phishing scheme, trying to impersonate the Complainant in order to obtain financial gain from the Complainant’s customers; and
(b) the lack of any plausible interpretation for the adoption of the term “arcelormlttals” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use 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 <arcelormlttals.com> be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Date: January 20, 2021
