ArcelorMittal (Société Anonyme) v. Milen Radumilo
Claim Number: FA2105001947599
Complainant is ArcelorMittal (Société Anonyme) (“Complainant”), represented by Joe Viviani of CSC Digital Brand Services Group AB, Sweden. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arcelor-mittal.us>, registered with CommuniGal Communication Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2021; the Forum received payment on May 26, 2021.
On May 27, 2021, CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the <arcelor-mittal.us> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@arcelor-mittal.us. Also on May 28, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, ArcelorMittal (Société Anonyme), is a steel and mining company headquartered in Luxembourg.
Complainant has rights in the ARCELORMITTAL mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) as well as other registries worldwide.
Respondent’s <arcelor-mittal.us> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only a hyphen and the “.us” ccTLD.
Respondent lacks rights and legitimate interests in the <arcelor-mittal.us> domain name as it is not commonly known by the at-issue domain name and Complainant has not licensed or permitted Respondent to use the ARCELORMITTAL mark. There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the at-issue domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to host a pay-per-click webpage featuring third-party links, some of which directly compete with Complainant.
Respondent registered or uses the <arcelor-mittal.us> domain name in bad faith. Respondent engages in a pattern of bad faith registration based on previous UDRP actions against it and a pattern of cybersquatting demonstrated by WHOIS records which show Respondent’s other misappropriations of famous trademarks in domain names. Also, Respondent intentionally created a likelihood of confusion with Complainant by registering a domain name that is identical with Complainant’s ARCELORMITTAL trademark; by which Respondent attracts internet users to Respondent’s website for commercial gain. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the ARCELORMITTAL mark based on the fame of the mark, especially since Complainant is the world’s largest steel producer. Lastly, Respondent’s failure to respond to Complainant’s cease-and-desist notice is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ARCELORMITTAL trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in ARCELORMITTAL trademark.
Respondent uses the <arcelor-mittal.us> domain name to address a webpage featuring pay-per-click links to third-parties; some of which directly compete with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for ARCELORMITTAL, as well as other registrations worldwide, demonstrates Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(I). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The at-issue domain name consists of Complainant’s entire ARCELORMITTAL trademark with a hyphen inserted, followed by the top level domain name “.us” to complete the domain name. The slight differences between the at-issue <arcelor-mittal.us> domain name and Complainant’s ARCELORMITTAL trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <arcelor-mittal.us> domain name is confusingly similar to Complainant’s ARCELORMITTAL trademark. See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also, Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for <arcelor-mittal.us> identifies the domain name’s registrant as “Milen Radumilo” and the record before the Panel contains no evidence showing that Respondent is commonly known by its <arcelor-mittal.us> domain name or by Complainant’s ARCELORMITTAL mark. The Panel therefore concludes that Respondent is not commonly known by the <arcelor-mittal.us> domain name for the purposes of Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also, Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Additionally, Respondent uses <arcelor-mittal.us> to address a webpage featuring pay-per-click links to third parties including Complainant’s competition. Some such links are labeled, “Steel fabrication,” “Ferrous Metal,” and “Investing Precious Metals.” Respondent’s use the of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant provides evidence that Respondent has been involved in more than 100 previous domain dispute cases, several resulting in domain names being transferred away from Respondent to complaining parties. Additionally, Respondent’s current portfolio of domain names contains domain names that appropriate well-known trademarks. Respondent thus exhibits a pattern of domain name abuse and shows Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”); see also, Armstrong Holdings, Inc. v. JAZ Assoc., FA 0095234 (Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also, Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Next as mentioned above regarding rights or legitimate interests, Respondent uses the confusingly similar <arcelor-mittal.us> domain name to address a webpage featuring pay-per-click links including links to Complainant’s competition. Using the confusingly similar domain name in such manner is disruptive to Complainant’s business and falsely indicates that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent’s use of the domain name thus demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Twitter v. Domain Admin, FA 1607451 (Forum April 2, 2015) (“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”); see also, Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the ARCELORMITTAL mark when it registered <arcelor-mittal.us> as a domain name. Respondent’s prior knowledge is evident from the worldwide notoriety of the ARCELORMITTAL trademark and the extreme unlikelihood that Respondent might somehow independently create a domain name that mirrors Complainant’s unique trademark. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of the <arcelor-mittal.us> domain name pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arcelor-mittal.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 22, 2021
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