ArcelorMittal (Société Anonyme) v. james carolina
Claim Number: FA2203001986354
Complainant is ArcelorMittal (Société Anonyme) (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is james carolina (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arcelormittal.co.com>, registered with NameCheap, Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2022; the Forum received payment on March 1, 2022.
On March 1, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <arcelormittal.co.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2022 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@arcelormittal.co.com. Also on March 4, 2022, 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 March 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 made the following contentions.
Complainant is the world’s leading steel and mining company. Complainant has rights in the ARCELORMITTAL mark through its registration of the mark with trademark agencies from around the world between 2007 and 2010. Respondent’s <arcelormittal.co.com> domain name, registered on September 23, 2021, and therefore well after the registration of those trademarks, is confusingly similar to Complainant’s ARCELORMITTAL mark. Respondent incorporates the mark in its entirety adding two generic top-level domains, “.co” and “.com.” Respondent lacks rights or legitimate interests in the <arcelormittal.co.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the ARCELORMITTAL mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that fails to display any active content.
Respondent registered and used the <arcelormittal.co.com> domain name in bad faith as Respondent fails to make an active use of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the ARCELORMITTAL mark due to the longstanding use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Luxembourg company which is the world’s leading steel and mining company.
2. Complainant has established it trademark rights in the ARCELORMITTAL mark through its registration of the mark with trademark agencies from around the world between 2007 and 2010.
3. Respondent registered the <arcelormittal.co.com> domain name on September 23, 2021.
4. Respondent has caused the disputed domain name to resolve to a webpage that fails to display any active content.
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 and is being used in bad faith.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ARCELORMITTAL mark due to the registration of the mark with multiple trademark agencies around the world. Registration of a mark with trademark agencies around the world may show that a complainant has rights in the mark per Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Here, Complainant has provided the Panel with copies of its registration of the mark with agencies around the world. See Compl. Ex. A. Therefore, the Panel finds that Complainant has rights in the mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ARCELORMITTAL mark. Complainant argues that Respondent’s <arcelormittal.co.com> domain name is confusingly similar to Complainant’s ARCELORMITTAL mark. Registration of a domain name that contains a mark in its entirety and adds multiple gTLDs does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Complainant argues that Respondent incorporates the mark in its entirety adding two gTLDs, “.co” and “.com.” Therefore, as the Panel agrees, it finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ARCELORMITTAL mark and to use it in its domain name;
(b) Respondent registered the <arcelormittal.co.com> domain name on September 23, 2021;
(c) Respondent has caused the disputed domain name to resolve to a webpage that fails to display any active content;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights or legitimate interest in the <arcelormittal.co.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the ARCELORMITTAL mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See 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)”). The WHOIS information for the disputed domain name lists the registrant as “James Carolina” and there is no other evidence to suggest that Respondent was authorized to use the ARCELORMITTAL mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that fails to display any active content. Use of a disputed domain name to resolve to a parked webpage that fails to show any active content is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with a screenshot of Respondent’s <arcelormittal.co.com> domain name that fails to show any active content on a parked webpage. See Compl. Ex. C. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel notes that Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, the Panel notes that these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Secondly, Complainant argues that Respondent registered and used the <arcelormittal.co.com> domain name in bad faith as Respondent fails to make an active use of the disputed domain name. Failure to make an active use of a domain name may show that a respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <arcelormittal.co.com> domain name that fails to show any active content on a parked webpage. See Compl. Ex. C. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the ARCELORMITTAL mark at the time of registering the <arcelormittal.co.com> domain name. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions decline to find bad faith as a result of constructive knowledge. But the Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel will determine whether Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii). The Panel finds that Respondent registered the disputed domain name in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arcelormittal.co.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 30, 2022
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