ARCELORMITTAL S.A v. Dirk Gillian
Claim Number: FA1611001702913
Complainant is ARCELORMITTAL S.A (“Complainant”), represented by Anne Morin of Nameshield, France. Respondent is Dirk Gillian (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arcelormittal-usa.us>, registered with NameCheap, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2016; the Forum received payment on November 15, 2016.
On November 15, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <arcelormittal-usa.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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-usa.us. Also on November 15, 2016, 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 December 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 usTLD 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: Rule 3(c) (ix).
Complainant ARCELORMITTAL S.A. is a company specialized in steel producing.
Complainant is the largest steel producing company in the world and is the market leader in steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries. It holds sizeable captive supplies of raw materials and operates extensive distribution networks.
ArcelorMittal USA is one of the largest steelmakers in North America, employing approximately 20,000 hardworking men and women in the U.S. In the United States, ArcelorMittal facilities, offices and joint venture partnerships can be found in 14 states and the District of Columbia.
ArcelorMittal USA's product portfolio includes a broad range of flat, long and tubular products serving the automotive, construction, pipe and tube, appliance, container and machinery markets.
Complainant is the owner of many trademarks ARCELORMITTAL® registered in the whole world, and in particular in United States. Complainant also owns a number of domain names, including the same distinctive wording ARCELORMITTAL®, exemplified as Arcelormittal.com, Arcelormittal.us, Arcelormittal-usa.biz, Arcelormittal-usa.info, Arcelormittal-usa.net, and Arcelormittal-usa.org.
The disputed domain name <arcelormittal-usa.us> was registered on October 26th, 2016 by the Registrant "Dirk Gillian".
The disputed domain name redirects to the Complainant’s main website at <<corporate.arcelormittal.com>>.
A. The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
Rule 3(c) (ix) (1); Policy 4(a) (i).
Complainant states that the disputed domain name <arcelormittal-usa.us> is confusingly similar to its trademarks ARCELORMITTAL®.
Indeed, the addition of a dash and of the letters “USA” (that could refer to “UNITED STATES of AMERICA”) is not sufficient to escape the finding that the domain name is confusingly similar to the trademark ARCELORMITTAL®.
The addition of a geographic term to Complainant's trademark does not distinguish the disputed domain name from the trademark. The addition of a geographic term renders the disputed domain name even more confusingly similar to the registered trademark because it causes an immediate association with the sales office of Complainant in the geographic area in question.
Moreover, Complainant contends that the addition of the ccTLD “.US” does not change the overall impression of the designation as being connected to the trademark ARCELORMITTAL® of Complainant.
It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademarks and its domain names.
Thus, the disputed domain name <arcelormittal-usa.us> is confusingly similar to Complainant’s trademark ARCELORMITTAL®.
B. Respondent has no rights or legitimate interests in respect of the domain name;
Rule 3(c) (ix) (2); Policy 4(a) (ii).
Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.
Complainant contends that Respondent is not affiliated with him nor authorized by him in any way to use the trademark ARCELORMITTAL®. Complainant does not carry out any activity for, nor has any business with, Respondent.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name and that he is not related in any way to Complainant’s business.
The information regarding Respondent, provided by the Whois of the disputed domain name <arcelormittal-usa.us>, is "Dirk Gillian".
Past panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name. Thus, Respondent is not known as "Arcelormittal" but as “Dirk Gillian".
Respondent isn’t the owner of intellectual property rights on the expression ARCELORMITTAL®. However, the website in relation with the disputed domain name <arcelormittal-usa.us> redirects to the Complainant’s website http://corporate.arcelormittal.com/ without any authorization.
Prior panels have found that a respondent cannot claim to have rights in a domain name merely by temporarily setting the domain name to send Internet users to the complainant’s own websites. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy 4(c)(i) or 4(c)(iii) . . .”).
Accordingly, Respondent has no rights or legitimate interests to the disputed domain name <arcelormittal-usa.us>.
C. The
domain name was registered and is being used in bad faith.
Rule
3(c) (ix) (3); Policy 4(a) (iii).
Complainant states that the disputed domain name <arcelormittal-usa.us> is confusingly similar to its trademarks and branded goods ARCELORMITTAL®.
Indeed, the addition of a dash and of the letters “USA” (that could refer to “UNITED STATES of AMERICA”) is not sufficient to escape the finding that the domain name is confusingly similar to the trademark ARCELORMITTAL®.
Furthermore, the website in relation with the disputed domain name <arcelormittal-usa.us> redirects to the Complainant’s website http://corporate.arcelormittal.com/ without any authorization.
By doing so, Respondent has admitted by conduct that he knew of Complainant’s trademark, of the Complainant's website and of its content. Complainant contends that Respondent is voluntarily creating a likelihood of confusion by suggesting that he is linked with Complainant.
Since Complainant has no control over this redirection, it could be changed in the Respondent's sole discretion at any time, which could harm Complainant's rights and interests.
Previous panels have found that there is a level of bad faith that might be inferred when a respondent appears to be using a domain name to build consumer confidence in that domain name’s relationship to a complainant’s business, when that same respondent can later prey upon these consumers by sending them to other websites. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing websites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use).
On these bases, Complainant concludes that Respondent has registered and is using the disputed domain name <arcelormittal-usa.us> in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant specializes in the production of steel and is one of North America’s largest steelmakers. Complainant registered ARCELORMITTAL with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,643,643, registered June 23, 2009). Registering a mark with the USPTO (or any other governmental entity for that matter) satisfies the requirements of Policy ¶4(a)(i), regardless of where a respondent operates or resides. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Complainant has established its rights in the ARCELORMITTAL mark under Policy ¶4(a)(i).
Complainant claims Respondent incorporates Complainant’s mark fully in its <arcelormittal-usa.us> domain name, adds a hyphen, the geographically descriptive term “usa,” and the “.us” ccTLD—creating confusing similarity under Policy ¶4(a)(i). Adding a hyphen must be disregarded under a Policy ¶4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”). Adding the geographic term “usa” to a mark, especially for a complainant who has substantial operations within the United States of America, does not prevent a finding of confusing similarity under a Policy ¶4(a)(i) analysis. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). A TLD (whether a gTLD, sTLD or ccTLD) must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. 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.”). Respondent’s <arcelormittal-usa.us> domain name is confusingly similar to Complainant’s ARCELORMITTAL mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in <arcelormittal-usa.us>. The WHOIS information does not indicate a registrant whose name is similar to the <arcelormittal-usa.us> domain name. Respondent has submitted no evidence in support of such a position. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). “Dirk Gillian” bears no similarity to the disputed domain. Respondent cannot be commonly known by the domain name. This Panel finds Respondent is not commonly known by the <arcelormittal-usa.us> domain name.
There is nothing in the available evidence indicating Respondent has rights in a mark identical to the disputed domain name under Policy ¶4(c)(i). See Kayak Software Corporation (Delaware Corporation) v. ITlinks.com, FA 1647695 (Forum Dec. 18, 2015) (finding that Respondent did not submit any evidence to satisfy its burden to demonstrate evidence of a trademark on which the disputed domain is based per Policy ¶4(c)(i).). Respondent has failed to prove any rights under Policy ¶4(c)(i).
Respondent uses <arcelormittal-usa.us> to redirect Internet users to Complainant’s own website. That does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Redirecting to a complainant’s own website does not normally confer rights in a domain name. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). In accordance with Direct Line Ins. Plc, the Panel concludes Respondent’s redirection to Complainant’s own website does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
The examples of bad faith registration and use set forth in Policy ¶4(b) are not meant to be exhaustive of all circumstances where bad faith registration and use may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). They are merely illustrative. The overriding objective of the Policy is to curb abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004).
Complainant claims Respondent registered and used <arcelormittal-usa.us> in bad faith because the domain name redirects to Complainant’s web site. This is true and certainly demonstrates Respondent actually knew about Complainant’s mark. Respondent registered and used <arcelormittal-usa.us> in bad faith pursuant to Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <arcelormittal-usa.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, December 12, 2016
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