WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. David Alonso Garcia Mendez

Case No. D2020-2382

1. The Parties

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

The Respondent is David Alonso Garcia Mendez, Mexico.

2. The Domain Name and Registrar

The disputed domain name <arcelormittal-planta.org> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 23, 2020.

The Center verified that the Complaint together with the amended 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 September 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2020.

The Center appointed William F. Hamilton as the sole panelist in this matter on November 11, 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 mining and steel manufacturing company. The Complainant is headquartered in Luxembourg and operates facilities in 18 countries. The Complainant employs of 191,000 employees globally and serves customers in 160 countries.

The Complainant was formed through a merger in 2006. The Complainant has obtained numerous registrations for the mark ARCELORMITTAL (the “Mark”) dating back to 2007 including registrations with Mexican Institute of Intellectual Property (Registration No. 1103534, registered on April 6, 2009), the United States Patent and Trademark Office (Registration No. 3643643, registered on June 23, 2009 and Registration No. 3908649, registered on January 18, 2009), the International Trademark, (Registration No. 947686, registered on August 3, 2009), and the Canadian Intellectual Property Office (Registration No. TMA783952, registered on December 2, 2010).

The Complainant owns and operates the domain name <arcelormittal.com> and related domain names targeting national markets such as <mexico.arcelormittal.com>.

The disputed domain name was registered on June 8, 2020. The disputed domain name originally resolved to a website that had copied and reproduced the content of the Complainant’s website at <mexico.arcelormittal.com>. After a “take-down” demand from the Complainant, the copied content was removed. The disputed domain name currently resolves to an inactive landing page.

5. Parties’ Contentions

A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name merely adds the Spanish dictionary word “planta” (which means “factory” in English) to the Complainant’s Mark. The Complainant asserts the Respondent has no rights or legitimate interest in the disputed domain name because the Respondent has never conducted any bona fide commercial activity under the disputed domain name. The Complainant asserts the Complainant never authorized the Respondent to use the Mark or the disputed domain name. Finally, the Complainant asserts the disputed domain was registered and is being used in bad faith because the disputed domain name originally resolved to a fraudulent reproduction of the Complainant’s website at <mexico.arcelormittal.com> and now resolves to an inactive landing page.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark

The disputed domain name is composed by adding the Spanish dictionary word “planta” as a suffix to the Complainant’s Mark. A domain name which wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark … the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Moreover, it is well established that the mere addition of a dictionary word to a complainant’s registered mark does not prevent a finding of confusing similarity. Arcelormittal (SA) v. Admin Contact, PrivateName Services Inc. / Juan Jose, WIPO Case No. D2019-0145 (addition of the word “acero”, which means “steel” in Spanish, does not prevent a finding of confusing similarity); see generally WIPO Overview 3.0, section 1.8. Nor does the addition of a hyphen before the added dictionary word in the disputed domain name alleviate confusingly similarity. Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (addition of a hyphen does not avoid confusing similarity). Finally, the Top‑Level Domain does not dispel confusing similarity. “The applicable Top‑Level Domain in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview 3.0, section 1.11.

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Respondent’s actual name disclosed by the Registrar does not resemble any elements of the disputed domain name. Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.

The Respondent did not respond to the Complaint and has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Respondent’s registration and use of the disputed domain name to resolve to a duplicate of one of the Complainant’s websites did not establish any Respondent rights or legitimate interests in the disputed domain name. ArcelorMittal (Société Anonyme) v. El Manuel Es Pura Bellesa, Acero, WIPO Case No. D2020-0868 (an attempted deception of Internet users does not confer any rights or legitimate interests in the disputed domain name). The current passive holding or non-use of the disputed domain name under these conditions does not establish any rights or legitimate interests in the disputed domain name. American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244; Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209.

The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and used in bad faith. The Panel finds on the evidence presented that the Respondent has intentionally attempted to falsely lure and attract Internet users to the Respondent’s website, most likely for commercial gain, disrupting the Complainant’s business, and continues to use the disputed domain name in bad faith by passively holding the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s Mark, and the disputed domain name originally resolved to a website that copied and mimicked the Complainant’s website “mexico.arcelormittal.com”. ArcelorMittal (Société Anonyme) v. El Manuel Es Pura Bellesa, Acero,WIPO Case No. D2020-0868 (bad faith registration and use when copying and duplicating complainant’s website).

The Respondent obviously was aware of the Complainant’s Mark because the Respondent copied one of the Complainant’s websites utilizing the Complainant’s Mark.

Lastly, the Respondent’s bad faith registration and use is further evidenced by the Respondent merely removing the duplicated content originally located at the disputed domain name after the Complainant’s demand but continuing to use the disputed domain name which now resolves to an inactive, passive website. It is difficult to conceive of any current or future use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant has met its burden under paragraph 4(a)(iii) 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 <arcelormittal-planta.org> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: November 25, 2020