ARCELORMITTAL S.A. v. larry barry
Claim Number: FA1809001805917
Complainant is ARCELORMITTAL S.A. (“Complainant”), represented by Laurent Becker of Nameshield, France. Respondent is larry barry (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arcelormittalgroup.us>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2018; the Forum received payment on September 14, 2018.
On September 14, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <arcelormittalgroup.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 September 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2018 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@arcelormittalgroup.us. Also on September 14, 2018, 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 October 8, 2018, 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 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.
Complainant has rights in the ARCELORMITTAL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <arcelormittalgroup.us> domain name is confusingly similar to Complainant’s mark as it adds the word “group” and the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <arcelormittalgroup.us> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists Respondent as “Larry Barry.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name resolves to a parked webpage containing commercial pay-per-click links referencing Complainant.
Respondent registered and uses the <arcelormittalgroup.us> domain name in bad faith. Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ARCELORMITTAL mark through its registration of such mark with the USPTO.
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 the ARCELORMITTAL trademark.
Respondent uses the at-issue domain name to address to a parking page which displays multiple pay-per-click links referencing 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 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registered trademark for ARCELORMITTAL thereby demonstrating its rights in such mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name starts with Complainant’s ARCELORMITTAL trademark, adds the term “group,” and concludes with the country code top level “.us”. The slight differences between Respondent’s <arcelormittalgroup.us> domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). In fact, the term “group” is somewhat suggestive of Complainant’s business since the term is often used to describe a business form, thus adding to any confusion. Therefore, the Panel concludes that Respondent’s <arcelormittalgroup.us> domain name is confusingly similar to Complainant’s ARCELORMITTAL trademark. See Mycoskie LLC v. Teera Chotpongsathonkul, FA 1345385 (Forum Oct. 26, 2010) (“Previous panels have found the additions of generic and descriptive terms and a ccTLD to a complainant’s mark fail to adequately distinguish a disputed domain name from a complianant’s[sic] mark.”); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Larry Barry” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <arcelormittalgroup.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the <arcelormittalgroup.us> domain name for the purposes of Policy ¶ 4(c)(iii), (UDRP Policy ¶ 4(c)(ii)). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar <arcelormittalgroup.us> domain name addresses a webpage displaying pay-per-click links referencing Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(ii), (UDRP Policy ¶4 (c)(i)), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iv), (UDRP Policy ¶4 (c)(i)). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being 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).
As mentioned above regarding rights and legitimate interests, Respondent’s <arcelormittalgroup.us> domain name is used to address a parking webpage offering multiple hyperlinks referencing Complainant. Using the at-issue domain name in this manner trades upon Complainant’s goodwill for commercial gain thereby indicating Respondent’s bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Additionally and although not argued by Complainant, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the ARCELORMITTAL mark when it registered the <arcelormittalgroup.us> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s juxtaposition of the trademark with the somewhat suggestive term “group” within the domain name. Registering and using a confusingly similar domain with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use 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
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arcelormittalgroup.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 9, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page