The Complainant is ArcelorMittal (SA) of Luxembourg, Luxembourg, represented by Nameshield, France.
The Respondent is مسعود ثقفي of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2018, 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 4, 2018 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 5, 2018.
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 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2018. The Complainant sent an email communication to the Respondent copying the Center on October 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2018.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on October 9, 2018. 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 company specialized in steel producing in the world. According to the Complainant, its company is one of 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.
The Complainant has provided enough evidence that is the owner of the international trademark No. 947686 ARCELORMITTAL registered on August 3, 2007 renew and updated today.
The Complainant established that the Internet domain name was registered and used since January 27, 2006 and includes their trademark.
According to the Registrar’s WhoIs data base the disputed domain name was registered on August 21, 2018.
The disputed domain name is inactive. 5. Parties’ Contentions A. Complainant
The Complainant has asserted that the three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name are present in this case. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant provided enough evidence of its own rights through the registration and use of the ARCELORMITTAL trademark. The Complainant also has established that they have recently begin with their activities in IRAN where is presumably located the Respondent.
There is no doubt that the disputed domain name includes entirely the trademark ARCELORMITTAL, and the addition of the geographical term “Iran” does not prevent the finding that the disputed domain name is confusingly similar the trademark ARCELORMITTAL.
As other Panelists has already recognized the addition of a geographic term is not enough to prevent a finding of confusing similarity between a domain name and a trademark, for example: Charabot SA v. Name Redacted,WIPO Case No. D2018-0339, in this case the Panel found that the the trademark CHARABOT is “replicated entirely in the disputed domain name” , and that the addition of the geographical term “France” does not prevent a finding of confusing similarity under the first element.
In this specific case, the generic top-level domain (“gTLD”) “.com” does not form part of the comparison because it is required for technical purposes, this opinion has been previously recognized by other UDRP panel, as for example in Rexel Developments SAS v. Zhan Yequn,WIPO Case No. 2017-0275, the panel decided the following: “the disputed domain name comprises the Complainant’s trademark in its entirety. The difference between the disputed domain name and the trademark is the addition of the gTLD suffix “.red”. However, it is standard practice to disregard the Top-Level suffix under the confusing similarity test, except where the applicable Top-Level suffix may itself form part of the relevant trademark, which is not the case here.”
For all the above-mentioned reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ARCELORMITTAL, therefore the Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the Domain Name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case the Respondent did not answer, therefore did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
The Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant have mentioned in the Complaint that has not authorized or given any license to the Respondent to register, use or include its own trademark ARCEROMITTAL in a domain name. Also, the Complainant established that the Respondent is not commonly known by the disputed domain name nor the name ARCELORMITTAL.
The disputed domain name is inactive. This means that the Respondent is not making any effort to use in a bona fide commercial or not commercial way. In the present case, The Respondent has not rebutted the Complainant arguments or shown evidence of its rights or legitimate interests and the disputed domain is inactive.
The lack of use of the disputed domain name and the fact that the Respondent has not argued or presented evidence to establish rights or legitimate interests and consequently has not rebutted the Complainant’s prima facie case, is enough to find that the Respondent has no rights or legitimate interests in the disputed domain name. This opinion is already recognized, back in the early years of the UDRP in the The Boeing Company v. Nicola Bressi,WIPO Case No. 2000-1164, the panelist decided: “The Respondent has advanced no basis on which the Administrative Panel could conclude that it has a right or legitimate interest in the domain names. In addition, the Complainant has registered its marks in the Respondents jurisdiction, Italy. The evidence is that no commercial use is being made of the names. The Administrative Panel concludes that the Respondent has no right or legitimate interest in the subject domain names.”
For all the above-mentioned reasons the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is also fulfilled. C. Registered and Used in Bad Faith
The Complainant contends that the disputed domain name is confusingly similar to its distinctive trademark ARCELORMITTAL. In the context of the UDRP other panelists have recognized ARCELORMITTAL as a well-known trademark, for example: ArcelorMittal SA v. Tina Campbell,WIPO Case No. DCO2018-0005 “The Panel finds that the trademark ARCELORMITTAL is so well-known internationally for metals and steel production that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.”
The disputed domain name is inactive. As other UDRP panels have held, the incorporation of a well‑known trademark into a domain name, coupled with an inactive website, has been considered evidence of bad faith registration and use of the disputed domain name in bad faith, as the Telstra Corporation Limited v. Marshmallows,WIPO Case No. D2000-0003, whose opinion was the following. “In light of these particular circumstances, the Administrative Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name 'is being used in bad faith' by Respondent”. It is important to take into account the opinion of the Panelist of the CBS Broadcasting, Inc. v. Dennis Toeppen,WIPO Case No. D2000-0400, who said: “The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The Complainant’s ACELORMITALL trademark is not a common word. In this case, the Respondent should have known about the Complainant’s rights because the Complainant’s mark had significant reputation when the disputed domain name was registered, and the disputed domain name reproduces the Complainant’s trademarks in its entirety, then the Panel is able to conclude that the registration of the disputed domain name was in bad faith. The fact that the disputed domain name has been hold inactive is consider under the present case as a use in bad faith.
Consequently, the Panel finds that the Respondent has registered and used the disputed Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy, therefore the Complainant has complied with Policy paragraph 4(a)(iii). 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 be transferred to the Complainant.
Ada L. Redondo Aguilera
Sole Panelist
Date: October 22, 2018
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