The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Adio Stephen, Mittal Steel, Gambia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2021. On January 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2021, 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 January 14, 2021 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 January 21, 2021. 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 January 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2021. The Center appointed Jacques de Werra as the sole panelist in this matter on March 11, 2021. 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 was formed in 2006 through the merger of Arcelor with Mittal Steel Technologies. It is one of the world’s leading steel and mining companies. The company is headquartered in Luxembourg, and manufactures steel in 18 countries around the world. In 2019, the Complainant produced over 89 million tonnes of crude steel globally. The Complainant employs over 191,000 employees globally, serving customers in 160 countries. The Complainant is the owner of trademark registrations across various jurisdictions for the trademark ARCELORMITTAL, including the International trademark 947,686 which was registered on August 3, 2007 (“the Trademark”). The Disputed Domain Name was registered on October 30, 2020. The Disputed Domain Name is not actively used and the website associated with the Disputed Domain Name indicates “our website is under construction”. The Complainant sent cease-and-desist letters to the Respondent on November 2, 9, and 16, 2020 without receiving a response from the Respondent. 5. Parties’ Contentions A. Complainant The Complainant makes the following principal contentions: The Complainant claims that the Disputed Domain Name incorporates Complainant’s Trademark in its entirety while merely adding the geographically descriptive term “US” to the beginning of said trademark, thus rendering the Disputed Domain Name confusingly similar to the Trademark. It is well established that the addition of a geographic term or place name does not alter the Trademark or negate the confusing similarity. ARCELORMITTAL is not a dictionary term and does not have a generic meaning. The name refers to the two companies, namely Arcelor and Mittal Steel, that merged in 2006 to create ArcelorMittal (which is the Complainant). The company name and the Trademark are, therefore, a direct reference to the Complainant’s origins and history. Moreover, the Respondent’s use of the “US” abbreviation in conjunction with the Complainant’s Trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Name and the Complainant’s Trademark as this specific term is closely linked and associated with the Complainant. More specifically, the Complainant is one of the leading steelmakers in North America and serves a broad United States of America manufacturing base. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating Complainant’s Trademark. The Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. In this respect, although the verification email of the Registrar indicates that the Respondent is affiliated with the organization “Mittal Steel”, the Complainant contends that the Respondent has falsely identified itself as the Complainant, or as being associated with the Complainant. The Complainant was formed through the fusion of Arcelor and Mittal Steel in 2006. A Google search for the name and organization specified in the Registrar verification, “Adio Stephen, MITTAL STEEL”, yielded no results related to the Respondent, which corroborates the Complainant’s submission that they have no subsidiary in Gambia. Additionally, the inclusion of “Arcelor”, half of the Complainant’s ARCELORMITTAL Trademark, in the Disputed Domain Name cannot be explained if the Respondent is working for an entity simply known as “Mittal Steel”. Therefore, the Disputed Domain Name’s composition creates confusion as to source designation, as it replicates the Complainant’s trademark and full company name. Given the totality of the circumstances, it is evident that the Respondent is not commonly known by the Disputed Domain Name. The Respondent is using the Disputed Domain Name to redirect Internet users to a website that resolves to a parked hosting provider page and lacks content. The Respondent has failed to make use of the Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the Disputed Domain Name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name. The Complainant and its Trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 2006, which significantly predates the Respondent’s registration of the Disputed Domain Name on October 30, 2020. At the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s Trademark and that registration of domain names containing well-known trademarks constitutes bad faith. The Disputed Domain Name currently resolves to a parked hosting provider page and is not being used. The Disputed Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy, paragraph 4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Name incorporates Complainant’s Trademark in its entirety, with the mere addition of the geographical indication “US”, there is no plausible good-faith reason or logic for the Respondent to have registered the Disputed Domain Name. Any use of the Disputed Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith. The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. It was subsequently revealed on the basis of the amended complaint that the Respondent has registered the Disputed Domain Name by identifying himself and including the terms “Mittal Steel”. By fraudulently including the name “Mittal Steel” in its WhoIs record, the Respondent is attempting to conceal its true identity. Such falsified information is another indication of the Respondent’s bad faith. The Complainant has no subsidiary in Gambia, and the Complainant obtained no results referencing Respondent when it searched for the name and organization specified in the Respondent’s verified WhoIs information, “Adio Stephen, MITTAL STEEL”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has rights to the Trademark in many countries. The Panel also notes that the Trademark has reached a high degree of global distinctiveness and recognition, as evidenced by the documents filed by the Complainant, which has not been disputed by the Respondent. A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name replicates the Trademark to which a geographic element has been added as a prefix, i.e., “us”. As a matter of principle, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8. As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks any right or legitimate interests in the Dispute Domain Name. The Panel acknowledges that the Complainant never authorized, licensed, or permitted the Respondent to use the Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name. The Panel notes that the Respondent has indicated in his WhoIs information “MITTAL STEEL” (as revealed in the amended Complaint), which cannot be understood otherwise than as a reference to the Complainant and to the Trademark. Based on the documents submitted by the Complainant, there is indeed no indication that the Respondent would be “commonly known” by the Disputed Domain Name. The Respondent cannot be considered either to make any use of the Disputed Domain Name from which he could derive rights or legitimate interests, given that the Disputed Domain Name is not actively used (the website associated with it is under construction). On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name. Furthermore, the nature of the Disputed Domain Name, comprising the Trademark and a geographic term, carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1. The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. In this case, the Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith for the following reasons: Based on the established practice under the UDRP, the non-use of a domain name (including a blank, “coming soon” or “under construction” page, which is the case here) does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See WIPO Overview 3.0, section 3.3. In this case, by application of these factors, the Panel holds that the passive holding of the Disputed Domain Name by the Respondent does not prevent a finding of bad faith. The degree of distinctiveness and of reputation of the Trademark is indeed very high, and the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use. In addition, the Panel notes that the Respondent has has used false contact details given that the Respondent has included “MITTAL STEEL” in his contact details which clearly refers to Complainant and to Complainant’s Trademark. Furthermore, the nature of the Disputed Domain Name, comprising the Trademark and a geographic term, supports a finding of bad faith. See WIPO Overview 3.0, section 3.2.1. On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met. 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 Jacques de Werra
Sole Panelist
Date: March 28, 2021
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