The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.
The Respondent is Conn Ernst, Estonia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2021. On September 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 October 13, 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 October 13, 2021.
On October 13, 2021, the Center transmitted an email in English and German to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 13, 2021. The Respondent did not comment on the language of the proceeding.
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 October 19, 2021. In accordance with the Rules,
paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2021.
The Center appointed Kaya Köklü as the sole panelist in this matter on November 19, 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 BackgroundThe Complainant is a company with its registered seat in Luxembourg. It is active in the field of steel production and belongs to the largest steel producing companies worldwide.
It is the owner of the widely known MITTAL trademark, which is registered in various jurisdictions. For instance, the Complainant is the owner of the International Trademark Registration No. 1198046, registered on December 5, 2013, covering protection for steel and related services according to classes 6 and 40 (Annex 4 to the Complaint).
The Complainant further owns and operates numerous domain names containing its MITTAL trademark, such as
The disputed domain name was registered on September 13, 2021.
The Respondent is reportedly an individual from Estonia.
Currently, the disputed domain name does not resolve to an active website and is parked only (Annex 6 to the Complaint). However, an active mail exchange (“MX”) email server for the disputed domain name has been configured (Annex 7 to the Complaint).
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its MITTAL trademark.
It further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In addition, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingThe Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of this administrative proceeding shall be English. Although the language of the registration agreement is German, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in German and request a German translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Center’s communication about the language of the proceedings, even though communicated in German and in English. The Panel particularly notes that the Respondent was given the opportunity to respond in German and that this opportunity remained unused by the Respondent.
Consequently, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English.
6.2 Substantive IssuesAccording to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly SimilarTo begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of the MITTAL trademark, which has been first used and registered many years ago.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s MITTAL trademark, as the disputed domain name fully comprises the MITTAL trademark. As stated at section 1.8 of the WIPO Overview 3.0, where a trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. In the present case, the mere addition of “iq” and “steel” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s MITTAL trademark.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license or alike to use the Complainant’s MITTAL trademark in a confusingly similar way within the disputed domain name.
In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c), or provide any other evidence of rights or legitimate interests in the disputed domain name. On the contrary and bearing in mind that the Respondent has configurated an MX email server for the disputed domain name, the Panel cannot exclude that the disputed domain name may already have been used in connection with possibly fraudulent or at least illegitimate activities by the Respondent.
Noting the construction of the disputed domain name, there is particularly no doubt that the Respondent was well aware of the Complainant and its MITTAL trademark before registering and using the disputed domain name. The Panel is convinced that the Respondent deliberately has chosen the disputed domain name to cause confusion with the Complainant and its steel business among Internet users. Also, the Panel notes that the nature of the disputed domain name carries a significant risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.
Bearing all this in mind, the Panel does not see any basis for assessing a bona fide offering of goods or services by the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users for illegitimate purposes, particularly for the following reasons.
At the date of registration of the disputed domain name, the Respondent must have been well aware of the Complainant and its MITTAL trademark. It is obvious to the Panel, that the Respondent has chosen the disputed domain name to target and mislead Internet users who particularly are searching for information on the Complainant and its steel business. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith.
Additionally, the Panel finds that the Respondent is using the disputed domain name in bad faith, even though the disputed domain name has apparently yet not been linked to an active website. In line with the opinion of numerous UDRP panels before (cf. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and section 3.3 of the WIPO Overview 3.0, the Panel believes that the non-use of a domain name does not prevent a finding of bad faith use.
Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant’s non-dictionary trademark MITTAL as sufficiently distinctive, so that any descriptive use of the Complainant’s trademark by the Respondent appears unlikely. Furthermore, the Panel accepts the failure of the Respondent to submit a substantive response to the Complainant’s contentions as an additional indication for bad faith use. Also, the Panel believes that the active MX mail server for the disputed domain name creates a real or implied ongoing threat to the complainant, since the disputed domain name can be used by the Respondent to mislead customers of the Complainant in their false belief that any such respective email origins from the Complainant, possibly for fraudulent activities.
All in all, the Panel cannot conceive of any plausible and legitimate use of the disputed domain name that would be in good faith, except with an authorization of the Complainant.
Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Kaya Köklü
Sole Panelist
Date: December 3, 2021