ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION ARCELORMITTAL v. Abe Case No. D2024-2023 1. The Parties The Complainant is ARCELORMITTAL, Luxembourg, represented by Nameshield, France. The Respondent is Abe, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name
(the “Domain Name”) is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2024. On May 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 17, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 2024 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 May 22, 2024. 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 May 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2024.
page 2 The Center appointed Ana María Pacón as the sole panelist in this matter on June 27, 2024. 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 from the merger of Arcelor and Mittal Steel and is headquartered in Luxembourg. It is one of the world’s leading steel and mining company. Currently, the Complainant employs over 120,000 people, serves consumers in 140 countries, and produces steel in 15 countries. The Complainant has registered the international trademark No. 947686 for ARCELORMITTAL, registered on August 3, 2007, which is valid until August 3, 2027, in International classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42, and is protected in many countries, including the United States. The Complainant also owns the domain name which reflects its ARCELORMITTAL trademark. This domain name was registered on January 27, 2006, and is valid until January 27, 2025. The Domain Name was registered on May 6, 2024. Currently, the Domain Name is inactive. At the time of filing the Complaint, the Domain Name resolved to a website displaying the Complainant’s trademark. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant argues that the Domain Name contains the Complainant’s ARCELORMITTAL trademark in its entirety, thereby satisfying Paragraph 4(a)(i). According to several UDRP panels, the complete reproduction of a trademark in a domain name is sufficient to establish confusing similarity. The addition of the term “mall” and the generic Top-Level Domain (“gTLD”) suffix “.com” does not change the overall impression. Furthermore, the Complainant contends that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent was not commonly known by the Domain Name prior to its adoption and use by the Complainant. Moreover, the Respondent does not have any affiliation, association, sponsorship, or connection with the Complainant and has not been authorized, licensed, or otherwise permitted by the Complainant or any subsidiary or affiliated company to register the Domain Name and use it. Finally, the Domain Name resolves to a website displaying its trademark and to attract users by impersonating the Complainant. Under Paragraph 4(a)(iii), the Complainant contends that the Respondent has registered and is using the Domain Name in bad faith. Given the well-known character and reputation of the ARCELORMITTAL mark, the Respondent must have known of its existence when registered the Domain Name. In addition, the Domain Name resolves to a website displaying the Complainant’s trademark and attempting to impersonate the Complainant and to take advantage of Internet users seeking ARCELORMITTAL products. According to the Complainant, past UDRP panels have found bad faith in similar circumstances. The Complainant requests the transfer of the Domain Name.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark recognizable within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms such as “mall” may bear on the assessment of the second and third elements, the Panel finds that such addition does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Then there is the addition of the gTLD, here “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. The Panel considers the following points based on the case record: - Before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or
page 4 services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - The Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - The Respondent is not 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. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - The record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Name. Panels have held that the use of a domain name for illegal activity (here, impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Respondent has used the Domain Name for an impersonation scam. The Domain Name in the past resolved to a website displaying the Complainant’s trademark and attempting to impersonate the Complainant. The Panel notes that the Respondent has not taken the opportunity to rebut the allegations made by the Complainant. Therefore, the impersonation of the Complainant by using its trademark in the Domain Name to defraud or confuse users, indicates a lack of rights or legitimate interests by the Respondent. See Insured Aircraft Title Service, LLC v. Brain Jason, Felix Coker, Marcia Van, Mickey Stateler, Denise Baustert, WIPO Case No. D2023-1567. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel acknowledges that the Complainant has demonstrated that its trademark ARCELORMITTAL, which is registered and widely recognized, enjoys global public awareness. Several UDRP panels have concluded that registering a domain name with knowledge of another company’s rights and with the intention to divert traffic can indicate bad faith registration (see Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). This Panel finds it implausible that the Domain Name was registered in good faith, particularly since the Complainant owns and uses the nearly identical domain name , differing only by the addition of the term “mall”. Furthermore, it is well accepted that impersonation is clear evidence of bad faith registration and use (see Ares Management LLC v. Omelchenko Aleksei, WIPO Case No. D2023-0836; FLRish IP, LLC v. prince zvomuya, WIPO Case No. D2019-0868). The intention of the Respondent to impersonate the Complainant is evident from the use of the Complainant’s unique logo and trademark on the Domain Name’s website, as well as the copying of text from the Complainant’s website. In addition, the Domain Name asked for personal information. The fact that the Domain Name does not currently resolve to an active website does not prevent a finding of bad faith. Finally, associating the Complainant’s trademark, with “scam” activities is likely to tarnish the reputation of the Complainant’s trademark, a risk the Respondent could not have been unaware of.
page 5 Having reviewed the record, the Panel finds the Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element 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 Domain Name be transferred to the Complainant. /Ana María Pacón/ Ana María Pacón Sole Panelist Date: July 11, 2024
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