ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION INDUSTEEL France v. Name Redacted Case No. D2024-2373 1. The Parties The Complainant is INDUSTEEL France, France, represented by Nameshield, France. The Respondent is Name Redacted1. 2. The Domain Name and Registrar The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2024. On June 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2024, 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 (DOMAIN PRIVACY SERVICE FBO REGISTRANT, DOMAIN ADMIN) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 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 June 14, 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”). 1 The Respondent appears to have used the name and/or contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2024. The Respondent did not submit any response. However, an email communication was received by email from the disclosed registrant on June 18, 2024, stating: “Please is this mail a spam? Because I haven't purchased any domain name called industeelusa.com.” Accordingly, the Center notified the Commencement of Panel Appointment Process on July 12, 2024. The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 18, 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 Tracing its history in steel-making back nearly 200 years, the Complainant is now part of the ArcelorMittal group, operating in more than 40 countries, with more than 2000 employees. The Complainant maintains production facilities in 6 different locations, reaching worldwide markets through sales offices in 40 different jurisdictions. The Complainant is a recognized leader in the global steel industry, with websites at “www.industeel.fr” and “www.industeel.net”, dating back to 2004 and 2006, respectively. In the International steel market, the Complainant has protected its intellectual property rights gained through developing and marketing its line of products and services. The Complainant has continually used the INDUSTEEL mark in commerce for more than 20 years and owns the following registrations among an international portfolio: INDUSTEEL, European trademark registration no. 001920438, dated January 18, 2002, in Class 6 and Class 40; INDUSTEEL, International trademark registration no. 745241, dated October 5, 2000, in Class 6, Class 7, Class 38, and Class 40. The disputed domain name was registered on June 7, 2024, and it resolves to an inactive blank website. 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 disputed domain name. Notably, the Complainant contends that its trademark is well-known around the world due to the scope of its steel-making business, and the international reputation it has established including in the US market. In the circumstances, the Complainant urges the Panel to find deliberate targeting of its INDUSTEEL mark for improper purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Centre did receive an email communication which indicates that the Respondent seemingly adopted a false business name and false contact details in registering the disputed domain name.
page 3 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interest 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 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 disputed 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 entirety of the INDUSTEEL mark is reproduced within the disputed domain name. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed 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 term here, “usa”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 disputed domain name. The Complainant has established a plausible prima facie case by bringing forward evidence and submissions on the following points: (1) the Respondent has never been licensed or otherwise authorized by the Complainant to use the INDUSTEEL mark; (2) the disputed domain name prominently features and reproduces the distinctive INDUSTEEL mark and the addition of the word “usa” only serves to increase the risk of implied affiliation, as it relates to one of the Complainant’s significant territories for operations; (3) the registration of a domain name incorporating another’s well known mark does not confer or create any rights or legitimate interests in the disputed domain name (see PRL USA Holdings, Inc, v. Vivienne Westwood/Contact Privacy Inc. Customer 016347680, WIPO Case No. D2011-1292); (4) the Respondent’s passive holding of the disputed
page 4 domain name which reverts to an inactive website does not evidence rights or legitimate interests in that disputed 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 disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The circumstances of this matter provide support for a finding of bad faith registration. In particular, the Panel takes into consideration the fact the Respondent has replicated a highly unique and distinctive mark. The Complainant is correct in submitting that there is no reasonable explanation for doing so, except for an intentional targeting of the Complainant’s well-known mark. The Panel also notes an additional circumstance: the Respondent has engaged in deceptive practices in utilizing a web of false names, addresses and contact information (including misappropriated email addresses) to conceal its identity. Panels have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding. Although panelists will look at the totality of the circumstances in each case, a number of factors have been considered relevant in applying the passive holding doctrine, including the following aspects of this case: (i) the distinctiveness and long-standing reputation of the Complainant’s trademark; (ii) the composition of the disputed domain name, namely the use of the INDUSTEEL mark in its entirety; (iii) the likelihood that the Respondent was fully aware of, and was targeting, the Complainant’s rights in its mark; (iv) the failure of the Respondent to offer any explanation or justification for its choice of the disputed domain name. WIPO Overview 3.0, section 3.3. The Panel finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of 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 disputed domain name be transferred to the Complainant. /Christopher J. Pibus/ Christopher J. Pibus Sole Panelist Date: July 31, 2024
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