ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Arcelormittal v. Eric Philipson Case No. D2024-4410 1. The Parties The Complainant is Arcelormittal, Luxembourg, represented by Nameshield, France. The Respondent is Eric Philipson, Germany. 2. The Domain Name and Registrar The disputed domain name
is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2024. On October 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 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 October 30, 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 October 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2024. The Center appointed Moonchul Chang as the sole panelist in this matter on November 25, 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.
page 2 4. Factual Background The Complainant is Arcelormittal, one of largest steel manufacturing companies in the world and the market leader in steel with regards to its use in automotive, construction, household appliances, and packaging with 58.1 million tons of crude steel made in 2023. The Complainant owns the International trademark registration No. 947686 for ARCELORMITTAL, registered on August 3, 2007. The Complainant also owns a domain names portfolio, including the domain name , that was registered on January 27, 2006. The disputed domain name was registered on October 25, 2024. The disputed domain name is inactive and does not resolve to any active page. 5. Parties’ Contentions A. Complainant The Complainant contends that: (a) the disputed domain name is confusingly similar to its trademark ARCELORMITTAL as it entirely incorporates its trademark and that the addition of a hyphen and the term “sales”, does not prevent a finding of confusing similarity; (b) the Respondent has no rights or legitimate interests in the disputed domain name as it is not known under that name, is not related in any way with the Complainant, and has never been authorized or licensed by the latter to use the trademark ARCELORMITTAL; and (c) the disputed domain name was registered and is being used in bad faith. Taking into account the worldwide reputation of the trademark ARCELORMITTAL, the Respondent was obviously aware of the Complainant’s trademark when it registered the disputed domain name. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent. As a result, the Complainant asserts that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (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 disputed domain name includes the Complainant’s trademark ARCELORMITTAL in its entirety together with addition of a hyphen and the term “sales”. Where the complainant owns a nationally or regionally registered trademark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1). It is also well accepted that the first element functions primarily as a standing requirement. The threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. (Section 1.7 of WIPO Overview 3.0). Adding the term “-sales” does not prevent a finding of confusing similarity. (Section 1.8 of WIPO Overview 3.0). In addition, the generic Top-Level Domain (“gTLD”) “.com” is disregarded under the confusing similarity test. (Section 1.11.1 of WIPO Overview 3.0).
page 3 Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0). First, the Complainant contends that it has not authorized the Respondent to use the trademark ARCELORMITTAL or to register any domain names incorporating it. Nonetheless, the composition of the Respondent’s disputed domain name carries a risk of implying that it was affiliated with ARCELORMITTAL. Secondly, the Respondent has no rights or legitimate interests in the ARCELORMITTAL mark and the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent has just used the disputed domain name by resolving to an inactive website. Thirdly, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. In the consideration of the above circumstances the Panel finds that the Complainant has made out a prima facie case and the Respondent failed to come forward with any appropriate evidence that might rebut the Complainant’s prima facie case. Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Thus, for the Complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith. These requirements are conjunctive; each must be proven or the Complaint fails. In addition, 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 (section 3.2.1 of WIPO Overview 3.0). First, the Complainant obtained the registration of ARCELORMITTAL trademark earlier than the Respondent registered the disputed domain name. Having considered that the Complainant’s trademark ARCELORMITTAL is well-known and the composition of the disputed domain name, it is clear that the Respondent has been aware of the reputation of the ARCELORMITTAL mark when registering a confusingly similar domain name that incorporates the Complainant’s mark plus the term “-sales”. Thus, it is also considered bad faith registration that the Respondent deliberately chose the disputed domain name to create a likelihood of confusion with the Complainant’s trademark so as to create a false association or affiliation with the Complainant. Secondly, the Respondent currently does not use the disputed domain name by resolving to an inactive web page. Having reviewed the available record, considering the reputation and fame of the Complainant’s trademark, the composition of the disputed domain name, and the incomplete or false contact details provided by the Respondent (the courier service was not able to deliver the Written Notice), the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. (Section 3.3 of WIPO Overview 3.0). Having reviewed the record, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
page 4 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. /Moonchul Chang/ Moonchul Chang Sole Panelist Date: December 9, 2024
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