ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Arcelormittal v. Sophia, Sophia Case No. D2024-4648 1. The Parties The Complainant is Arcelormittal, Luxembourg, represented by Nameshield, France. The Respondent is Sophia, Sophia, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name
is registered with Dominet (HK) Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2024. On November 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 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 November 18, 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 November 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2024.
page 2 The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on December 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 is based in Luxembourg and is one of the largest steel producing companies in the world. It was formed in 2006 from the takeover and merger of ‘Arcelor’ by ‘Mittal Steel’, which would officially be named ‘ArcelorMittal’ the following year. It employs more than 100,000 people. The Complainant owns several trademarks in the term ARCELORMITTAL, including the following: - International Registration No. 947686 ARCELORMITTAL, registered on August 3, 2007, designating a wide range of jurisdictions, including Australia, the European Union, Norway, Switzerland and the United States, for goods and services in Classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42. - United States trademark registration No. 3643643 ARCELORMITTAL (word), registered on June 23, 2009, for goods and services in classes 6, 7, 9, 12, 19, 21 and 39-42. The Complainant also owns a portfolio of domain names, including the domain name , that was registered on January 27, 2006, and resolves to the Complainant’s primary website (Annex 5 to the Complaint). The disputed domain name was registered on November 9, 2024 (Annex 1 to the Complaint). At the time the Complaint was filed, it resolved to a website displaying the Complainant’s trademark and offering certain financial services (Annex 6 to the Complaint). 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. The Complainant contends that the disputed domain name is confusingly similar to its trademark ARCELORMITTAL and its domain names associated. The Complainant claims that the addition of the term “vip” is not sufficient to escape the finding that the domain name is confusingly similar to the trademark and branded goods ARCELORMITTAL. According to the Complainant, the addition of the generic Top-Level Domain “.com” does not change the overall impression of the designation as being connected to the trademark ARCELORMITTAL. On the second element, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name . The Complainant claims that the Respondent is not identified in the WhoIs-database as the disputed domain name or otherwise known as the disputed domain name. According to the Complainant, the Respondent is not related in any way with the Complainant. The Complainant states that neither license nor authorization have been granted to the Respondent to make any use of the Complainant’s trademark ARCELORMITTAL, or apply for registration of the disputed domain name by the Complainant. Additionally, the Complainant argues that the domain name is used to host a website impersonating the Complainant in an attempt to mislead consumers into thinking that the services on the website originate from the Complainant, which neither demonstrates a bona fide offering of goods nor a legitimate interest of the Respondent. The Complainant further claims that there is no information or disclaimer on the page of the website identifying the owner of the website, which constitutes a failure to
page 3 comply with at least one of the elements of the Oki Data-test. Additionally, the Complainant contends that the Respondent can collect personal information through the website, namely passwords or phone numbers. 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 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 ARCELORMITTAL mark is reproduced 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 elements, here, the word “vip” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such elements 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 Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
page 4 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the available record, there are no indications of existing rights or legitimate interests to the disputed domain name in favor of the Respondent, paragraph 4(c) of the Policy: The Panel fails to recognize any potential use of the disputed domain name with a bona fide offering of goods or services or any legitimate noncommercial or fair use. The Respondent is also not commonly known by the domain name. Panels have held that the use of a domain name for illegitimate or illegal activity, here, impersonation/passing off or other types of fraud, as demonstrated in the present case by the Complainant, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Accordingly, 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 fails to recognize any scenario, in which the registration of the disputed domain name would not amount to the Respondent’s intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. It is evident that ARCELORMITTAL is a distinctive mark without inherent semantic meaning. The additional term “-vip” in the disputed domain name does not create a word with any other meaning, especially since the word “vip” is easily recognizable as an individual word because of its separation from “arcelormittal” by a hyphen. The combination of the individual words “arcelormittal” and “vip” in the disputed domain name evokes the idea of “very important persons” somehow related to the Complainant. Panels have held that the use of a domain name for illegitimate or illegal activity, here, impersonation/passing off or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the available record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Given the use made of the disputed domain name at the time of filing of the Complaint as demonstrated by Annex 6 to the Complaint, the Panel finds that the disputed domain name was, by resolving to a website impersonating the Complainant and allegedly offering certain financial services, intended to appear legitimate through the use of the Complainant’s name in the disputed domain name as well as on the website itself. Thus, the Panel is convinced that the Respondent registered and used the disputed domain name with full knowledge and targeting of the Complainant’s trademark to assert an illegitimate or illegal scheme. 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. /Andrea Jaeger-Lenz/ Andrea Jaeger-Lenz Sole Panelist Date: January 10, 2025
Full & Egal Universal Law Academy