WIPO Domain Name Decision DIR2024-0017 for arcelormittaliran.ir

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION ARCELORMITTAL v. Reza Ghanbari Case No. DIR2024-0017 1. The Parties The Complainant is ARCELORMITTAL, Luxembourg, represented by Nameshield, France. The Respondent is Reza Ghanbari, Iran (Islamic Republic of). 2. The Domain Name and Registrar The disputed domain name is registered with IRNIC. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2024. On November 20, 2024, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 22, 2024, IRNIC 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 (Not identified) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2024, providing the registrant and contact information disclosed by IRNIC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 25, 2024. Hard copies of the Complaint and the amended Complaint were received by the Center on December 6, 2024. The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2024. On January 3, 2025, the Center notified the Respondent’s default.
page 2 The Center appointed José de Pierola as the sole panelist in this matter on January 8, 2025. 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 one of the largest steel producers in the world and is one of the market leaders in steel for use in automotive, construction, household appliances and packaging with 58.1 million tons crude steel made in 2023. It holds sizeable captive supplies of raw materials and operates extensive distribution networks, as per the information submitted as annexes to the Complaint. The Complainant is the owner of the international trade mark registration No. 947686 for ARCELORMITTAL registered on August 3, 2007, notably in Iran (Islamic Republic of), as per trade mark registration submitted as annex 3 to the Complaint. The Complainant also owns an important domain names portfolio, such as the domain name registered since January 27, 2006, as per the information submitted as annex 4 to the Complaint. The disputed domain name was registered on April 1, 2009, and resolves to an inactive page, as per the information submitted as annex 5 to the Complaint. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its trade mark ARCELORMITTAL, as per the information submitted as annex 4 to the Complaint. The addition of the geographical term “Iran” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark ARCELORMITTAL. It does not change the overall impression of the designation as being connected to the Complainant’s trade mark. In this regard, the Complainant points out that previous panels have stated that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The Complainant cites Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103, because the Panel of that case agrees with previous panels which have decided that incorporating a trade mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The Complainant contends that the addition of the country code Top-Level Domain (“ccTLD”) “.ir” does not change the overall impression of the disputed domain name as being connected to the Complainant’s trade mark. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trade mark. Once again, the Complainant cites Robert Bosch GmbH v. Vahid Rouzafzay, WIPO Case No. DIR2018-0007, because the panel states that once the ccTLD “.ir” is ignored, the disputed domain name consists solely of the complainant's registered word trade mark. And thus, the panel finds that the disputed domain name is identical to a trade mark.
page 3 The Complainant also alleges that the Respondent is not identified in the WhoIs database as the disputed domain name, and thus, the Respondent is not known as “ARCELORMITTAL” and has not acquired any trade mark rights on this term. The Complainant contends that the Respondent is not affiliated with it nor authorized by it in any way to use the trade mark ARCELORMITTAL, and does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trade mark ARCELORMITTAL, or apply for registration of the disputed domain name by the Complainant. The disputed domain name resolves to an inactive page, which indicates that the Respondent did not use the disputed domain name or has no demonstrable plan to use the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Complainant claims that the disputed domain name was registered in bad faith, in light of the following arguments: First, the Complainant alleges that its trade mark ARCELORMITTAL is widely known, and past panels have confirmed the notoriety of the trademark ARCELORMITTAL. Taking into account the distinctiveness of the Complainant's trade mark and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trade mark, which implies the Respondent’s deliberate effort to capitalize on the trademark’s established reputation and goodwill, which is an indication of bad faith. In second place, the Respondent has not demonstrated any activity in regard to 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 that would not be illegitimate. As prior panels have held, the incorporation of a famous trade mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. In third place, the Complainant contends that the Respondent has no right or legitimate interests in regard to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely 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 was registered or is being used in bad faith.
page 4 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 trade mark and the disputed domain name . WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.71. 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 trade mark is reproduced within the disputed domain name . Accordingly, the disputed domain name is confusingly similar to the trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) 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 irDRP 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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Also, the Panel considers that the composition of the disputed domain name, which integrates the entirety of the ARCELORMITTAL trade mark and the geographical term “Iran”, carries a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). The Panel finds the second element of the Policy has been established. 1In light of the substantive and procedural similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited decisions under the UDRP and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
page 5 C. Registered or 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 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. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trade mark, the composition of the disputed domain name, and the absence of a response from the Respondent and 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. /José de Pierola / José de Pierola Sole Panelist Date: January 21, 2025


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