WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arcelormittal (SA) v. Moisenko Arthur

Case No. DUA2021-0021

1. The Parties

The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.

The Respondent is Moisenko Arthur, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <arcelormital.com.ua> (the “Disputed Domain Name”) is registered with SE Skurikhin Mykola. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 9, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 13, 2021, 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 September 13, 2021.

On September 13, 2021, the Center transmitted an email communication in English and Russian regarding the language of the proceeding to the Parties indicating that the registration agreement for the Disputed Domain Name is Russian, and invited the Parties to submit their preference as to the language of the proceeding. On September 13, 2021, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Russian, and the proceedings commenced on September 22, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was October 12, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.

The Center appointed Mariya Koval as the sole panelist in this matter on November 5, 2021. 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is a multinational steel manufacturing corporation headquartered in Luxembourg. It is one of the largest steel producing company in the world and is the market leader in steel for use in automotive, construction, household appliances and packaging with 71.5 million tones crude steel made in 2020. The Complainant holds sizeable captive supplies of raw materials and operates extensive distribution networks. It is ranked 120th in the 2019 Fortune Global 500 ranking of the world's largest corporations.

The Complainant is the owner of ARCELORMITTAL International trademark registration No. 947686, registered on August 3, 2007 in respect of goods and services in classes 6, 7, 9, 12, 19, 21, 39, 40, 41, 42 (the “ARCELORMITTAL Trademark”), which has a designation also to Ukraine.

The Complainant owns an important domain names portfolio, such as <arcelormital.com> (registered on January 27, 2006) and <arcelormittal.com.ua> (registered on December 8, 2006).

The Disputed Domain Name was registered on August 30, 2021. At the time the Complaint was filed, the website under the Disputed Domain Name was inactive, and is still inactive at the date of this Decision.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s ARCELORMITTAL Trademark. The omission of the letter “t” in the Disputed Domain Name is not sufficient to avoid the likelihood of confusion with the Complainant’s Trademark. The omission of a letter constitutes an obvious misspelling of the Complainant’s ARCELORMITTAL Trademark and is a characteristic of a typosquatting practice intended to create confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.

The Complainant also contends that the addition of the country code Top-Level Domain (“ccTLD”) “.com.ua” does not change the overall impression of the designation as being connected to the ARCELORMITTAL Trademark.

The Complainant further claims that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name in view of the following:

- the Respondent is not known by the Disputed Domain Name and has not acquired any rights with respect to the ARCELORMITTAL Trademark;

- the Respondent is not related in any way to the Complainant’s business; he is not affiliated with the Complainant nor authorized by it in any way to use the ARCELORMITTAL Trademark;

- the Complainant does not carry out any activity for, nor has any business with the Respondent;

- the Respondent did not make any use of the Disputed Domain Name since its registration, that confirms that the Respondent has no demonstrable plan to use the Disputed Domain Name.

The Complainant further alleges that the Respondent has registered and was using the Disputed Domain Name in bad faith.

Given the distinctiveness of the Complainant’s Trademark and reputation, it is reasonable to infer that the Respondent has registered the Disputed Domain Name with full knowledge of the Complainant’s Trademark.

Furthermore, the Disputed Domain Name resolves to an index page. This means 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 that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

The Disputed Domain Name has been set up with MX (mail exchange) records, which suggests that it may be actively used for email purposes. This is also indicative of bad faith registration and use because any email emanating from the Disputed Domain Name could not be used for any good faith purpose

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to succeed:

(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 the disputed domain name; and

(iii) the disputed domain name has been registered or is being used in bad faith.

Taking into consideration many similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

6.1. Preliminary Issue: Language of Proceedings

In accordance with paragraph 11 of the .UA Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian.

The Complainant filed a request for the English language proceeding, submitting the following arguments:

- the choice of language is related to the combined fact that the English language is the language most widely used in international relations and is one of the working languages of the Center;

- in order to proceed in Russian, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings;

- the use of Russian in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings.

Neither the Complainant, nor its representative are not obviously able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this proceeding.

The Disputed Domain Name and the ccTLD comprise Latin script. Furthermore, the Respondent, having received the Center’s communication regarding the language of the proceeding, also in both English and Russain, did not make any submissions regarding the language of the proceeding.

Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

The Panel considered all circumstances of this case, namely, the failure of the Respondent’s objection to English as the language of the proceedings; the Respondent’s decision not to respond to the Complaint, although being notified both in English and Russian; and, the Respondent’s choice of English words for the Disputed Domain Name.

In light of the above, the Panel concludes in accordance with paragraph 11(a) of the .UA Rules that English shall be the language of this proceeding. Translation of the Complaint and other materials would cause unnecessary delay of this proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant has properly asserted its rights in the ARCELORMITTAL Trademark due to the long use.

The Disputed Domain Name includes the Complainant’s registered ARCELORMITTAL Trademark in its entirety with omission of one letter “t”. The Disputed Domain Name is a plain example of “typosquatting” when the spelling of a trademark has been minimally changed by the substitution of two letters. In fact, it seems as if the Respondent intentionally chose to omit one of the letters “t” for confusing similarity with the Complainant’s ARCELORMITTAL Trademark and consequently – for deception of Internet users. According to the section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is normally considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

In accordance with prior decisions under the .UA Policy, the applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See AB Electrolux v. Захаров Евгений, WIPO Case No. DUA2020-0006. The Panel considers it is appropriate to apply the same rules in this proceeding regarding ccTLD “.com.ua”. Therefore, the addition of the ccTLD “.com.ua” to the Disputed Domain Name in this case does not prevent a finding of identity or confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the ARCELORMITTAL Trademark in which the Complainant has rights. Accordingly, the Complainant has satisfied the first element of the .UA Policy.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never licensed, authorized, or otherwise permitted in any way the Respondent to use the Complainant’s ARCELORMITTAL Trademark. The Complainant does not have any relationship or affiliation with the Respondent.

While the overall burden of proof in .UA proceedings is on the complainant, the Panel recognizes that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see, e.g. LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001.

Noting the facts and arguments set out above, the Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than 14 years after the ARCELORMITTAL Trademark had been registered. Moreover, there is no evidence that the Respondent owns any ARCELORMITTAL Trademarks, nor that he is commonly known by the Disputed Domain Name. The Complainant also contends that the Respondent has never received an authorization to use the Complainant’s Trademark in any way. The Respondent has failed to come forward with any evidence to rebut such prima facie case.

Also, taking into consideration the long use of the Complainant’s Trademark, it is impossible to assume that the Respondent was unaware of the Complainant's Trademark at the time of registration of the Disputed Domain Name. Moreover, the evidence of the Respondent’s good awareness of the Complainant’s business and Trademark is also the fact that he used the postal address of the Complainant’s affiliated company (PJSC «ARСELORMITTAL KRYVYI RIH», Ukraine) as the contact details for the Disputed Domain Name registration.

Moreover, the website under the Disputed Domain Name is inactive from the registration date, which gives no grounds for considering the use the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the .UA Policy.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the .UA Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:

(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel finds that the Complainant’s first registration for the ARСELORMITTAL Trademark predates the registration of the Disputed Domain Name by more than 14 years. The ARСELORMITTAL Trademark has been in commercial use from its first registration until now. Past .UA panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see Google LLC v. Aлександр Дмитрович Бутенко, WIPO Case No. DUA2020-0009. In this case the Disputed Domain Name reproduces the Complainant’s ARСELORMITTAL Trademark almost completely with the omission of one letter “t” and was likely registered with the primary intention to disrupt the Complainant’s business or confuse consumers. The Disputed Domain Name, almost completely reproducing the Complainant’s Trademark, is obviously deceptive for the consumers.

In the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of that the Disputed Domain Name almost completely reproduces the Complainant’s Trademark and the Respondent used the Complainant’s affiliated company’s contact details for the Disputed Domain Name registration.

The website under the Disputed Domain Name is inactive on the date of filing the Complaint and on the date of this Decision, which also is a factor indicating bad faith. According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

In view of the foregoing, the Panel finds that paragraph 4(a)(iii) of the .UA Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the Disputed Domain Name <arcelormital.com.ua> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: November 18, 2021