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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arcelormittal (SA) v. Whois Privacy Protection Foundation / stave co ltd

Case No. D2019-1071

1. The Parties

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

The Respondent is Whois Privacy Protection Foundation, the Netherlands / stave co ltd, Turkey.

2. The Domain Name and Registrar

The disputed domain name <arcelormittal.icu> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2019. On May 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2019, 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 May 13, 2019, 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 May 13, 2019.

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 May 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.

The Center appointed James Bridgeman as the sole panelist in this matter on June 12, 2019. 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 produces steel for use in automotive, construction, household appliances and packaging with operations in more than 60 countries and operates extensive distribution networks.

The Complainant is the owner of the international trademark n°947686 ARCELORMITTAL registered on August 3, 2007.

The Complainant also has an online presence and is the owner of a portfolio of domain names incorporating the Complainant’s corporate name and trademark ARCELORMITTAL name and mark including <arcelormittal.com> registered and used since January 27, 2006.

There is no information available about the Respondent except that which is provided in the Complaint, the registrar’s WhoIs, and the contact information provided by the Registrar on the application of the Center. The first named Respondent is a privacy protection service and the disputed domain name is registered by the second named Respondent. References to the “Respondent” in this decision are references to the second named Respondent, save where the context otherwise indicates.

The disputed domain name <arcelormittal.icu> was registered on May 3, 2019, and has not resolved to any active website since its registration.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its rights in the ACELORMITTAL trademark established through the abovementioned registered International trademark registration and extensive use of the mark in its international steel production business. The Complainant submits that the disputed domain name <arcelormittal.icu> is identical to the trademark ARCELORMITTAL.

It further argues that it is well established that generic Top-Level Domain (“gTLD”) “.icu” extension may typically be disregarded for the purposes of comparison pursuant to paragraph 4(a)(i) of the Policy.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, arguing that according to Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, once the Complainant makes out a prima facie case the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name arguing that the Respondent has identified itself as “stave co ltd” when registering the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to the disputed domain name.

The Complainant asserts that the Respondent is not related in any way to the Complainant’s business, is neither affiliated with the Complainant nor authorized by the Complainant to use the trademark ARCELORMITTAL in any way. Neither does the Complainant carry out any activity for, or have any business with the Respondent.

Additionally, the disputed domain name remains inactive and the Respondent has not made any use of the disputed domain name since its registration. The Complainant submits that this confirms that the Respondent has no demonstrable plan to use the disputed domain name and demonstrates a lack of legitimate interests in respect of the disputed domain name.

The Complainant alleges that the disputed domain name <arcelormittal.icu> was registered and is being used in bad faith, arguing that the disputed domain name is identical to the Complainant’s distinctive ARCELORMITTAl registered trademark which is widely known. Given the distinctiveness of the Complainant’s trademark and reputation, the Complainant contends that it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark. Past panels have confirmed the notoriety of the Complainant’s ARCELORMITTAL trademark in the following case:

- ArcelorMittal SA v. Tina Campbell, WIPO Case No. DCO2018-0005, (“The Panel finds that the trademark ARCELORMITTAL is so well-known internationally for metals and steel production that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.”)

The disputed domain name is inactive. 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 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.

As prior panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use including Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish 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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established to the satisfaction of this Panel that it has rights in the ARCELORMITTAL trademark acquired inter alia through its ownership of the international trademark no. 947686 registered on August 3, 2007.

The disputed domain name <arcelormittal.icu> is identical to the Complainant’s registered trademark. It is well established that a gTLD extension may be ignored for the purposes of comparison and in this Complaint it is appropriate not to take the “.icu” extension into consideration.

This Panel finds therefore that the disputed domain name is identical to the ARCELORMITTAL trademark in which the Complainant has rights and the Complainant has therefore satisfied the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a domain name which is the subject of a complaint, the burden of production shifts to the respondent to establish such rights or interests.

The Complainant has made out such prima facie case asserting that it is the owner of the well known trademark which is identical to the disputed domain name <arcelormittal.icu>; that the Complainant has no commercial relationship with the Respondent and in particular has not granted the Respondent any rights or licence to use its registered trademark or to register the disputed domain name. The Complainant has asserted that the Respondent is not commonly known by the disputed domain name and that there is no evidence that the Respondent has used or intends to use the disputed domain name for any bona fide purpose. The Respondent has been afforded the opportunity to rebut the Complainant’s assertions but has chosen not to do so.

On the evidence before this Panel, taking into account that the burden of production has shifted to the Respondent and that the Respondent has failed to discharge this burden, this Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.

The Complainant has therefore satisfied the second element of the test in paragraph 4(a) of the Policy also.

C. Registered and Used in Bad Faith

On the evidence adduced, the Complainant is the owner of a distinctive ARCELORMITTAL trademark which was registered on August 3, 2007.

The ARCELORMITTAL trademark is distinctive and has an established Internet presence through the use of the domain name <arcelormittal.com> since January 27, 2006.

It is therefore improbable that the Respondent was not aware of the Complainant, its trademark, its reputation and its <arcelormittal.com> domain name when the disputed domain name was chosen and registered. This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in order to take predatory advantage of the Complainant’s reputation and goodwill in the ARCELORMITTAL trademark. Therefore, the disputed domain name was registered in bad faith.

On the evidence adduced, there has been no active use of the disputed domain name since its registration and the Respondent is passively holding the disputed domain name.

In the circumstances of this case where the disputed domain name is identical to the Complainant’s trademark; where on the balance of probabilities the disputed domain name was chosen and registered to take predatory advantage of the Complainant’s goodwill and reputation; where there is no evidence that the Respondent has any rights or legitimate interest in the disputed domain name; and where the Respondent has failed to engage with this proceeding, file any Response or rebut the Complainant’s case, the passive holding of the disputed domain name demonstrates that the Respondent is using the disputed domain name in bad faith.

The Complainant has therefore satisfied the third and final element of the test in paragraph 4(a)(iii) of the Policy also and is entitled to succeed in this Complaint.

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 <arcelormittal.icu> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: June 20, 2019

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