WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. Kwadwo Ama

Case No. D2020-3456

1. The Parties

The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondents is Kwadwo Ama, Ghana.

2. The Domain Name and Registrar

The disputed domain name <arcelormining.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2020, 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 January 4, 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 January 4, 2021.

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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2021.

The Center appointed Cherise Valles as the sole panelist in this matter on February 19, 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 Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of trademark registrations in various jurisdictions, including Brazil, Canada, and the European Union. The Complainant has spent a considerable amount of time and money protecting its intellectual property rights.

The trademarks that are relevant to this proceeding are:

By way of background, Arcelor was created in February 2002 through the merger of Arbed (Luxembourg) founded in 1911, Aceralia (Spain) and Usinor (France). Arcelor had major steel production facilities in Argentina, Belgium, Brazil, Germany and Italy, and controlling interests in plants in Brazil, Canada, Morocco and Poland. In 2006, Arcelor merged with Mittal Steel Technologies to become ArcelorMittal, the Complainant in this matter. It is currently one of the world’s leading steel and mining companies. The Complainant is headquartered in Luxembourg, and is one of the largest steel producers, manufacturing steel in 18 countries around the world. In 2019, the Complainant produced over 89 million tons of crude steel globally. The Complainant employs over 191,000 employees globally, serving customers in 160 countries.

The Complainant is listed as “MT” on the stock exchanges of Amsterdam, Luxembourg, New York and Paris, and as “MTS” on the Spanish stock exchanges of Barcelona, Bilbao, Madrid and Valencia. The Complainant is also a member of more than 120 indices, including: EURO STOXX 50, CAC40, AEX, FTSE Eurotop 100, MSCI Pan-Euro, DJ Stoxx 600, S&P Europe 500, Bloomberg World Index, IBEX 35 index and NYSE Composite Index.

The Complainant has received various awards and recognitions in the industry. In 2018, the Complainant was ranked the largest steelmaker in the world by The World Steel Association, with crude steel production of 96.4 million tons. In 2019 Forbes, the Complainant was ranked No. 303 for World’s Best Employers, No. 195 in Global 2000 and No. 254 in America’s Best Employers.

The Complainant has a large Internet presence and shares information about its products, services and news on its website “www.arcelormittal.com”. According to Similarweb.com, the Complainant’s website at its primary domain name <arcelormittal.com> has received over 457,000 visitors between September 2019 to February 2020, and is ranked 16,461 in France and 87,403 globally.

The disputed domain name <arcelormining.com> was registered on November 24, 2020, and it is currently inactive. According to the screenshots provided by the Complainant, the Respondent was previously using the disputed domain name to direct Internet users to a website where it purported to pass itself off as the Complainant, whilst appearing to offer mining and mineral production and trading services.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered trademarks, in light of the fact that it entirely incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s fraudulent use of the disputed domain name is clear evidence of bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

By virtue of its trademark and service mark registrations as shown in Annex 1 to the Complaint, the Complainant is the owner of the ARCELOR trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1: “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” Given the Complainant’s trademark registration as detailed above, the Complainant has established its trademark rights in the term “arcelor” for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.8 of the WIPO Overview 3.0 “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Complainant’s trademark ARCELOR is clearly recognizable as the leading element of the disputed domain name. In creating the disputed domain name, the Respondent has added the term “mining” to the Complainant’s ARCELOR trademark, which does not prevent a finding of confusingly similar to the Complainant’s trademark. The fact that such term is closely linked and associated with the Complainant’s brand and trademark only serves to assert the confusing similarity between the disputed domain name and the Complainant’s trademark.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the extension into account. See WIPO Overview 3.0 at section 1.11.1, which states that the “applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”.

In the light of the foregoing, the Panel finds that the disputed domain name <arcelormining.com> is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have held that the complainant must establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. See The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises/And The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, noting that a complainant need only show a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant submits that there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, permitted or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s ARCELOR trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.

The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. In this case, the pertinent WhoIs information identifies the Respondent as “Kwadwo Ama”, which does not resemble the disputed domain name in any manner. There is no evidence, including in the WhoIs record for the disputed domain name, which suggests that the Respondent is commonly known by the disputed domain name. Therefore, the Respondent cannot be regarded as having acquired rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.

Furthermore, at the time of filing the Complaint, the Respondent was using a privacy service, which previous UDRP panels have also found to equate to a lack of rights or legitimate interests. See Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855, in which the panel concluded that “the Respondent possesses no entitlement to use the name or the words in the Complainant’s marks and infers […] from the “Private Whois” registration that it is not known by such name. There is no evidence of the Respondent ever being commonly known by the name or words now included in the disputed domain name”.

The Complainant submits that the Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The Respondent was previously using the disputed domain name to direct Internet users to a website where it purported to pass itself off as the Complainant, whilst appearing to offer mining and mineral production and trading services. Specifically, the Respondent listed the Complainant’s physical Belgian address on its contact page. The Complainant contends that the Respondent is using this information, clearly associated with Complainant, as a means of deceiving Internet users into believing that the website is associated with Complainant. As previous UDRP panels have held, the Respondent’s attempt to pass the disputed domain name off as the Complainant’s is, in itself, evidence of the fact that the Respondent does not have rights or legitimate interests in the disputed domain name.See JSP Limited v. Domain Administrator, See PrivacyGuardian.org / Andrei Costa, WIPO Case No. D2020-1495, which found that the Respondent’s inclusion of the Complainant’s physical address on its website supported a finding of no rights or legitimate interests.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) the respondent has registered the 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;

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. WIPO Overview 3.0, section 3.1.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

The Complainant and its ARCELOR trademark are known internationally. The Complainant has marketed and sold its goods and services using its ARCELOR trademark since 2006, which significantly predates the Respondent’s registration of the disputed domain name on November 24, 2020. At the time of registration of the disputed domain name, therefore, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that registration of a domain name containing a well-known trademark constitutes bad faith per se. In addition to the numerous trademarks filed and registered in connection with the Complainant’s business prior to the Respondent’s registration of the disputed domain name, the Complainant is one of the world’s largest steel production and mining companies, producing over 89 million tons of crude steel globally in 2019. Further, Internet searches across the leading search engines for “Arcelor mining” returns multiple links referencing the Complainant and its business. See Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517, which stated that “given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”.

Previous UDRP panels have 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 WIPO Overview 3.0, section 3.1.4. Previous UDRP panels have held that the “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

By registering a domain name that consists solely of the Complainant’s ARCELOR trademark and a related term “mining”, which describes the industry in which the Complainant works, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. As the disputed domain name contains the Complainant’s ARCELOR trademark in its entirety, with the mere addition of the related term “mining”, “it defies common sense to believe that Respondent coincidentally selected the precise domain [name] without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The Respondent creates a likelihood of confusion with the Complainant and its trademarks by listing the Complainant’s Belgian address at the disputed domain name’s previous website, with the Respondent then attempting to profit from such confusion by seeking to offer services that compete with the Complainant’s own offerings. As such, the Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by the disputed domain name and its website would cause consumers to believe the Respondent is somehow associated with the Complainant when, in fact, it is not.

The Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and the Respondent is using the notoriety of the Complainant’s trademarks to improperly increase traffic to the website listed at the disputed domain name for the Respondent’s own commercial gain. It is well established that such conduct constitutes bad faith. See Premier Asset Management Limited v. Rashan Cummings, WIPO Case No. D2020-2615, which found bad faith where a respondent’s website contained the complainant’s address since “it may reasonably be concluded that the website to which the disputed domain name resolves is designed to impersonate the Complainant with intent to deceive visitors into believing, erroneously, that they have reached an authentic website of the Complainant”.

The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use because the disputed domain name is confusingly similar to the Complainant’s trademarks. In addition, the previous website at the disputed domain name is purporting to offer services that compete with the Complainant’s own offerings.

Further, the company listed at the disputed domain name’s previous website, “Arcelor Mining Investment Co” does not exist, which is further evidence of the Respondent’s bad faith. See LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, WIPO Case No. D2019-0245, which found that the respondent registered the domain name in bad faith for the purpose of unfairly competing and unfairly disrupting the business of the Complainant’s site and to attract customers and potential customers of the Complainant for commercial gain.

The disputed domain name currently resolves to an inactive site and is not being actively used, though previous UDRP panels have noted that the word bad faith “use” in the context of paragraph 4(a)(iii) of the Policy does not require a positive act on the part of the Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which stated that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”). In this case, the disputed domain name is confusingly similar to the Complainant’s well-known trademarks, and the Respondent is currently not making any use of the disputed domain name. However, this does not prevent a finding of bad faith registration and use under the doctrine of passive holding (see WIPO Overview 3.0 , section 3.3 ). See also DCI S.A. v. Link Commercial Corp., WIPO Case No. D2000-1232, which concluded that the respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy.

The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which previous UDRP panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc. and Sabatino Andreoni, WIPO Case No. D2003-0230. See also WIPO Overview 3.0 , section 3.6 :“[p]anels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <arcelormining.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: March 5, 2021