WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. Surejogi Group Limited

Case No. D2021-1129

1. The Parties

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

Respondent is Surejogi Group Limited, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <adityamittal.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2021. On April 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on May 20, 2021.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on May 26, 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

Complainant is one of the world’s largest steel producers. It is the proprietor of numerous trademarks that incorporate its MITTAL mark, including the following:

- United Kingdom Trademark No. UK00903975786 for MITTAL (word mark), registered on December 1, 2005, for goods and services in classes 6 and 40;
- European Union Trademark No. 003975786 for MITTAL (word mark), registered on December 1, 2005, for goods and services in classes 6 and 40;
- International Trademark Registration No. 947686 for ARCELORMITTAL (word mark), registered on August 3, 2007, for goods and services in classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42.

The Complaint also references United Kingdom Trademark No. UK00002169587 for MITTAL (word mark), registered on July 28, 2001 in numerous classes. This registration is no longer in force.

The disputed domain name was registered on April 12, 2002. It resolves to a parking page featuring sponsored links.

The record contains copies of Complainant’s cease-and-desist letters to Respondent dated March 4, 2020; March 11, 2020; and March 18, 2020. The record does not contain any reply.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that Mittal Steel Technologies Limited was founded in 1977 by Lakshmi Mittal, father of Complainant’s CEO, Aditya Mittal. After a merger, it formed ArcelorMittal, which is headquartered in Luxembourg and is currently the world’s leading steel and mining company. Complainant employs over 191,000 employees and sells to customers in 160 countries. Complainant is listed on major global stock exchanges. It has received numerous awards and recognitions. The MITTAL mark is not a word that is part of common parlance, and Complainant has invested considerable resources in promoting the MITTAL mark. Complainant operates its business website at “wwwarcelormittal.com” and has a large Internet presence.

Complainant states that it is the owner of the MITTAL and ARCELORMITTAL marks. The term “aditya” is closely linked and associated with Complainant’s brand and mark. The disputed domain name was registered in 2002, prior to the registration of Complainant’s mark in 2005. However, the time of registration of rights will not prevent finding of confusing similarity.

Under the second element, Complainant states that Respondent is not sponsored by or affiliated with Complainant in any way, nor is Respondent commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect Internet users to websites featuring links to third-party websites, some of which compete directly with Complainant. Complainant first used the MITTAL mark in commerce as of 1977 and filed its previously registered MITTAL mark with the United Kingdom Intellectual Property Office (“UKIPO”) in 1998, in both cases predating the registration of the disputed domain name. The doctrine of laches should not apply.

Under the third element, Complainant states that its MITTAL and ARCELORMITTAL marks are known internationally and that Complainant has traded since 1977. The disputed domain name consists of Complainant’s MITTAL mark and the name of Complainant’s CEO, demonstrating Respondent’s familiarity with Complainant’s brand and business. Complainant’s CEO, Aditya Mittal, and Complainant’s MITTAL mark are closely linked. Complainant was one of the world’s largest steel producers by volume even before the registration of the disputed domain name. Respondent did not reply to Complainant’s cease-and-desist letters, instead, Respondent renewed the disputed domain name registration and began to host a website featuring pay-per-click links.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the MITTAL mark through registrations in the United Kingdom and European Union. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

Section 1.7 of WIPO Overview 3.0 provides: “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.”

In comparing Complainant’s MITTAL mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s MITTAL mark in its entirety. Complainant’s trademark is recognizable within the disputed domain name, and the addition of the term “aditya” does not prevent the confusing similarity. For purposes of the first element, Complainant’s registered mark supplies the necessary standing. See Arcelormittal v. info@setrillonario.com, WIPO Case No. D2010-1417.

It is the well established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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 circumstances stated in the Complaint and evidence set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s MITTAL mark together with the term “aditya”, the name of Complainant’s CEO, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Such use does not establish rights or legitimate interests in the domain name. See, for example, Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (<adobeacrobat.com> and <acrobatreader.com>).

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. The circumstances of the case, in particular, the use of pay-per-click advertisements, prevent the inference of any rights or legitimate interests on the part of Respondent. See, for example, Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp, WIPO Case No. D2010-1404.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that 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 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 documented out-of-pocket costs directly related to the domain name; or

(ii) 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 Respondent has engaged in a pattern of such conduct; or

(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Proving the third element poses the greatest challenge to Complainant. First, the disputed domain name was registered in 2002, but the MITTAL mark currently in force was registered only from 2005. Second, the disputed domain name is not identical to Complainant’s mark. Indeed, the addition of the term “aditya” targets Complainant’s CEO and therefore arguably does not target Complainant as a legal entity. While the registration supplied the necessary standing to satisfy the first element above, the Panel must consider whether Complainant’s rights do, indeed, provide a basis for a bad faith finding. Finally, the Complaint has been filed nearly 20 years after the registration of the disputed domain name. The Panel will consider each of these issues in turn.

It is not disputed Complainant owned a United Kingdom registration for MITTAL from 2001, but this right is no longer in force. However, this trademark was in force at the time Respondent registered the disputed domain name. Moreover, Respondent has not challenged Complainant’s assertions that use of the mark dates from 1977, and the Panel finds that, on balance, Complainant has demonstrated that its rights in the MITTAL mark predate the registration of the disputed domain name. The record does not contain any evidence of earlier good faith use of the disputed domain name by Respondent. The Panel finds rather that the most likely explanation for the 2002 registration of the disputed domain name was Respondent’s anticipation that the son of Complainant’s founder, who was at the time already employed by Complainant’s predecessor, would in time become even more prominent. Under such facts, this and previous panels have found bad faith. See, for example, Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Atkien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, WIPO Case No. D2015-1113, and WIPO Overview 3.0, section 3.8.2.

The next issue is the extent to which rights in the MITTAL mark provide Complainant for a basis of proving bad faith in the registration and use of a domain name containing Complainant’s mark, yet identical to the personal name of Complainant’s CEO. No personal trademark rights in “Aditya Mittal” have been asserted by Complainant and, on the facts available, it is not likely that such an assertion could have succeeded. This Panel notes the remarks made by the panel in Vanisha Mittal v. info@setrillonario.com, WIPO Case No. D2010-0810, a case concerning another Mittal family member, here quoted in relevant part:

“Before leaving the case, the Panel notes that this decision relates only to a claim made by Vanisha Mittal, based on alleged personal rights in her name which she has failed to substantiate on the evidence presented in these Policy proceedings. […] The decision says nothing about any rights which the company ArcelorMittal might or might not be able to establish under the Policy, and in particular does not preclude any claim being brought by that company under the Policy with respect to the <vanishamittal.com> domain name, if it should choose to bring one.”

Complainant, in relying on its rights in the MITTAL mark, has, on balance, proved that Respondent engaged in bad faith in registration and use of the disputed domain name. The circumstances indicate that Respondent was aware of Complainant’s rights in the MITTAL mark, and likely registered the domain name in anticipation of some future benefit accruing from such a registration. The use of the disputed domain name to resolve to a site featuring pay-per-click links incorporating Complainant’s MITTAL and ARCELORMITTAL marks, but leading Internet visitors to Complainant’s competitors is not consistent with good faith and demonstrates Respondent’s use of the disputed domain name for financial benefit generated by the visibility of Complainant’s mark. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057.

Complainant has proved its rights in the MITTAL mark, and the Panel finds that the disputed domain name is confusingly similar to this well-established mark. The fact that the domain name is identical to a personal name is further evidence of bad faith on the part of Respondent. Respondent has not supplied information concerning a possible good-faith registration or use of the disputed domain name and the Panel does not find any such good-faith conduct plausible.

Regarding the timing of the filing, consistent with the approach taken by previous WIPO panels and set forth in section 4.17 of WIPO Overview 3.0, the Panel finds that the delay in filing does not automatically prejudice Respondent. Had Respondent offered any explanation for the good-faith registration and use of the disputed domain name, the Panel might have reached a different conclusion. On the basis of the record available, however, the Panel sees only that the domain name is confusingly similar to the Complainant’s MITTAL trademark, identical to the CEO of Complainant, and is used for pay-per-click links. On such facts, the Panel finds that the delay in filing does not affect a finding of bad faith. See, for example, Tom Cruise V. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.

Accordingly, the Panel finds that Complainant has established the third element under paragraph 4(a) 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, <adityamittal.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: June 8, 2021