WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal (SA) v. Mortaza Heydary
Case No. DIR2018-0020
1. The Parties
Complainant is Arcelormittal (SA) of Luxembourg, Luxembourg, represented by Nameshield, France.
Respondent is Mortaza Heydary of Nishapur, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <mital.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2018. On December 18, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 19, 2018, IRNIC 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 .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 Respondent of the Complaint, and the proceedings commenced on January 15, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2019. On February 5, 2019, the Center notified Respondent’s default.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 13, 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
Complainant is a legal entity organized under the laws of Luxembourg that is the world’s largest steel producing company with operations in more than 60 countries and the leading supplier of quality steel products in all major markets including automotive, construction, household appliances and packaging.
Complainant has evidenced to be the registered owner of the following International (IR) trademark with protection, inter alia, for the territory of the Islamic Republic of Iran:
- Word mark MITTAL, World Intellectual Property Organization (WIPO), Registration No.: 1198046, Registration Date: December 5, 2013, Status: Active.
Furthermore, Complainant operates a website at “www.arcelormittal.com” in order to promote its products and business.
Respondent, who according to the WhoIs information is a resident of the Islamic Republic of Iran, has registered the disputed domain name on or before December 12, 2018. It appears from the Case File that up until the rendering of this decision, the disputed domain name has neither been actively used on the Internet nor in any other way.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant submits that the disputed domain name is confusingly similar to its MITTAL trademark as the deletion of the letter “T” is not sufficient to escape such finding, and that the country-code Top Level Domain (ccTLD) “.ir” is not in contrast thereto either. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) given Respondent’s name as it is reflected in the WhoIs information, Respondent is neither commonly known by the disputed domain name nor has it acquired any trademark rights in the term “Mital”, (2) Respondent is neither affiliated with Complainant nor authorized to use its MITTAL trademark, and (3) the disputed domain name apparently has been inactive since its registration and, therefore, has neither been used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use purpose. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) the disputed domain name is a typo-squatted version of Complainant’s MITTAL trademark, (2) given the distinctiveness of Complainant’s MITTAL trademark, Respondent must have registered the disputed domain name in knowledge of it, and (3) the incorporation of a famous trademark in a domain name that is inactive is considered by numerous Uniform Domain Name Dispute Resolution Policy (“UDRP”) panels as bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) That the disputed domain name has been registered or is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <mital.ir> is confusingly similar to the MITTAL trademark in which Complainant has rights.
The disputed domain name incorporates the MITTAL trademark in its entirety with the simple omission of one letter “T”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). 1 The fact that the disputed domain name obviously includes a simple misspelling of Complainants’ MITTAL trademark is not at all inconsistent with such finding of confusing similarity. It is well accepted among UDRP panelists that the first element functions primarily as a standing requirement and that it is sufficient to pass the confusing similarity test if the dominant feature of the relevant trademark is still recognizable in the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (WIPO Overview 3.0, section 1.11), that the applicable Top Level Domain in a domain name is generally viewed as a standard registration requirement and as such disregarded under the first element (identity or confusing similarity) test.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s MITTAL trademark or any variations thereof, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with term “Mital”. Finally, Respondent obviously has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. It appears from the Case File that up until the rendering of this decision, the disputed domain name has neither been actively used on the Internet nor in any other way. In this context, the Panel notes that UDRP panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.)
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered or Used in Bad Faith
The Panel is, therefore, finally asked to decide whether or not Respondent has registered or is using the disputed domain name in bad faith.
As a general rule, bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark with a catalogue of non-exclusive scenarios constituting evidence of such bad faith set forth by paragraph 4(b) of the UDRP, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 domain name; or
(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; or
(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 on-line 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.
Also, UDRP panelists have found that the nonuse of a domain name (including a blank or “coming soon” page to which the domain name redirects) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). 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 e.g.: (1) the degree of distinctiveness or reputation of complainant’s mark, (2) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (3) the respondent’s concealing its identity or use of false contact details and (4) the implausibility of any good faith use to which the domain name may be put.
Given that Respondent has defaulted, the burden of proof whether or not Respondent has registered or is using the disputed domain name in bad faith still rests with Complainant who is not by itself deemed to have prevailed (WIPO Overview 3.0, section 4.3). The applicable standard of proof is the “balance of probabilities” meaning that e.g. Complainant should demonstrate to the Panel’s satisfaction that it is more likely than not that a claimed fact is true (WIPO Overview 3.0, section 4.2).
In the present case, Complainant contends only incidentally that its MITTAL trademark, which enjoys protection also in the Islamic Republic of Iran where Respondent apparently resides, is famous; Complainant, however, has not provided any supportive evidence whatsoever in that regard, especially not as the territory of the Islamic Republic of Iran is concerned. Also, Complainant claims that the disputed domain name <mital.ir> is a typo-squatted version of Complainant’s MITTAL trademark and as such indicating bad faith; Respondent, however, fails to undermine this line of argumentation in any way, namely as to why the term “Mital” specifically aims at targeting Complainant’s MITTAL trademark and not any other term. Respondent, in turn, has not challenged Complainant’s submissions at all and has failed to submit any explanation as to why it needed to rely on the inclusion of the term “Mital” in the disputed domain name, neither by making use of the disputed domain name in a manner demonstrating good faith whatsoever nor by filing a response.
Against the background of such limited submissions by both parties to this case, the Panel has undertaken - within its general powers set forth by paragraph 10 of the Rules - some independent Internet research according to which it is reasonable to believe that e.g.: (1) search engine results for the term “Mittal” almost exclusively point to Complainant and its ArcelorMittal Group of Companies, (2) search engine results for the term “Mital” less point to Complainant, but still to its CEO Lakshmi Mittal, (3) Complainant has no presence of its own, but still considerable business in the territory of the Islamic Republic of Iran e.g. through recently increased imports, (4) it is at least not evident that the terms “Mittal” or “Mital” have a meaning e.g. in the Persian language that would make a good faith use of the disputed domain name by Respondent, independent from Complainant’s trademarks and business, somehow plausible.
Therefore, given that the disputed domain name is confusingly similar with Complainant’s MITTAL trademark, that Complainant and its ArcelorMittal Group of companies are obviously well-known and represented through considerable business also in the Islamic Republic of Iran, and that the term “Mital” as it is reflected in the disputed domain name obviously does not refer to Respondent, but rather, if anything, to the family name of Complainant’s CEO, the Panel is willing to accept Complainant’s line of argumentation that Respondent most likely was aware of Complainant and its MITTAL trademark when registering the disputed domain name. Moreover, the term “Mital” apparently has no concrete meaning e.g. in the Persian language that would explain as to why Respondent needed to rely on this term as part of a domain name, which in turn allows to support the finding that the disputed domain name indeed is a typo-squatted version of Complainant’s famous MITTAL trademark. Finally, the fact alone that Respondent so far has not yet made use the disputed domain name does not weigh much importance in the eyes of the Panel since it was registered presumably only very recently on December 18, 2018. Still, the Panel finds it more likely than not given the overall circumstances to this case that Respondent indeed aimed at targeting Complainant’s MITTAL trademark and at profiting from its reputation when registering the disputed domain name. This alone is sufficient under the irDRP - in contrast to the UDRP - to find for bad faith within the larger meaning of paragraph 4(b) of the Policy.
Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <mital.ir> be transferred to Complainant.
Stephanie G. Hartung
Date: February 26, 2019
1 The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and UDRP, finds it appropriate to apply UDRP jurisprudence, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. See Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian, WIPO Case No. DIR2018-0003.