ADMINISTRATIVE PANEL DECISION
Arcelormittal (SA) v. Masood Saghafy
Case No. DIR2018-0021
1. The Parties
Complainant is Arcelormittal (SA) of Luxembourg, Luxembourg, represented by Nameshield, France.
Respondent is Masood Saghafy of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <mittal.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 5, 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 May 27, 2017. 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 contends that its MITTAL trademark relates to its company name and further trademark ARCELORMITTAL as well as to the name of its CEO Lakshmi Mittal.
Complainant submits that the disputed domain name is identical with its MITTAL trademark and that the country-code Top Level Domain (“ccTLD”) “.ir” does not alter such finding. 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 “Mittal”, (2) Respondent is neither affiliated with Complainant nor authorized to use its MITTAL trademark, (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) given the distinctiveness of Complainant’s MITTAL trademark, Respondent must have registered the disputed domain name in knowledge of it, (2) 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 <mittal.ir> is identical to the MITTAL trademark in which Complainant has rights.
The disputed domain name consists exclusively of Complainant’s MITTAL trademark. Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11), that the applicable Top Level Domain in a domain name (here the ccTLD “.ir” for Islamic Republic of Iran) is viewed as a standard registration requirement and as such disregarded under the first element (identity/confusing similarity) test. 1
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, 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 the name “Mittal”. Finally, Respondent 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 finally holds that the disputed domain name was registered and/or is being used by Respondent in bad faith.
As a general rule, 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.: the degree of distinctiveness or reputation of complainant’s mark, the failure to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
In the present case, Complainant contends, and Respondent has not challenged these contentions, that its MITTAL trademark, which enjoys protection also in the Islamic Republic of Iran where Respondent apparently resides, is famous and distinctive. Given that the disputed domain name is identical with Complainant’s MITTAL trademark and that the term “Mittal” obviously does not refer to Respondent, but rather 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. Respondent, in turn, failed to submit any explanation as to why it still needed to rely on the inclusion of Complainant’s MITTAL trademark in the disputed domain name, which Respondent registered already back in May 2017, or even before, and held it passively ever since for now almost two years. Also, this Panel has undertaken - within its general powers set forth by paragraph 10 of the Rules - some independent Internet research which revealed no indication whatsoever that the term “Mittal”, apart from being the name of Complainant’s CEO, has a meaning e.g. in the Persian language that would make a good faith use of the disputed domain name by Respondent at least plausible. Accordingly, 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, thus acted in bad faith within the larger meaning of paragraph 4(b) of the Policy.
Therefore, the Panel finds 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 <mittal.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 the 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.