Decision for dispute CAC-UDRP-104827

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the registrant of the international trademark registration No. 947686, “ARCELORMITTAL”, registered on August 3, 2007, for goods and services in classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42.

The disputed domain name was registered by the Respondent on August 29, 2022.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant states that it is the largest steel company in the world and that it is the market leader in steel for use in automotive, construction, household appliances and packaging.

The Complainant adds that it holds sizeable captive supplies of raw materials and operates extensive distribution networks.

The Complainant points out that it is the owner of the international trademark "ARCELORMITTAL", registered before the registration of the disputed domain name.

The Complainant submits that it owns an important domain names portfolio, including the domain name <arcelormittal.com> registered since January 27, 2006.

The Complainant notes that the disputed domain name was registered on August 29, 2022 and is not used.

The Complainant considers that the disputed domain name is confusingly similar to its trademark "ARCELORMITTAL".

The Complainant notes that the disputed domain name includes its trademark "ARCELORMITTAL" in its entirety.

The Complainant observes that the addition of the letters “CA” and of the dash is not sufficient to escape the finding that the domain name is confusingly similar to the trademark "ARCELORMITTAL".

The Complainant asserts that the above-mentioned addition does not change the overall impression of the designation as being connected to the Complainant’s trademark "ARCELORMITTAL". It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and the domain name associated.

The Complainant contends that the addition of the top-level domain ".COM" does not change the overall impression of the designation as being connected to the Complainant’s trademark.

The Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and it is not related in any way with the Complainant.

The Complainant asserts that the Respondent is not known as the disputed domain name.

The Complainant clarifies that it does not carry out any activity for, nor has any business with the Respondent.

The Complainant underlines that neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark "ARCELORMITTAL", or apply for registration of the disputed domain name.

The Complainant notes that the disputed domain name is not actively used.

The Complainant contends that the failure to make use of a confusingly similar domain name shows a lack of rights and legitimate interests.

Therefore, the Complainant contends that the Respondent has no right or legitimate interest in respect of the disputed domain name.

The Complainant observes that past panels have confirmed the notoriety of the widely known trademark "ARCELORMITTAL".

The Complainant points out that, given the distinctiveness of the Complainant's trademarks and the Complainant's reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark.

The Complainant adds that inactively holding a confusingly similar domain name shows bad faith. 

Therefore, the Complainant considers that the Respondent has registered the disputed domain name and is using it in bad faith.

No administratively compliant Response has been filed. 

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

In accordance with paragraph 4(a) of the Policy, in order to obtain the transfer of the disputed domain name, the Complainant has to demonstrate 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 disputed domain name; and

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

IDENTICAL OR CONFUSINGLY SIMILAR

The first requirement that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark or service mark.

There are two elements of this test: the Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark or service mark.

The Complainant has proven ownership of the registered trademark “ARCELORMITTAL”, identified in section "Identification of rights" above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trademark.

The disputed domain name differs from the Complainant’s trademark “ARCELORMITTAL” only by the addition of the term "CA" followed by the hyphen, as a prefix, and of the top-level domain ".COM", as a technical suffix.

In the present case the term "CA" (which could be considered as the abbreviation of the geographical term "Canada" under ISO 3166-1 alpha-2 code), preceding the hyphen and the Complainant's trademark, has no impact on the distinctive part “ARCELORMITTAL”. It is well established that, where the relevant trademark is recognizable within the domain name, the addition of geographical terms would not be sufficient to prevent a finding of confusing similarity (for example CAC case No. 104654). Even not considering the term "CA" as a geographical term, the reasoning would have the same result, because it is a common view that where a trademark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the trademark (for example WIPO case No. D2017-1266). Moreover, where the relevant trademark is recognizable within the domain name, the addition of a word would not prevent a finding of confusing similarity (for example WIPO case No. D2022-0073).

Furthermore, it is well accepted that the hyphen is not relevant in the confusing similarity test (for example WIPO case No. D2016-0676).

It is also well established that the top-level domain, in this case ".COM", may generally be disregarded in the confusing similarity test (for example WIPO case No. D2016-2547).

Therefore, the Panel considers that the disputed domain name is confusingly similar to the Complainant's trademark “ARCELORMITTAL”.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

RIGHTS OR LEGITIMATE INTERESTS

The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent] [has] acquired no trademark or service mark rights; or

(iii) [the Respondent] [is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

This is a non-exhaustive list of circumstances in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement falls on the Complainant. UDRP panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”.

Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent and the burden of proof on this requirement shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in a domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

In particular, the Complainant states that:

- the Respondent is not known as the disputed domain name;

- the Respondent is not related in any way with the Complainant;

- it does not carry out any activity for, nor has any business with the Respondent;

- neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark “ARCELORMITTAL”, or apply for registration of the disputed domain name;

- the disputed domain name is not actively used;

- the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use.

In the absence of a Response, there is no indication in the present case that the Respondent is commonly known by the disputed domain name.

Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under paragraph 4(c) of the Policy or other evidence of rights or legitimate interests in the disputed domain name.

The Respondent does not appear to make any legitimate non-commercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is not actively used and resolves to a webpage where the wording "Website disabled" appears.

Taking into account that the Respondent is not known as the disputed domain name, that the Complainant does not carry out any activity for, nor has any business with the Respondent, that the Complainant has not authorized or licensed the Respondent to use the disputed domain name or to apply for registration of it, that the disputed domain name is not actively used, the Panel cannot imagine any possible legitimate justification for this use, and the Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

BAD FAITH

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that [the Respondent] [has] registered or [has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration 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 [disputed] domain name; or

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

(iii) [the 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, [the Respondent] [has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site 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] web site or location or of a product or service on [the Respondent's] web site or location.

The Panel, on the basis of the evidence presented, agrees with the Complainant's contentions that the disputed domain name was registered in bad faith and that it has been used in bad faith.

The Panel observes that it is well established that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative. Therefore, even where a complainant is not able to demonstrate the literal application of one of the above-mentioned scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behaviour detrimental to the complainant’s trademark would also satisfy the complainant’s burden.

Indeed, taking into account the distinctiveness and reputation of the trademark "ARCELORMITTAL", which long predated the disputed domain name, it is inconceivable that the Respondent was not aware of the Complainant's rights in the trademark "ARCELORMITTAL" when registering the disputed domain name. The Respondent should have performed an internet search, aimed at excluding possible conflicts with third party rights. Therefore, the Respondent has failed to carry out such a search and has to be considered responsible for the resulting abusive registration under the concept of wilful blindness (for example WIPO Case No. D2018-1182). Consequently, this circumstance is considered by the Panel as evidence of bad faith.

Furthermore, the Panel points out that it is well-established that non-use of a domain name would not prevent finding of bad faith (for example WIPO Case No. D2019-1980).

The Panel observes that if the Respondent had legitimate purposes in registering and using the disputed domain name it would have filed a response in this proceeding.

The Panel, having taken into account the notoriety of the widely known trademark "ARCELORMITTAL", the Respondent's knowledge of the "ARCELORMITTAL" trademark at the time of the disputed domain name’s registration, that no response to the complaint has been filed, and the non-use of the disputed domain name, considers that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.