Arcelormittal v Fabio Vlad

WIPO Case No. D2024-0628

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Arcelormittal v. Fabio Vlad

Case No. D2024-0628

1. The Parties

The Complainant is Arcelormittal, Luxembourg, represented by Nameshield, France.

The Respondent is Fabio Vlad, Germany.

2. The Domain Name and Registrar

The disputed domain name <arcleormital.com> is registered with GMO Internet, Inc. d/b/a Discount-

Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12,

2024. On February 12, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On February 13, 2024, 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 (REDACTED FOR PRIVACY) and contact

information in the Complaint. The Center sent an email communication to the Complainant on February 19,

2024, 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

February 20, 2024.

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 March 4, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was March 24, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on March 25, 2024.

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The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 26, 2024. 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 has submitted evidence that it is the owner of the international trademark

ARCELORMITTAL, with registration number 947686, dated August 3, 2007. The trademark is registered for

goods and services in classes 6, 7, 9, 12, 19, 21, 39, 40, 41, and 42, and it designates a number of

jurisdictions including the European Union.

The disputed domain name was registered on February 6, 2024. The disputed domain name resolves to an

inactive webpage, and the Domain Name System (“DNS”) servers of the disputed domain name contain

active mail exchange (“MX”) records.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain name.

The Complainant is the largest steel producing company in the world and is the market leader in steel for use

in automotive, construction, household appliances and packaging with 59 million tons crude steel made in

2022. The Complainant holds sizeable captive supplies of raw materials and operates extensive distribution

networks. The Complainant is the owner of the trademark ARCELORMITTAL since August 3, 2007.

The Complainant also holds an important domain name portfolio, including the domain name

<arcelormittal.com> registered since January 27, 2006. The disputed domain name was registered on

February 6, 2024 and is active with MX servers configured.

The disputed domain name is confusingly similar to the trademark ARCELORMITTAL. The obvious

misspelling of the trademark, i.e., the inversion of the letter “e” and “l” and the deletion of the letter “t”, is a

characteristic typosquatting practice intended to create confusing similarity with a trademark. The slight

spelling variation does not prevent the disputed domain name from being confusing similar to the

Complainant’s trademark. See ArcelorMittal (Société Anonyme) v. Name Redacted, WIPO Case

No. D2020-3457 (<arcelormltal.com>) and WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), section 1.9 which states that “[a] domain name which

consists of a common, obvious, or [intentional] misspelling of a trademark is considered by panels to be

confusingly similar to the relevant mark for purposes of the first element”. Consequently, the Complainant

maintains that the disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate

interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights

or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to

have satisfied paragraph 4(a) (ii) of the UDRP.

The WhoIs information is not similar to the disputed domain name and the Respondent is not known by the

disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests

in respect of the disputed domain name and the Respondent is not related in any way with the Complainant.

The Complainant 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.

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The misspelling of the trademark ARCELORMITTAL was intentionally designed to be confusingly similar with

the Complainant’s trademark, which is evidence of bad faith. The disputed domain name is a typosquatted

version of the trademark ARCELORMITTAL. Typosquatting is the practice of registering a domain name in

an attempt to take advantage of Internet users’ typographical errors and can evidence that a respondent

lacks rights and legitimate interests in the disputed domain name. The disputed domain name is not actively

used for a website. The Complainant contends that the Respondent did not use the disputed domain name

or has no demonstrable plan to use the disputed domain name. Thus, in accordance with the foregoing, the

Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed

domain name.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s

distinctive trademark ARCELORMITTAL, which is widely known. Previous panels have confirmed the

notoriety of the trademark. The Complainant’s trademark was registered prior to the registration of the

disputed domain name and is widely known. Thus, given the distinctiveness of the Complainant's trademark

and reputation, it is reasonable to infer that the Respondent registered the disputed domain name with full

knowledge of the Complainant’s trademark. See ArcelorMittal SA v. Tina Campbell, WIPO Case

No. DCO2018-0005 in which the panel stated “The Panel finds that the trademark ARCELORMITTAL is so

well-known internationally for metals and steel production that it is inconceivable that the Respondent might

have registered a domain name similar to or incorporating the mark without knowing of it”.

Furthermore, the disputed domain name resolves to an inactive web page. The Complainant contends that

the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not

possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the

Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer

protection legislation, or an infringement of the Complainant’s rights under the trademark law. As prior

panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website,

may be evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear

Marshmallows, WIPO Case No. D2000-0003 and CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case

No. D2000-0400. The disputed domain name’s active MX servers indicate that the disputed domain name

may be actively used for fraudulent email scheme purposes. Considering the above, the Complainant

maintains that Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(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 the disputed domain name; and

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

A. Identical or Confusingly Similar

The test for confusing similarity involves a reasoned but relatively straightforward comparison between the

Complainant’s trademark and the disputed domain name. See WIPO Overview 3.0, section 1.7.

From the submitted evidence, it is clear that the Complainant is the owner of the registered trademark

ARCELORMITTAL, and the Panel concludes that the Complainant has shown rights in respect of a

trademark or service mark for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1. Although

the letters “e” and “l” are in reverse order and the letter “t” is omitted, the Panel finds that the Complainant’s

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trademark is readily recognizable in the disputed domain name. Therefore, the Panel concludes that the

disputed domain name is confusingly similar to the Complainant’s trademark. See WIPO Overview 3.0,

section 1.9.

In light of the above, the Panel finds that the Complainant has proven the requirement under

paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the

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

name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i)        the Respondent uses or has made 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 prior

to the dispute; or

(ii)       the Respondent is commonly known by the disputed domain name, even if the Respondent has not

acquired any trademark rights; or

(iii)      the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registration for ARCELORMITTAL predates the Respondent’s registration of

the disputed domain name. The Complainant has not licensed, approved, or in any way consented to the

Respondent’s registration and use of the trademark in the disputed domain name. There is no evidence in

the case file indicating that the Respondent has used or made any preparation to use the disputed domain

name in connection with a bona fide offering of goods or services prior to the dispute.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of proving a negative, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or

legitimate interests, the burden of production on this element shifts to the respondent to come forward with

relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0,

section 2.1.

The disputed domain name resolves to an inactive page. However, the Complainant has submitted evidence

demonstrating that the DNS servers of the disputed domain name contain active MX records. Hence, the

Respondent can use the disputed domain name for sending and receiving emails. Although given the

opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not

submitted any evidence indicating that it is the owner of any trademark or that it is commonly known by the

disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a

legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to

misleadingly divert consumers or to tarnish the trademark.

The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to

paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain

name. Thus, there is no evidence in the case that refutes the Complainant’s prima facie case, and the Panel

concludes that the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i)        circumstances indicating the disputed domain name was registered or acquired primarily for the

purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a

trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented

out-of-pocket costs directly related to the disputed domain name; or

(ii)       circumstances indicating that the disputed domain name was registered in order to prevent the owner

of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a

pattern of such conduct; or

(iii)      circumstances indicating that the disputed domain name was registered primarily for the purpose of

disrupting the business of a competitor; or

(iv)      circumstances indicating that the disputed domain name has intentionally been used in an attempted

to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by

creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation,

or endorsement of the website or location or of a product or service on that website or location.

As previously mentioned, the Complainant’s trademark registration for ARCELORMITTAL predates the

registration of the disputed domain name. Given the composition of the disputed domain name, the Panel

finds it inconceivable that the Respondent coincidentally registered the disputed domain name without any

knowledge of the Complainant and its trademark.

Panels have found that the non-use of a domain name, such as a blank page, would not prevent a finding of

bad faith under the doctrine of passive holding. Although 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: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of

the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,

and (iii) the respondent’s concealing its identity or use of false contact details. See WIPO Overview 3.0,

section 3.3.

The Panel notes that the Complainant’s trademark is considered distinctive and well known according to

UDRP decisions cited by the Complainant. The obvious misspelling of the Complainant’s distinctive

trademark indicates that the disputed domain name was intentionally registered by the Respondent to

mislead the public by giving an overall impression that the disputed domain name is associated with the

Complainant. Having reviewed the available record, the Panel finds that the Respondent’s use of the

disputed domain name for an inactive website does not prevent a finding of bad faith, particularly when

considering the distinctiveness and reputation of the Complainant’s trademark, and the composition of the

disputed domain name. Other factors to weigh in the balance include the fact that presence of active MX

records which enables email communications based on the disputed domain name, and the fact that the

Respondent has not responded to the Complainant’s contentions. Given the circumstances of this case, the

passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

In the absence of any evidence to the contrary, the Panel is persuaded on the balance of probabilities that

the Respondent has registered and used the disputed domain name in bad faith with the Complainant’s

trademark in mind. Therefore, the Panel concludes that the Complainant has established the third element

of the Policy.

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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 <arcleormital.com> shall be transferred to the Complainant.

/Johan Sjöbeck/

Johan Sjöbeck

Sole Panelist

Date: April 5, 2024