Complainant argues that given the distinctiveness and reputation of its trademark, Respondent could not ignore Complainant’s prior rights at the time of the registration of the disputed domain name.
Case law has previously held that when a respondent registered a domain name confusingly similar to the complainant’s well-known trademark, it was evidence that the respondent registered this domain name in bad faith see Intesa Sanpaolo S.p.A v. Abayomi Ajileye, Case No. 102396 (CAC March 19, 2019) “This Panel highlights that, according to paragraph 2 of the Policy, it is the Respondent’s responsibility to determine whether the domain name registration infringes or violates third party's rights (“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”). By registering the disputed domain name confusingly similar with the Complainant’s well-known mark, the Respondent has violated, inter alia, the cited provision of the Policy.”.
The Panel acknowledges the well-known nature of the “ARCELORMITTAL” trademark in the field of steel production and commerce for use in automotive and construction. Therefore, Respondent could not ignore Complainant’s rights at the time of registration.
The Panel concludes that Respondent registered the disputed domain name <arcelormittal.cam> in bad faith.
As regards use of the disputed domain name, Complainant further asserts that Respondent did not use the disputed domain name, a mere parking page amounting to passive holding. The Panel agrees that the default parking page set up on the disputed domain name does not prove any intention or effort to use the disputed domain name, and can in this case be considered as passive holding.
Previous panels have found such behaviour as constituting use in bad faith part of a domain name, see Tesla Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 8, 2000, “The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are: (i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name, (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the 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 trademark law. In light of these particular circumstances, the Administrative Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by Respondent.”.
Finally, Complainant outlines that MX servers are configured, which suggests that the disputed domain name may be actively used for email purposes. Previous Panels found that this behaviour constituted evidence of Respondent’s use in bad faith, see Bouygues v. Name Redacted, WIPO Case No. D2021-1666, July 8, 2021, “Furthermore, the Panel notes that previous UDRP panels inferred a bad faith behavior from the activation of MX-servers by the respondent, which enable the creation of email addresses for commercial emailing, spamming or phishing purposes (see Robertet SA v. Marie Claude Holler, WIPO Case No. D2018-1878).”.
The Panel therefore considers that the disputed domain name is also being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
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