Decision for dispute CAC-UDRP-107261

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 has established by evidence that it is the owner of the following trademark:  the International Trademark for ARCELORMITTAL, No. 947686, registered on October 3, 2007;

The Complainant is a Luxembourgian company that is the largest steel production company in the world that is also engaged in the provision of related goods and services. It offers its goods and services under the ARCELORMITTAL trademark and to that end owns the International Trademark for ARCELORMITTAL  No. 947686, registered on October 3, 2007 (“the ARCELORMITTAL trademark”). It also owns several domain names including <arcelormittal.com> which it uses for its website at www. arcelormittal.com, where it promotes its goods and services.

The Respondent registered the <arcelormittal-canada.com> domain name on January 21, 2025 (“the Disputed Domain Name”). The Disputed Domain Name is inactive.

The Complainant is concerned that the Disputed Domain Name gives the impression that it relates to the Complainant and its goods and services in Canada and, moreover, as it is configured for MX servers, it is apparent that it may well be used for illegitimate activities to the detriment of the Complainant and its good name. Accordingly, the Complainant has instituted this proceeding to have the Disputed Domain Name transferred to itself.

COMPLAINANT

The Complainant made the following contentions.

1. The Complainant is a Luxembourgian company that is the largest steel production company in the world and is also engaged in the provision of related goods and services.
2. It offers its goods and services under the ARCELORMITTAL trademark and to that end owns the International Trademark for ARCELORMITTAL No.947686, registered on October 3, 2007 (“the ARCELORMITTAL trademark”).
3. The Complainant also owns several domain names including <arcelormittal.com> which it uses for its website at www.arcelormittal.com, where it promotes its goods and services.
4. The Complainant has thus developed a high degree of renown and popularity in its industry; as a result, its name, trademark and brand are well-known and were well-known by the time the Respondent registered the Disputed Domain Name.
5. The Respondent registered the <arcelormittal-canada.com> domain name on January 21, 2025 (“the Disputed Domain Name”).
6. The Disputed Domain Name is confusingly similar to the ARCELORMITTAL trademark. That is because it consists of the ARCELORMITTAL trademark with the addition of a hyphen, the country name “canada” and the generic Top Level Domain “.com”, none of which can negate a finding of confusing similarity between a domain name and a trademark.
7. The Disputed Domain Name does not resolve to an active website but is inactive.
8. The Respondent has no rights or legitimate interests in the Disputed Domain Name as: (a) the Disputed Domain Name is so formulated that it misleads internet users into believing that there is an affiliation between the Complainant and the Respondent, which there is not;

             (b) the Respondent is not commonly known by the Disputed Domain Name and is not related to the Complainant in any way;

             (c) the Complainant has not given to the Respondent any license nor authorization to use the ARCELORMITTAL trademark in a domain name or in any other way;

             (d) the Disputed Domain Name is inactive;

             (e) the Respondent has not used the Disputed Domain Name for a bona fide offering of goods or services within the meaning of Policy  paragraph 4(c)(i) or for any other purpose; and

             (f) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the Disputed Domain Name.

9. The Respondent has registered and used the Disputed Domain Name in bad faith. That is so because:

            (a)  in view of the fame of the trademark, the Respondent had actual knowledge of the Complainant and its ARCELORMITTAL trademark prior to the registration of the Disputed Domain Name;

            (b) the ARCELORMITTAL trademark had acquired a high degree of distinctiveness prior to the registration of the Disputed Domain Name and is a famous trademark;

            (c) the Disputed Domain Name has not been used for any legitimate purpose but resolves to an inactive web site;

            (d) the Disputed Domain Name is configured for MX servers, giving rise to the possibility that it may be used for email purposes; and

            (e) all of the acts, facts, matters and circumstances to be shown by the evidence will establish that the Respondent has registered and used the Disputed Domain Name in bad faith.

RESPONDENT

The Respondent did not file a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Nameis 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.

DISCUSSION AND FINDINGS

This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.

A. Administrative compliance

By notification dated January 24, 2025, and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that the Complaint did not sufficiently identify the Respondent. The notification invited the Complainant to have regard to the Registrar’s verification available in the online case file in the form of a non-standard communication regarding the appropriate identification of the domain name holder. Also on January 24, 2025 the Complainant filed an Amended Complaint and the CAC determined that the Complaint should be admitted to proceed further in the Administrative Proceeding.

The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.

B. Substantive matters

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the onus is on the Complainant to make out its case, and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a disputed domain name.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) the 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 domain name; and

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

The Panel will therefore deal with each of these requirements in turn.

 Identical or Confusingly Similar

The Complainant has adduced evidence that the Panel accepts, that the Complainant is the registered owner of the International Trademark for ARCELORMITTAL No.947686, registered on October 3, 2007 ("the ARCELORMITTAL trademark”). This is established by Annex to the Complaint.

The Panel therefore finds that the Complainant “has” a trademark which the Policy requires it to prove and which it has done.

It will be seen that the ARCELORMITTAL trademark was registered well before the Disputed Domain Name was registered, which was on January 21, 2025, as is seen from Annex to the Complaint. The Complainant has verified that the Respondent is the registrant of the Disputed Domain Name. The Panel has confirmed this evidence by examining the WHOIS search results for the Disputed Domain Name which it has found to be in order and to verify the registration date of the Disputed Domain Name.

The Panel next finds that the Disputed Domain Name is confusingly similar to the ARCELORMITTAL trademark for the following reasons.

First, the Disputed Domain Name includes the entirety of the ARCELORMITTAL trademark, namely “arcelormittal”. Accordingly, it is clear that the domain name has been inspired by and is an attempt to copy the ARCELORMITTAL trademark. It is also clear and has been held many times in prior UDRP decisions that when internet users see an entire trademark used in a domain name in this way, they will naturally conclude that the domain name is an official domain name of the trademark owner or at least that it is being used with the permission of the trademark owner. No such permission has been given by the Complainant in the present proceeding. Accordingly, internet users would conclude that the Disputed Domain Name is an official domain name of the Complainant or that it is being used with the permission of the Complainant which the evidence establishes is not the case.

Secondly, the Disputed Domain Name also includes a hyphen. It is well-established that such features in a domain name are too insignificant to have any effect on the meaning that will be given to the domain name.

Thirdly, the Disputed Domain Name also includes the word “canada” which asserts in effect that the domain name relates to Canada as a country where the Complainant conducts its business. This cannot negate a finding of confusing similarity between the domain name and the trademark which is otherwise established, as the use of the country in conjunction with the trademark means that the domain name is drawing attention to the Complainant's trademark as it is used in that country. Such findings have been reached in many prior UDRP cases and are a regular practice in this field. That is because internet users would naturally accept that the Disputed Domain Name means and invokes the Complainant, its trademark and brand and the use of the domain name in the specified country.

Fourthly, the Respondent has also added the gTLD “.com”, which likewise cannot negate a finding of confusing similarity between the respective domain name and trademark, as all domain names must have such an extension.

Fifthly, the fact that the Disputed Domain Name has been configured by making the foregoing additions to the trademark shows that the Respondent is about some activity designed to copy, impersonate or do damage to the Complainant by some means involving the use of the Complainant's trademark in the Disputed Domain Name. In fact, it can be assumed that internet users who came across the Disputed Domain Name whether they were searching for the Complainant or were simply in search of products for which it is famous, would assume that the domain name was an official domain name of the Complainant and that it was being used for a legitimate purpose by or with the consent of the Complainant and involving the production and sale of steel, which, of course, is not true.

Internet users would also conclude that the domain name will lead to an official website of the Complainant, or one approved by it, which is also not true.

Taken as a whole, the internet user would look at the relevant domain name and conclude that it is similar to the trademark and also that it is confusingly similar to it, because it gives rise to a question mark as to whether it really is an official domain name of the Complainant or not.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the ARCELORMITTAL trademark and that this conclusion is supported by the prior UDRP decisions cited by the Complainant.

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

 But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

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

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

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the Respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the Disputed Domain Name, the Complainant will have failed to discharge its onus with respect to that domain name and the complaint will fail.

It is also well-established that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests and that when such a prima facie case is made out, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent cannot do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. 

In particular, the prima facie case that the Complainant has to make out has been established by the following considerations, taking them in the order in which they have been raised by the Complainant:

• the Disputed Domain Name is so formulated that it misleads internet users into believing that there is an affiliation between the Complainant and the Respondent, which there is not; the Disputed Domain Name has as its dominant feature the ARCELORMITTAL trademark and internet users would naturally conclude from that fact that the Disputed Domain Name. is invoking or dealing in some way with the Complainant, its famous trademark and the products offered by the Complainant under that trademark and that either the Disputed Domain Name.is a domain name of the Complainant itself or that it is presented with the knowledge and consent of the Complainant, which it is not; that conclusion would be reinforced by the fact that the Disputed Domain Name also includes the word “canada” and internet users would naturally conclude from this that the domain name is invoking the goods and services offered by the Complainant in Canada, which again it is not;

• the Respondent is not commonly known by the Disputed Domain Name and is not related to the Complainant in any way; there is no evidence that the Respondent is so known or related to the Complainant, either commonly or not; moreover, there is no evidence that the Respondent is commonly known by any name other than its own;
• the Complainant has not given to the Respondent any license nor authorization to use the ARCELORMITTAL trademark in a domain name or in any other way; that is supported by the unequivocal evidence, showing that it could not be contended that the Disputed Domain Name was registered and used with any sort of consent from the Complainant;

• the Disputed Domain Name is inactive as is seen from Annex to the Complaint; when a domain name is registered but then not used for a website and is inactive, it can reasonably be concluded that it has not been registered or used for any sort of legitimate purpose and in the present case internet users would undoubtedly reach that conclusion;

• the Respondent has not used the Disputed Domain Name for a bona fide offering of goods or services within the meaning of Policy paragraph 4 (c)(i) or for any other purpose; this has been established by the evidence which shows that it has not been used to offer any goods or services at all for sale; and
• the evidence shows that there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the Disputed Domain Name; clearly the facts would not bring this case within any of the criteria set out in Policy paragraph4 (c) and there is no indication at all that the Respondent has any other legitimate interest in the Disputed Domain Name.

This evidence therefore establishes the prima facie case made out by the Complainant.

The Respondent has not filed a Response or made any other answer to the submissions of the Complainant and is in default. Accordingly, the prima facie case has not been rebutted and the Complainant has made out the second of the three elements that it must establish.

Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(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 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 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 the respondent’s 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 site or location.

There is no need to repeat the details of the evidence on this issue set out already, as they relate equally to the issue of bad faith as well as to rights and legitimate interests; the conduct of the Respondent in registering the Disputed Domain Name shows bad faith registration and its conduct since its registration shows bad faith use.

The Respondent relies on several grounds and the Panel finds that the Complainant has made out each of those grounds, which are:

(a) the Respondent had actual knowledge of the Complainant and its ARCELORMITTAL trademark prior to the registration of the Disputed Domain Name in view of the fame of the trademark; the evidence establishes that the Complainant is famous, as being the largest steel producing company in the world and as it is the market leader in steel for use in a wide range of industries and that its trademark is famous for the same reason; the Complainant’s name, trademark and brand are so well known that it must be concluded that the Respondent had actual knowledge of the ARCELORMITTAL trademark at the time it registered the Disputed Domain Name;

(b) the ARCELORMITTAL trademark had acquired a high degree of distinctiveness prior to the registration of the Disputed Domain Name and is a famous trademark; this has already been established by the evidence;

(c) the Disputed Domain Name has not been used for any legitimate purpose but resolves to an inactive web site; this has been established by the evidence contained in Annex to the Complaint;

(d) the Disputed Domain Name is configured for MX servers, giving rise to the possibility that it may be used for email purposes; it is apparent from this fact that the Respondent cannot be said to have been motivated by good faith but that it had in mind some ulterior motive, such as to use the Disputed Domain Name for phishing and that this objective would probably be pursued by using the domain name; and

(e) all of the acts, facts, matters and circumstances that have been shown by the evidence have established that the Respondent has registered and used the Disputed Domain Name in bad faith; that is the cumulative effect of the whole of the evidence.

Finally, in addition to the specified grounds of bad faith articulated in the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent’s registration of the Disputed Domain Name, retaining it, and causing it to resolve to an inactive web site, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

Accordingly, the Complainant has shown the third of the three elements that it must establish.

The Complainant has therefore made out its case and is entitled to the relief it seeks.

The Disputed Domain Name should therefore be transferred to the Complainant.