Decision for dispute CAC-UDRP-107421

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

Among others, the Complainant is the owner of the following registered trademarks:

International Registered Trademark Number 778212 for the word mark ARCELOR, registered on February 25, 2002 in Classes 1, 6, 7, 9, 12, 37, 40, and 42, designated in respect of over 25 territories.

Brazilian Registered Trademark Number 824400313 for the word mark ARCELOR, registered on July 24, 2007 in Class 40.

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

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 57.9 million tonnes of crude steel having been made in 2024. It holds sizeable supplies of raw materials and operates extensive distribution networks.

In addition to the Complainant’s ARCELOR registered trademarks, the Complainant owns a domain name portfolio containing domain names such as <arcelor.com>, registered since August 29, 2001.

The disputed domain names were registered as follows:

<arcelormttatendimento.online> was registered on March 13, 2025;

<arcelordistribuidora.online> was registered on March 13, 2025;

<arceloratendimentodistribuidora.online> was registered on March 14, 2025; and

<arcelordistribuicaosuporte.online> was registered on March 14, 2025.

 All of the disputed domain names are currently inactive.

Complainant:

The disputed domain names are confusingly similar to the Complainant’s ARCELOR trademark. The addition of the terms “mtt atendimento” (meaning “mtt service” in Portuguese), “distribuidora” (meaning “distributor”) “atendimento distribuidora” (meaning “distributor service”) or “distribuicao suporte” (meaning “distribution support”) respectively are not sufficient to escape a finding of confusing similarity in respect of the disputed domain name concerned. None of the said additions change the overall impression of each designation as being connected to the Complainant’s trademark, or prevent the likelihood of confusion between each of the disputed domain names and the Complainant and its trademark. A domain name that wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP.

The addition of the suffix “.online” does not change the overall impression of the designation as being connected to the Complainant’s trademark or prevent the likelihood of confusion between the disputed domain names and the Complainant, its trademark and its associated domain name.

The Respondent is not identified in the Whois database as the disputed domain names. Previous panels have held that a respondent is not commonly known by a domain name if the Whois information is not similar thereto.

The Respondent is not related to the Complainant in any way. The Complainant does not carry out any activity for the Respondent and has no business with it. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s ARCELOR trademark, nor permission to apply for registration of the disputed domain names.

The disputed domain names are inactive. The Respondent did not use the disputed domain names and has no demonstrable plan to use them.

The disputed domain names were registered and are being used in bad faith. The disputed domain names are identical or at least confusingly similar to the Complainant’s distinctive ARCELOR trademark registered in Brazil. Said trademark is widely known, and operates worldwide, especially in Brazil.

Previous panels under the Policy have confirmed the notoriety of the Complainant’s trademark. Furthermore, the Complainant is one of the world’s leading producers of steel products and enjoys a strong worldwide reputation. Given the distinctiveness of the Complainant's trademark and reputation, it is reasonable to infer that the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademark.

The disputed domain names are currently inactive, and the Respondent has not demonstrated any proposed activity in respect of them. It is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by constituting passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. Previous panels under the Policy have held that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

Respondent:

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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.

The Complainant has demonstrated to the Panel’s satisfaction that it has UDRP-relevant rights in its ARCELOR trademark by virtue of the registered trademarks listed above. This mark is reproduced in each of the disputed domain names, together with (respectively) the terms “mtt atendimento” (meaning “mtt service” in Portuguese), “distribuidora” (meaning “distributor”) “atendimento distribuidora” (meaning “distributor service”) or “distribuicao suporte” (meaning “distribution support”). The Panel accepts the Complainant’s translation of each of these terms, in the absence of conflicting submissions or evidence, and accepts the Complainant's submission that none of them are sufficient to avoid a finding of confusing similarity under the Policy, noting that the Complainant’s ARCELOR trademark is fully recognizable in each of the disputed domain names based upon a straightforward side-by-side comparison. The generic Top-Level Domain in respect of each disputed domain name, namely “.online”, is typically disregarded for the purposes of the comparison under the first element analysis of the Policy. Accordingly, the Panel finds that each of the disputed domain names are confusingly similar to the Complainant’s ARCELOR trademark.

With regard to the second element of the Policy, the Complainant asserts that the Respondent is not commonly known by the disputed domain names (according to a review of the corresponding Whois information), that the Respondent is neither affiliated with, licensed nor authorized by the Complainant in any manner, that the Complainant carries out no activity for the Respondent and has no business with it, and that neither license nor authorization has been granted to the Respondent by the Complainant to make any use of the Complainant’s said trademark or to apply for registration of the disputed domain names. The Complainant submits that the disputed domain names are being passively held by the Respondent, such that the Respondent cannot be making a bona fide offering of goods or services, nor is there any evidence of demonstrable preparations to use the disputed domain names for such a purpose.

The Panel finds that the Complainant’s various contentions, taken together, are sufficient to constitute the requisite prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names (see, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Respondent has not replied to the Complainant’s allegations and evidence in this case, and has failed to set out any alleged rights or legitimate interests which it might have claimed in the disputed domain names. There are no submissions or evidence on the record which might serve to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

On the topic of registration and use in bad faith, it may be noted that the Complainant’s ARCELOR trademark registration long pre-dates the registration of the disputed domain names. Previous cases under the Policy note that the Complainant’s ARCELOR mark is very well-known (see, for example, ARCELORMITTAL S.A. v. Arcelor Staffing Solution, CAC-UDRP-100756). As noted above, the disputed domain names each incorporate such mark as their first element. In these circumstances, it is entirely reasonable to infer that the disputed domain names were registered by the Respondent with an awareness of the Complainant and its rights, and with an intent to target these. In the absence of any reasonable explanation, the incorporation of such a well-known trademark into a domain name may be, in and of itself, an indication of bad faith.

There are no websites at any of the disputed domain names. Accordingly, they are being “passively held”. Such passive holding does not allow the Respondent to escape a finding of registration and use in bad faith in circumstances where, as here, the disputed domain names each incorporate and are confusingly similar to the Complainant’s well-known mark, where the Respondent has failed to submit a Response or otherwise to provide any evidence of actual or contemplated good faith use, and it is implausible that the disputed domain names could be put to any such good faith use if the corresponding websites were to become active (see, on this topic, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In all of these circumstances, the Panel considers that the Complainant has made out a sufficient case of registration and use in bad faith. The Respondent has not filed a Response in this case and therefore has not addressed the Complainant’s assertions of bad faith registration and use to any extent. No explanation has been presented by the Respondent that might have suggested that its actions regarding the disputed domain names were in good faith.

The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.