Decision for dispute CAC-UDRP-107428

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 claims rights in the ARCELORMITTAL trademark and service mark through its ownership of international trademark registration ARCELORMITTAL, registration n° 947686, registered on August 3, 2007 for goods and services in Nice classifications 6,7,9,12,19,21,39,40,41,42, and extensive international use in its business as a manufacturer of steel.

The Complainant is an internationally known manufacturer of steel and has an established Internet presence. It holds a portfolio of Internet domain names including <arcelormittal.com> registered since January 27, 2006 and maintains a website at www.arcelormittal.com.

The disputed domain name <arcelormittal-corporation.com> was registered on March 19, 2025 and does not resolve to any active website, however MX servers are configured.

There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Centre for details of the registration of the disputed domain name for the purposes of this administrative proceeding.

The Complainant

The Complainant asserts that it 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 tons crude steel made in 2024. It submits that it holds sizeable captive supplies of raw materials and operates extensive distribution networks.

Firsly, the Complainant alleges that the disputed domain name is confusingly similar to the ARCELORMITTAL mark in which it has rights because the mark is identically contained within the disputed domain name.

Additionally, it is argued that of the term “corporation” within the disputed domain name is not sufficient to escape the finding that it is confusingly similar to the Complainant’s ARCELORMITTAL mark. It is argued that the term does not change the overall impression that the designation is connected to the Complainant’s mark. The Complainant submits that it is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. Citing Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin WIPO Case No. D2003-0888.

Furthermore, the Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) extension <.com> does not change the overall impression of the designation as being connected to the Complainant’s trademark. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its domain names associated, citing  F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. WIPO Case No. D2006-0451, (“It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”).

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, arguing that 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. Citing Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Complainant argues as follows:

• the Respondent is not identified in the Whois database as the disputed domain name, and past panels established under the Policy have held that a respondent is not commonly known by a domain name at issue if the Whois information is not similar to the domain name at issue. Thus, the Respondent is not known as the disputed domain name, citing Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group Forum Claim FA 1781783, <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c) (ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).”);
• the Respondent is not related to the Complainant in any way;
• the Complainant does not carry out any activity for, nor has it any business with the Respondent;
• neither license nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trademark ARCELORMITTAL, or apply for registration of the disputed domain name.

Additionally, referring to screen captures exhibited in an annex to the Complaint the Complainant submits that they illustrate that the disputed domain name is inactive notwithstanding that it configured for a MX servers.

The Complainant contends that the Respondent did not use the disputed domain name or has no demonstrable plan to use the disputed domain name, as in Ashley Furniture Industries, Inc. v. Joannet Macket / JM Consultants Forum Claim FA 1773444, (“The Panel finds that Respondent’s lack of content at the disputed domain shows the lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).”).

Thirdly the Complainant alleges that the disputed domain name was registered and is being used in bad faith, arguing that it is confusingly similar to the Complainant’s distinctive and well known ARCELORMITTAL mark, as has been recognised in a number of decisions of  past panels established under the Policy.

Furthermore, the Complainant argues that the disputed domain name does not resolve to any active page as shown in the exhibit annexed to the Complaint; nor has the Respondent demonstrated any activity in respect of the disputed domain name.

Therefore, it is argued that 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 trademark law.

The Complainant adds that panels established 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, two instances being:  Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, and CBS Broadcasting, Inc. v. Dennis Toeppen WIPO Case No. D2000-0400,

Finally, it is contended that the disputed domain name has been set up with MX records as shown in the screen capture which has been annexed to the Complaint, which suggests that it may be actively used for email purposes, as in a similar case, JCDECAUX SA v. Handi Hariyono CAC Case No. 102827 (“There is no present use of the disputed domain name but there are several active MX records connected to the disputed domain name. It is concluded that it is inconceivable that the Respondent will be able to make any good faith use of the disputed domain name as part of an e-mail address.”).

Respondent

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.

Rights and Similarity

The Complainant has provided uncontested convincing evidence of its rights in the ARCELORMITTAL mark established by its ownership of the international trademark registration described above and its extensive use of the mark since at least 2007.

The Complainant has also acquired rights in the mark through extensive international use having manufactured 57.9 million tons of crude steel in 2024.

The disputed domain name <arcelormittal-corporation.com> is composed of the Complainant’s ARCELORMITTAL mark in combination with a hyphen, the word “corporation” and the gTLD extension <.com>.

The Complainant’s registered trademark is contained within the disputed domain name in its entirety and is clearly recognisable as the initial and only distinctive element in the disputed domain name.

The hyphen does not add any distinguishing character, and insofar as it adds anything to the disputed domain name it serves to emphasise the Complainant’s trademark as a separate element.

In the circumstances of this case the gTLD extension <.com> within the disputed domain name may be ignored for the purposes of comparing the Complainant’s mark and the disputed domain name, because it would be considered by Internet users to be a necessary technical element for a domain name registration.

This Panel finds therefore that the disputed domain name is identical to the ARCELORMITTAL mark which the Complainant currently uses and has prior rights, and the Complainant has shown the first basis for complaint as set out in Policy paragraph 4(a)(i).

Rights and Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as argued in the Complainant’s detailed submissions above.

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

The Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore succeeded in the second element of the test in Policy paragraph 4(a)(ii).

Bad Faith

The Complainant has owned the international registration of the ARCELORMITTAL mark, described above, since January 27, 2006, whereas the disputed domain name was not registered until March 19, 2025. The Complainant has shown that it has an extensive international business and an established internet presence with its website at www.arcelormittal.com.

The Complainant’s well known and eponymous ARCELORMITTAL registered trademark is clearly recognizable within the disputed domain name.

The ARCELORMITTAL mark is both distinctive and well known. By adding the word “corporation” to the Complainant’s mark, the registrant of the disputed domain name, on the balance of probabilities, intentionally aimed to create the impression that the disputed domain name had an association with the Complainant corporation. It is improbable that the registrant would choose and register such a distinctive mark without contemplating that it would infer a reference to the Complainant and its business.

On the balance of probabilities therefore, this Panel finds that the disputed domain name was in fact chosen and registered with the Complainant and its mark in mind, with the intention of targeting the Complainant and taking predatory advantage of the Complainant’s rights and goodwill in the ARCELORMITTAL mark.

The Complainant has exhibited screen captures to illustrate that the disputed domain name is inactive as a website address but has been configured to allow it to be used to create email accounts.

In the circumstances of this proceeding, where the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was on the balance of probabilities registered in bad faith with the Complainant and its mark in mind, this Panel finds that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith for the purposes of the Policy.

Furthermore, in these circumstances, as the Complainant has argued, it is of great concern that the Respondent has created the potential to use the disputed domain name to create email accounts.

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and the Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).