WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal S.A. v. Yongkun Wang / 王永坤

Case No. D2017-2269

1. The Parties

The Complainant is ArcelorMittal S.A. of Luxembourg, represented by Nameshield, France.

The Respondent is Yongkun Wang /王永坤 of Shanghai, China, self-represented.

2. The Domain Names and Registrar

The disputed domain names <arcelormittal.club>, <arcelormittal.fun>, <arcelormittal.ink>, <arcelormittal.kim> and <arcelormittal.store> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all the disputed domain names and providing the contact details. On November 16, 2017 and November 18, 2017, the Respondent sent two emails in English to the Center regarding the proceeding.

On November 20, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant sent an email requesting that English be the language of the proceeding, while the Respondent sent an email requesting that Chinese be the language of the proceeding, addressing substantive issues and offering to transfer for the disputed domain name for RMB1000.

The Center verified that the 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 in English and Chinese of the Complaint, and the proceedings commenced on November 29, 2017. In accordance with the Rules, paragraph 5, the due date for the Response was December 19, 2017. On November 29, 2017 and December 1, 2017, the Respondent submitted two emails reiterating his request that Chinese be the language of the proceeding and addressing other procedural issues. On December 5, 2017, in accordance with the Rules, paragraph 5(b), the Respondent requested a four day extension to file the Response. Accordingly, the Center notified the Parties that the due date for the Response was extended to December 23, 2017. The Response was filed with the Center on December 23, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 5, 2018. 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 is a major steel producer with operations in more than 60 countries around the world. The Complainant is the owner of international trademark registration number 947686 for ARCELORMITTAL, registered on August 3, 2007, designating multiple jurisdictions, including China, and specifying goods and services in classes 6, 7, 9, 12, 19, 21, 39, 40, 41 and 42. The Complainant is also the registrant of domain names including <arcelormittal.com>, registered on January 27, 2006, that it uses in connection with its official website.

The Respondent is an individual located in China. The disputed domain names were all registered on November 11, 2017. As at the time of filing of the Complaint, each disputed domain name resolved to a parking page in Chinese and English advising that “the domain is for sale!” At the time of this Decision, the disputed domain names no longer resolve to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical to the Complainant’s ARCELORMITTAL trademark. Each disputed domain name contains that trademark without the adjunction of any letter or word. The addition of the new Top-Level Domain (“TLD”) suffixes does not change the overall impression that the disputed domain names are connected to the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not related in any way to the Complainant. The Complainant has not granted any licence or authorization to the Respondent to apply for or register the disputed domain names. The Respondent is not commonly known by the disputed domain names because the WhoIs database information is not similar to those names.

The disputed domain names were registered and are being used in bad faith. They are identical to the Complainant’s trademark. Given the distinctiveness of the trademark, the Respondent must have had knowledge of the trademark. The disputed domain names redirect to a parking page and are for sale.

B. Respondent

The Respondent only wished to register “Arc El or Mit Tal” but was required to register the disputed domain names in the form “arcelormittal”. However, when the Respondent uses the disputed domain names, he will be able to use spaces and capital letters to distinguish them from “arcelormittal”. “Arcelormittal” is composed of 13 letters and has multiple meanings; the Respondent will only use one of them. The five syllables “Arc”, “El”, “or”, “Mit” and “Tal” are extremely easy to distinguish from the same 13 letters in the format “arcelormittal”. Further, each of the disputed domain names incorporates a TLD suffix different from the TLD suffix in the Complainant’s domain name <arcelormittal.com>. ICANN opened new TLDs to permit the registration of identical domain names with different TLD suffixes. The Respondent validly registered the disputed domain names and did not receive any notice that its registrations were illegal. Not everyone around the world knows of the Complainant, especially in China. The Respondent has never been outside China or even his own hometown and, at the time of registration of the disputed domain names, did not know of the Complainant or its trademark. The Complainant has failed to satisfy paragraph 4(a)(i) of the Policy.

The Respondent registered the disputed domain names long after the sunrise periods. The Complainant had the opportunity to register its trademark in these new TLDs but did not do so. The five disputed domain names have been registered for the purposes of a cooperative research program and the Respondent has rights and legitimate interests with respect to their use. When a company owns a trademark, that does not mean that it owns corresponding domain names in every TLD. The Respondent was the first in time to register the disputed domain names and therefore is the owner. The Respondent registered the disputed domain names in China and will use them there. The Chinese Trademark Law does not provide that the owner of a registered trademark has the exclusive right to register its trademark as a domain name. Fairness and justice are the foundation of the Internet and domain names. Allowing more people to register domain names was the purpose of ICANN opening new TLDs. The Complainant cannot use its trademark to monopolize rights to register and use “arcelormittal” domains; an ordinary Internet user should be able to own the five disputed domain names. The Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.

The Respondent’s five disputed domain names are in the process of preparation; the Respondent was forced to interrupt its preparations due to the Complainant’s initiation of this proceeding. According to China implementing measures on non-profit Internet information services records, it is obligatory to keep a record of non-profit Internet information services. Therefore, the five disputed domain names are inactive and do not redirect to any website. Domain names and trademarks are part of two different systems of registration and intellectual property rights. If a domain name is not used, it has no connection to any goods or services and cannot conflict with any trademark. The disputed domain names are inactive and therefore not used intentionally to attract Internet users for commercial gain. The disputed domain names are not used in connection with any goods and services and therefore have no impact on the Complainant’s trademark. The Respondent does not, and has no intention to, use the disputed domain names for any illegal or profitable purpose. The disputed domain names will be used for a cooperative research project and can be used in a way that is clearly distinguishable from the Complainant’s domain name <arcelormittal.com>. The Respondent can guarantee that he will not use the disputed domain names for any commercial or other purpose. The Respondent has not registered the disputed domain names with any organization, company or partner and has not used them, hence their registration is not abusive. The Complainant has failed to satisfy paragraphs 4(a)(iii) and 4(b) of the Policy.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.

The Complainant requests that English be the language of the proceeding. Its main arguments are that the disputed domain names are in Latin characters; the costs of translation would create an undue burden for the Complainant; and the Respondent may file its Response in Chinese.

The Respondent requests that Chinese be the language of the proceeding, because the Registration Agreements for the disputed domain names are in Chinese.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English and that the Response was filed in Chinese. The Panel also notes that the Respondent’s initial emails to the Center were in English, which demonstrates that he is able to communicate in that language. Moreover, the Response in fact addresses each of the substantive issues raised in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and unnecessary delay while permitting the Complaint to be filed in English would cause no prejudice to either party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept the Response as filed in Chinese without a translation.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the ARCELORMITTAL trademark.

Each disputed domain name incorporates the Complainant’s ARCELORMITTAL trademark in its entirety. The only other additional element in each disputed domain name is a TLD suffix, variously “.club”, “.fun”, “.ink”, “.kim” or “.store”. However, a TLD suffix may generally be disregarded in the comparison of a domain name with a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

The Respondent argues that he can use spaces and capital letters to distinguish the disputed domain names from the Complainant’s trademark. However, the relevant comparison is made between the disputed domain names as they are registered (without spaces and capital letters) and the Complainant’s trademark. The Respondent also argues that the various TLD suffixes in the disputed domain names distinguish them from the Complainant’s domain name <arcelormittal.com> but the relevant comparison for the purposes of the first element of the Policy is between the disputed domain names and the Complainant’s trademark.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable 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; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark 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 or service mark at issue.

As regards the first circumstance, at the time of the Complaint the disputed domain names resolved to a landing page that simply offered them for sale. The Panel finds that that does not constitute a bona fide offering of goods or services that would create legitimate rights or interests for the purposes of the Policy.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Yongkun Wang /王永坤”, which does not resemble “arcelormittal”. There is no evidence that the Respondent has been commonly known by the disputed domain names.

As regards the third circumstance, at the time of the Complaint the disputed domain names were being used in connection with landing pages that offered them for sale. That is not a legitimate noncommercial or fair use in these circumstances.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Respondent argues that he validly registered the disputed domain names and is their legal owner. However, mere registration of a domain name does not confer rights or legitimate interests for the purposes of the Policy, otherwise, no complainant could ever succeed, which is an illogical result: see Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.

The Respondent notes that the Complainant had an opportunity to register its trademarks in the corresponding TLDs prior to the registration of the disputed domain names. However, this has no bearing on whether the Respondent would have any rights or legitimate interests in the disputed domain names. Any failure by a trademark owner to register a domain name during a sunrise period does not constitute consent to registration by a third party of a domain name confusingly similar to that trademark: see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

The Respondent also asserts that he is preparing to use the disputed domain names in connection with a cooperative research project. However, this is mere assertion and the Respondent provides no evidence of any demonstrable preparations to make such use of the disputed domain names.

In summary, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

As regards registration, the disputed domain names were registered after the Complainant obtained its trademark registration, including in China where the Respondent is located. The disputed domain names are an exact match with the Complainant’s ARCELORMITTAL trademark, but for the TLD suffix in each case, which is a technical requirement of domain name registration. The word “arcelormittal” has no meaning other than as the Complainant’s trademark. The Panel considers it implausible that the disputed domain names wholly incorporate that trademark by coincidence; rather, the most likely explanation is that the Respondent targeted the Complainant’s trademark. The Respondent asserts that he wished only to register the five syllables “Arc”, “El”, “or”, “Mit” and “Tal” but he does not explain why he chose those syllables. The Respondent asserts that the disputed domain names are intended for use with a cooperative research project, but he does not explain any connection between those syllables and such a project, let alone why he chose to register five such domain names. In these circumstances, the Panel has reason to find that the Respondent was aware of the Complainant’s trademark at the time that he registered the disputed domain names and that he registered them in bad faith.

As regards use, the disputed domain names, which are all confusingly similar to the Complainant’s trademark, all resolved to landing pages that offered the disputed domain names for sale. In these circumstances, the Panel finds that the Respondent was using the disputed domain names intentionally to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with one or other of the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of services on his websites, within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that, at the time of this Decision, the disputed domain names no longer resolve to any active website and are only passively held. However, passive holding of domain names does not preclude a finding of bad faith: see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Moreover, in the present dispute the disputed domain names have only been passively since the filing of the Complaint which may actually constitute a further indication of bad faith. The Respondent’s assertion that he will not use the disputed domain names for a commercial purpose rings hollow when he has already used them in connection with a landing page that offered them for sale. The Respondent’s submission that the disputed domain names can be used (presumably in the website content) in a way that is clearly distinguishable from the Complainant’s domain name is irrelevant because the disputed domain names themselves will remain identical with the Complainant’s trademark, but for their TLD suffixes. In these circumstances, the Panel finds that the Respondent is using the disputed domain names in bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 names, <arcelormittal.club>, <arcelormittal.fun>, <arcelormittal.ink>, <arcelormittal.kim> and <arcelormittal.store>, be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 16, 2018