WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arcelormittal (SA) v. 湖南中跃钢铁有限公司 (hu nan zhong yue gang tie you xian gong si)

Case No. D2021-1968

1. The Parties

The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.

The Respondent is 湖南中跃钢铁有限公司 (hu nan zhong yue gang tie you xian gong si), China.

2. The Domain Names and Registrar

The disputed domain names <mittal-fittings.com>, <mittal-pipe.com>, <mittalpipes.com> and <mittal-steels.com> are all registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on June 25, 2021.

On June 25, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 25, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 July 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on August 3, 2021. 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 company specialized in steel production and is a leader in steel for use in automotive, construction, household appliances and packaging. It holds captive supplies of raw materials and operates extensive distribution networks.

The Complainant is the owner of several trade marks containing the term MITTAL, including the following registrations:

The Complainant also owns several domain names containing the term MITTAL, including <mittalsteel.com> registered on January 2, 2003, and <mittal-steel.com> registered on May 17, 2009.

The disputed domain names <mittal-fittings.com>, <mittal-pipe.com>, <mittalpipes.com> and <mittal-steels.com> were all registered on June 16, 2021. At the date of this Complaint, all the disputed domain names resolved to inactive webpages.

The registrant of the disputed domain names was identified by the Registrar as 湖南中跃钢铁有限公司 (hu nan zhong yue gang tie you xian gong si) (or, translated into English, Hunan Zhongyue Steel Co., Ltd). The contact person was identified as an individual, 余先生 (yu xian sheng). The company and the individual have both been named as the Respondent in the amended Complaint but according to the Registrar’s verification, the registrant should be 湖南中跃钢铁有限公司 (hu nan zhong yue gang tie you xian gong si). The Panel refers to this company below as the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trade marks. The disputed domain names wholly incorporate the MITTAL and MITTAL STEEL trade marks and the addition of the terms “fittings”, “pipe(s)”, or the addition of the letter “s”, and “.com” in the disputed domain names do not eliminate the overall notion that the designations are connected to the trade marks and the likelihood of confusion that the disputed domain names and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain names. The MITTAL and MITTAL STEEL trade marks are not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain names, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and

(c) The disputed domain names were registered and are being used in bad faith. The mere fact that the Respondent has registered domain names incorporating trade marks of a well-known company gives rise to an inference of bad faith. Based on the use of the disputed domain names, the Respondent registered and are using the disputed domain names to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade marks.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issues – Language of the Proceeding

According to paragraph 11(a) of the Rules, 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.

In this case, the language of the Registration Agreements for the disputed domain names is in Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Respondent did not respond as to the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

a) the English language is the language used most in international relations and is one of the working languages of the Center;

b) the disputed domain name is formed by Roman characters and not Chinese script; and

c) in order to proceed in Chinese, the Complainant would have had to retain specialised translation services that would cause an unnecessary burden to the Complainant and delay the proceeding;

In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the above matters (and in particular that the websites under the disputed domain names are in English) and the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Chinese.

- the Respondent has not commented on the language of the proceeding.

- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2. Preliminary Issues – Multiple Domain Names

The Panel notes that the present Complaint has consolidated multiple domain name disputes. At the time of filing it was not aware who the registrant of each domain name was. This was provided by the Registrar after the complaint was filed.

According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name, provided that the domain names are arguably registered by the same domain-name holder.

As the disputed domain names are all registered by the Respondent, the Panel accepts the Complainant’s application to consolidate the disputed domain names in the Complaint.

6.3. Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights to;

(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

The Panel finds that the disputed domain names <mittal-fittings.com>, <mittal-pipe.com>, <mittalpipes.com> and <mittal-steels.com> are confusingly similar to the Complainant’s trade mark MITTAL. All the disputed domain names incorporate the MITTAL trade mark in full. The disputed domain name <mittal-fittings.com> is accompanied with the descriptive term “fittings” while the disputed domain names <mittal-pipe.com> and <mittalpipes.com> are accompanied with the descriptive term “pipe” and “pipes” respectively. The disputed domain name <mittal-steels.com> incorporates the Complainant’s MITTAL STEEL trade mark followed by the letter “s”. The disputed domain names are then accompanied with the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is generally disregarded when considering the first element. (see section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain names.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorised nor licensed to use the Complainant’s MITTAL or MITTAL STEEL trade marks or to apply for registration of the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names. There is also no other evidence that the Respondent has used or is planning to use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain names.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain names were registered and are being used in bad faith.

The disputed domain names were registered long after the Complainant has registered the MITTAL and MITTAL STEEL trade marks and the use of the Complainant’s MITTAL and MITTAL STEEL trade marks cannot be a coincidence. The association of the trade marks with terms such as “fittings” and “pipe(s)” contains a high likelihood that the disputed domain names refer to the Complainant and its products. The Panel is satisfied that the Respondent was aware of the Complainant and its MITTAL and MITTAL STEEL trade marks when it registered the disputed domain names. It also appears to the Panel that the Respondent has registered the disputed domain names for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. Though the disputed domain names resolve to inactive webpages at the date of this decision, it is well established that the lack of use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. (See section 3.3 of the WIPO Overview 3.0).

For the above reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.

The Complainant has therefore satisfied the third element under 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, <mittal-fittings.com>, <mittal-pipe.com>, <mittalpipes.com> and <mittal-steels.com>, be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: August 17, 2021