WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arcelormittal (SA) v. 张佳 (Zhang Jia)

Case No. D2020-1042

1. The Parties

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

The Respondent is 张佳 (Zhang Jia), China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <lakshmimittalfoundation.org> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 28, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on May 4, 2020 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 May 5, 2020.

On May 4, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 5, 2020, the Complainant requested English be the language of the proceeding. On May 5, 2020, the Respondent objected English be 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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. On April 29, 2020, the Center received an email communication from a third party asking “why lock this domain”. On May 4, 2020, the Center requested this third party to identify herself/himself and clarify her/his relationship (if any) to the Respondent. However, the Center did not receive any reply from the third party. On May 5, 2020, the Respondent sent an email communication to the Center indicating that the Respondent will participate in the proceeding. On May 12, 2020, the Respondent requested a Model Response in Chinese, which was provided by the Center on May 13, 2020. The Response in Chinese was filed with the Center on May 31, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 12, 2020. 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 Luxembourgian company involved in the production of steel and is the market leader in the production of steel for use in automotive, construction, household appliances and packaging. The Complainant was created through the merger of Arcelor and Mittal Steel in 2006. The present Chief Executive Officer (CEO) and chairman of the Complainant’s board of directors is Lakshmi Mittal.

The Complainant owns several trademarks for MITTAL, including, for example, the international trademark registration number 1198046, registered on December 5, 2013. Moreover, the Complainant also owns various domain names, including, for instance, <lakshmimittal.com>, registered on July 12, 2007.

The disputed domain name was created on April 23, 2020. The Complainant submits evidence that the disputed domain name directed to the Registrar’s parked page indicating this disputed domain name is for sale. However, on the date of this decision, the disputed domain name leads to an error page.

The Respondent is a natural person from China, and is self-represented in this procedure.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for MITTAL, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are highly distinctive and submits an UDRP decision which has recognized that the Complainant’s trademarks for MITTAL are well known. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes registration and use in bad faith. Moreover, the Complainant claims the disputed domain name directly refers to the name of its CEO, Lakshmi Mittal, which cannot be coincidental.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

Regarding the first element under the Policy, the Respondent essentially contends that the disputed domain name is not confusingly similar to the Complaint’s marks. The Respondent claims the full name of the Complainant’s CEO is “Lakshmi N Mittal”, rather than “Lakshmi Mittal”, and therefore could not be used to challenge the Respondent’s domain name right.

Regarding the second element under the Policy, the Respondent essentially contends that she/he has legal rights or legitimate interests in respect of the disputed domain name. The Respondent claims she/he applied for and registered the disputed domain name first and should enjoy the respective rights. The Respondent also questions why the Complainant has not registered any domain names regarding “Lakshmi N Mittal”, if the Complainant values rights in this name. The Respondent also asserts that the Complainant has attempted to take her/his disputed domain name illegally.

Regarding the third element under the Policy, the Respondent essentially contends that the disputed domain name has not been registered and used in bad faith. The Respondent asserts that she/he has been using the name “Lakshmimittal”. The website the disputed domain name resolved to was a parked page of the Registrar, and the Respondent appears to claim that she/he does not intend to sell the disputed domain name. The Respondent claims she/he has been using this disputed domain name for legitimate purposes.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the proceeding

Pursuant to paragraph 11(a) of the Rules, 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 language of the Registration Agreement is Chinese, and the Complaint and the amended Complainant have been filed in English. On May 4, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 5, 2020, essentially referring to the disputed domain name which is formed by Roman characters and not in Chinese script. The Respondent objected that English be the language of the proceeding on the same day, essentially claiming that the disputed domain name was registered with a Chinese registrar, and Chinese is the language used by the largest population. Given the circumstances of this case, the Center accepted the Complaint and the amended Complaint as filed in English, and indicated that it would accept a Response in either English or Chinese, and would appoint a Panel familiar with both English and Chinese.

The Panel has carefully considered all elements of this case, and in particular, the Complainant’s request that the language of the proceeding be English; the Respondent’s objection that the language of the proceeding be English; and the fact that in her/his Response in Chinese, the Respondent replies to the specific arguments presented in the Complaint, which was written exclusively in English. All of these factors lead the Panel to conclude that the Respondent appears to understand English. Conversely should Chinese be used as the language of the proceeding, this could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

Nevertheless, in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, the Panel accepts the Response drafted in Chinese, and does not require a translation of the Response into the language of the proceeding.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence that it owns valid rights in the mark MITTAL, based on its use and registration of the same as trademarks widely.

Moreover, as to confusing similarity, the disputed domain name incorporates the MITTAL Mark in its entirety along with “Lakshmi” which refers to the first name of the CEO of the Complainant, Lakshmi Mittal, followed by the descriptive word “foundation”. The applicable Top-Level Domain (“.org” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview 3.0, section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale,WIPO Case No. D2000-0662).

The Panel holds that given the long connection with and prominent role held by Lakshmi Mittal with the Complainant, the addition of “Lakshmi” is insufficient to dispel the impression of confusing similarity created by the incorporation of the MITTAL Mark. (See also ArcelorMittal S.A. v. Registrant of lakshmimittal.org, c/o WHOIStrustee.com Limited / Zeus Holding Market Ltd., WIPO Case No. D2018-1086).

Further, the addition of the merely descriptive component “foundation” does not avert the confusing similarity between the disputed domain name and the Complainant’s trademark, either. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its dominant feature. As to the Respondent’s contention that the full name of the Complainant’s CEO is “Lakshmi N Mittal” which is dissimilar to the disputed domain name, the Panel disagrees. The key issue here is the confusingly similarity between the Complainant’s trademarks and the disputed domain name, rather than that between the CEO’s name itself and the disputed domain name.

Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and the Panel concludes that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1).

As to the Respondent’s reply that she/he applied for and registered the disputed domain name firstly and therefore should enjoy the respective rights, the Panel disagrees and holds that “First Come, First Served” does not automatically establish any rights or legitimate interests within the meaning of the Policy. Moreover, the Panel notes that the disputed domain name resolved to the Registrar’s parked page offering the disputed domain name for sale (before it was taken offline). This general offer to sell the disputed domain name indicates the Respondent’s possible intention for registering the disputed domain name.

Furthermore, the Panel notes that the Respondent is not commonly known by the disputed domain name.

Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademarks, and the nature of the disputed domain name, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith.

Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in MITTAL and used these extensively, and that its CEO Lakshmi Mittal has a long connection with and holds a prominent role at the Complainant. The Respondent obviously aimed to associate the disputed domain name with the Complainant’s business and its CEO. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name once directed to the Registrar’s parked page offering the disputed domain name for sale (before it was taken offline), this evidences that the Respondent has the intention to transfer the disputed domain name for profit. Although the Respondent appears to claim that the website at the disputed domain name was a kind of template provided by the Registrar, the Panel holds that the Respondent cannot disclaim responsibility for content appearing on the website associated with her/his domain name

On the date of the decision, the disputed domain name resolves to an inactive webpage. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The Panel finds so under the circumstances of this case.

The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademarks, the high degree of distinctiveness and fame of the Complainant’s trademarks, the fact that the Respondent associates the disputed domain name with the Complainant’s business and its CEO, and the fact that the Respondent once offered to sell the disputed domain name for commercial gain. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has registered and used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any persuasive response or evidence to establish her/his good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.

D. Reverse Domain Name Hijacking

The Respondent appears to claim that the Complaint was filed in bad faith. Considering the Panel’s findings above, the Panel concludes that the Complainant did not lodge the Complaint in bad faith.

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 name <lakshmimittalfoundation.org> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: June 26, 2020