WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcelormittal (SA) v. Tang Jun Cheng（唐军成）
Case No. D2020-2235
1. The Parties
The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.
The Respondent is Tang Jun Cheng（唐军成）, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <arcelormittal-construction.com> is registered with Xiamen ChinaSource Internet Service Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 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 August 26, 2020.
On August 26, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 26, 2020, the Complainant submitted a 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 September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. The Response was filed in Chinese with the Center on September 22, 2020. On September 25, 2020, the Center sent an email regarding possible settlement to the Parties. No suspension was requested. On October 2, 2020, the Center received two informal emails from the Respondent in English and Chinese.
The Center appointed Douglas Clark as the sole panelist in this matter on October 20, 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, ARCELORMITTAL (SA), is a company specialized in producing steel for use in automotive, construction, household appliances and packaging. It manufactured 89.9 million tonnes of crude steel in 2019.
The Complainant is the owner of the international trade mark No. 947686 for ARCELORMITTAL registered on August 3, 2007, which, inter alia, designates China.
The Complainant is also the owner of the domain name <arcelormittal.com> registered since January 27, 2006.
The disputed domain name was registered on August 19, 2020 and does not at the date of this decision resolve to an active webpage. According to the evidence provided by the Complainant, a screenshot of the website under the disputed domain name was attached to the Complaint as Annex 6. The page at the top and bottom displayed the name of a hotel “合肥县东正时宾馆” (Hefei County Dongzhengshi Hotel), but had apparently random advertisements for products including engineering polymers. A picture of oil rigs appeared at the top of the page.
5. Parties’ Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to its ARCELORMITTAL trade mark. The addition of the word “construction” is not sufficient to avoid a finding that the disputed domain name is confusingly similar to the ARCELORMITTAL trade mark. It does not change the overall impression of the designation as being connected to the Complainant’s ARCELORMITTAL trade mark.
The Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the designation as being connected to the Complainant’s trade mark nor prevent the likelihood of confusion between the disputed domain name and the Complainant, its trade mark and its domain names.
No rights or legitimate interests
The Complainant contends that the Respondent is not known by the disputed domain name. The Respondent has no rights or legitimate interests in respect of the disputed domain name, and he or she is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent.
The Complainant states that no license nor authorization has been granted to the Respondent to make any use of the Complainant’s ARCELORMITTAL trade mark.
The Complainant contends that the disputed domain name points to an online store unrelated to the disputed domain name. As the disputed domain name is used to promote unrelated services, this evidence a lack of rights and legitimate interests.
Registered and used in bad faith
The Complainant contends that given the distinctiveness of the Complainant’s trade mark and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trade mark.
The Complainant contends that the Respondent is intentionally using the disputed domain name to attempt to attract, for commercial gain, Internet users to his or her website by creating a likelihood of confusion with Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of Complainant. The Respondent is obtaining commercial gain from his or her use of the disputed domain name and the resolving website.
B. Respondent
The Respondent claims that he or she does not understand English well, and is the owner of the disputed domain name. The disputed domain name was purchased for website construction, and he or she had incurred costs for purchasing the disputed domain name and building the website. The Respondent has no knowledge that his or her act would cause a problem with the UDRP.
The Respondent indicates that if the Complainant is willing to settle, the Complainant has to bear his or her loss. If the Complainant disagrees with the settlement, the Respondent contends that according to paragraph 4(c)(iii) of the Policy, his or her use of the disputed domain name is legitimate noncommercial or fair use, and he or she does not obtain any commercial gain from misleadingly diverting consumers or tarnishing the ARCELORMITTAL trade mark. Before the Respondent received the UDRP, he or she had no knowledge about the Complainant.
The Respondent refers to Annex 6 of the Complaint and indicates that the website under the disputed domain name is for a hotel “合肥县东正时宾馆” (Hefei County Dongzhengshi Hotel), and its contents are related to news, which has nothing to do with the Complainant. Since the contents on the website are all in Chinese which does not include any business of the Complainant, there is no malicious competition or misleading content on the website.
6. Discussion and Findings
6.1 Language of the Proceeding
The Language of the Registration Agreement is Chinese.
The Complainant requested the language of the proceeding be in English on the grounds that (i) English language is the language most widely used in international relations and is one of the working languages of the Center; (ii) the disputed domain name is formed by words in Roman characters (ASCII) and not in Chinese script; and (iii) in order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of this proceeding. The use of Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of this proceeding.
The Respondent stated that he or she did not speak much English and sent his or her response in an email written in Chinese but otherwise did not object to the Complainant’s language request.
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 Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Panel finds that the Respondent’s email showed that he or she understood the Complaint and made a substantive response.
In the circumstances, the Panel decides that English shall be the language of the proceeding. Further, the Panel accepts the Complaint in English and the Response in Chinese. The Panel will render its decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds the disputed domain name <arcelormittal-construction.com> is confusingly similar to the Complainant’s ARCELORMITTAL trade mark because the disputed domain name incorporates the ARCELORMITTAL trade mark in full with a hyphen and the word “construction” added to it. The Complainant’s ARCELORMITTAL trade mark is clearly recognizable in the disputed domain name. The gTLD “.com” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Apart from the Respondent’s bare assertions that he or she is the owner of the disputed domain name, the Respondent has not provided any relevant evidence to support his or her rights or legitimate interests in the disputed domain name.
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 made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no business or any kind of relationships (e.g., licensor, distributor, etc.) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name.
The disputed domain name used to resolve to a website bearing at its bottom the name of a hotel “合肥县东正时宾馆” (Hefei County Dongzhengshi Hotel), displaying apparently random advertisements for products including engineering polymers. It is currently inactive. Such use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Moreover, considering the Respondent did not provide any relevant evidence to substantiate his or her arguments in response to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trade mark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The disputed domain name was registered long after the Complainant had registered and used the ARCELORMITTAL trade mark and the domain name <arcelormittal.com>. Moreover, the Complainant is specialized in producing steel for use in automotive, construction, household appliances and packaging, and the additional word “construction” in the disputed domain name is arguably related to the Complainant’s area of business. Therefore, the Panel is satisfied that the Respondent must have known the Complainant and its ARCELORMITTAL trade mark when he or she registered the disputed domain name. Further, the Complainant has provided evidence that the Respondent had been using the disputed domain name to advertise various products. It appears to the Panel that the Respondent has registered the disputed domain name in order to create an association with the Complainant as a means of attracting users to the resolved website for commercial gain. Although the disputed domain name resolved to an inactive website at the date of this decision, the Panel finds that the inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3).
Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s marks in mind and has used the disputed domain name in bad faith. For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <arcelormittal-construction.com> be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: October 30, 2020
