Created in 2006 as a result of the merger between Mittal Steel and Arcelor, ArcelorMittal is a worldwide integrated steel group represented by its media astute CEO, Lakshmi Mittal. The latter’s name is at the heart of URS (Uniform Rapid Suspension) proceedings, a procedure specifically implemented for the launch of the new gTLDS.
The gTLD .ceo meaning “chief executive officer” has been available to the public since March 26th, 2014. The domain name mittal.ceo was registered as soon as the gTLD became available. The registrant also created various email addresses including ContactMe@Mittal.CEO. Since the trademark MITTAL is registered at the Trademark Clearing House (TMCH), ArcelorMittal was immediately notified of cybersquatting. The company took action on the same day by filing a request for the suspension of the domain name at the National Arbitration Forum (NAF).
In its decision of April 4th, the NAF panel held that all the conditions of the URS proceedings are met. Firstly, the domain name was identical to the applicant’s trademark MITTAL. The gTLD was not found to be relevant, which is in line with recent decisions by the Centre. However, where a domain name contains a well-known surname, the gTLD may be taken into consideration as it is the name of a corporate executive (.ceo).
In addition, the registrant stated having planned more projects with the mittal.ceo domain name; however the domain name is inactive. Moreover, as the trademark MITTAL is registered with the TMCH, the registrant would have received notification that he may be infringing a trademark right. Finally, the registrant does not have the surname MITTAL; which may have given him a legitimate interest for registering the domain name. Consequently, no rights or legitimate interests were found in favour of the registrant.
Finally, the Examiner considered that the registration of the domain name by the registrant was done in bad faith since he was fully aware of the existence of an identical trademark. Although the domain name is inactive, the creation of email addresses shows that the domain name is used in such a way as to create potential confusion with the trademark right. Therefore, the use was also in bad faith.
The Examiner thus ordered the suspension of the domain name for the duration of the registration.
This decision seems to be in line with previous URS decisions. In the case at hand, it was clear cybersquatting, hence an immediate response was called for.
With the . ceo gTLD, the names of corporate executives are at high risk of cybersquatting. Companies must consider registering the names of their corporate executives as trademarks, a key condition for bringing extrajudicial action against the registrant of a domain name. At the very least, the registration of domain names with the .ceo gTLD is strongly recommended as a pre-emptive measure.
Dreyfus law firm is an accredited agent by the TMCH and can assist you in better managing your domain name disputes. Please do not hesitate to contact us for any further queries.