Complainant is Barrett Steel Limited, United Kingdom, represented by DWF LLP, United Kingdom.
Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States of America / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.
The disputed domain name <barrettsteel.co> is registered with Sav.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 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 Complainant on August 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 10, 2020.
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 of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2020.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 18, 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.
Complainant is the biggest independent steel stockholder and steel supplier operating from 27 locations across the world and serving customers worldwide. Complainant was founded by Henry Barrett (after whom the business is named) 150 years ago and, since then, the products and services offered by the company are identified under the trademark BARRETT STEEL.
Complainant is currently the Headline Sponsor for The British Stockholding & Distribution Constructional Steelwork Association’s marketing development program – Steel for Life. In 2019, Complainant was ranked in The Sunday Times Top Track 250 as one of Britain’s private mid-market growth companies. Complainant’s turnover over the past three years (2017-2020) was approximately GBP 937M with approximately GBP 422K having been spent during that period on marketing, advertising and promotion under the sign BARRETT STEEL.
In addition, Complainant is the owner of the United Kingdom Registration number UK 00003409685, dated of June 26, 2019, for the trademark BARRETT STEEL, registered in international classes 6, 37, and 40.
Complainant also owns the domain <barrettsteel.com> which is in use since 2011.
The disputed domain name <barrettsteel.co> was registered on July 15, 2020. The disputed domain name redirects to a parking page with commercial links (“pay-per-click”) offering a range of services and goods, including those related to the steel industry.
Complainant submits that the disputed domain name <barrettsteel.co> is confusingly similar to its registered trademark BARRETT STEEL and its domain name <barrettsteel.com>. This is because the disputed domain name reproduces the name BARRETT STEEL in its entirety, making explicit reference to Complainant’s business.
Complainant also argues that the page hosted by the disputed domain name displays a landing page containing steel related product categories e.g. “Steel Buildings”, “Stainless Steel” and “Metal Buildings”. When clicking on each of these categories, it opens a list of sponsored advertisements for third party retailer/supplier websites.
Complainant affirms, thus, that when visiting the website hosted by the disputed domain name the consumers will reasonably believe that it is associated or affiliated with the Barrett Steel company. However, Respondent is not sponsored by or affiliated with Complainant, nor is licensed, authorized, or otherwise permitted to use its registered BARRETT STEEL trademark.
Considering this scenario, Complainant believes that the similarities mentioned hereto are persuading its consumers to wrongly believe that the website under the disputed domain name has any association with Rothschild & Co group, what is not true, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of BARRETT STEEL trademark, since it has no prior right to BARRETT STEEL sign and is not commonly known by the disputed domain name.
Complainant also alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, Respondent would be showing a clear intent to usurp the goodwill conquered by BARRETT STEEL trademark and obtain an unfair commercial gain by misleading Complainant’s consumers to click in “pay-per-click” links.
Complainant mentions that a respondent can make a bona fide offering of goods or services and thus have a legitimate interest in the disputed domain name only if certain requirements are met. However, in this case, Respondent would not have complied with those requirements. Therefore, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be also fulfilled.
ln conclusion, Complainant alleges that Respondent intentionally attempts to attract, for commercial gain, consumers to its website, creating a likelihood of confusion with Complainant and its BARRETT STEEL trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.
Respondent did not reply to the Complainant’s contentions.
To succeed, in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.
Complainant has duly proven that the first element under paragraph 4(a) of the Policy is met by evidencing that it has prior rights for a trademark registration for BARRETT STEEL in the United Kingdom, and that the disputed domain name <barrettsteel.co> is composed solely by such trademark. See, section 1.8 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is the consensus view of UDRP panels that the addition of a generic Top-Level Domain (“gTLD”), “.co” in this case, does not prevent the disputed domain name from being identical or confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Thus, the Panel finds that the disputed domain name <barrettsteel.co> is identical to Complainant’s trademark.
Therefore, the Panel considers the requirement of the first element of paragraph 4(a) of the Policy satisfied.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile 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.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of proof shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <barrettsteel.co>.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds it highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark BARRETT STEEL at the time of registration of the disputed domain name, taking into consideration its notoriety worldwide and that the disputed domain name was registered on July 15, 2020, that is, several years after Complainant’s registrations of the trademark and domain name <barrettsteel.com>. Therefore, evidence shows that Respondent was likely trying to create a likelihood of confusion with Complainant and its mark.
In this connection, the Panel notes that the disputed domain name resolves to a pay-per-click link farm, i.e. a web page in which there are several links for providers of goods and services competing with but not connected to Complainant, and such use of the domain name is further evidence of bad faith. In this sense, the Panel refers to the panel decision in VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925 (<vivocelulares.com>), as can be verified below:
“Because Respondent has registered the disputed domain name that uses a unique combination of terms associated with Complainant, and has only used the disputed domain name to direct Internet users to a pay-per-click link farm parking page that includes third-party competitors of Complainant, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.”
In fact, the disputed domain name is being used in connection with a commercial link service, or “link farm”, as it is designed to lure users and divert them to other commercial sites. This is not a bona fide offering of goods or services and does not confer a right or legitimate interest in the disputed domain name (see also e.g., Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).
Thus, the Panel concludes that Respondent acts in bad faith for the following reasons: (i) the widespread reputation of Complainant’s products and services made it highly unlikely that Respondent had no prior knowledge of Complainant’s rights regarding the trademark BARRETT STEEL at the moment that the disputed domain name was registered, and (ii) Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which the disputed domain name resolves.
Lastly, the Panel notes that, in conjunction with all abovementioned, Respondent’s use of a privacy service, preventing others to have access to its real identity, and the fact that Respondent did not present any response to the Complaint, reinforce the conclusion that Respondent acted in bad faith.
The Panel concludes that the disputed domain name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
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 <barrettsteel.co> be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: October 2, 2020