WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Metal Bulletin Limited v. Vitalii E Angelov, Centre.RU Ltd Case No. D2009-0687 1. The Parties
The Complainant is Metal Bulletin Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Addleshaw Goddard, London, United Kingdom.
The Respondent is Vitalii E Angelov, Centre.RU Ltd of Saint Petersburg, Russian Federation. 2. The Domain Name And Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2009. On May 27, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the Disputed Domain Name. On June 5, 2009, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 1, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on July 8, 2009. 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 Metal Bulletin Limited, a company which provides trading information, news, prices, consultancy services, analysis and research for the iron, steel, non-ferrous, scrap metal and industrial mineral markets. The Complainant has been trading in the UK since 1915. The Complainant's product and service offering includes its flagship publication “Metal Bulletin” which it has published in hardcopy in the UK since 1915. The Complainant began to distribute “Metal Bulletin” in Europe in or about the 1930's. The “Metal Bulletin” publication is also available in soft copy online. There are 5,329 subscribers to “Metal Bulletin” worldwide, the majority of which are based in the UK and Europe.
The Complainant registered the domain name in 1998 and also runs other web sites containing the METAL BULLETIN mark as their predominant element;, , and .
The Respondent is Vitalii E Angelov. The Disputed Domain Name was registered on April 14, 2008 and currently resolves to a web site entitled “Metallurgical Bulletin”. The “About” page on the web site to which the Disputed Domain Name resolves states, “Metallurgical Bulletin is an e-commerce web site, which has been developed with the main objective of becoming an instrument of daily use for buyers and suppliers worldwide in metals, mining and minerals industry…”.
The Complainant sent the Respondent cease and desist letters on March 25, 2009 and April 29, 2009. The Respondent did not reply to said letters. 5. Parties' Contentions A. Complainant
The Complainant submits that the Disputed Domain Name is identical to its common law trade mark. The Complainant contends that it has common law trade mark rights in the METAL BULLETIN mark by reference to the fact that it has been trading by reference to the mark in the United Kingdom for over 90 years, it has been offering its flagship publication “Metal Bulletin” in hardcopy in the UK since 1915 and it has operated its web site “www.” since 1998. The Complainant submits that it has a global reputation amongst those within the metals industry for trading under the METAL BULLETIN mark and that there is a particularly strong association between the Complainant and the mark in the United Kingdom and Europe.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant supports this contention by reference to the fact that the Respondent is neither the owner nor the licensee of any rights in the mark, and the Respondent is not, and has not been, commonly known by the Disputed Domain Name. The Complainant submits that the web site to which the Disputed Domain Name resolves is in fact controlled by Our Metals, a company registered in 2007.
The Complainant further submits that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with an offering of goods or services which is bona fide. The Complainant contests that given the longstanding reputation of the Complainant and its mark, the Respondent could not make a bona fide offering of goods or services using the METAL BULLETIN mark.
The Complainant contends that the Disputed Domain Name has been registered and is being used in bad faith. The Complainant supports this contention by reference to the fact that the Respondent knew, or at least ought to have known of the Complainant's rights in the mark at the time of registering the Disputed Domain Name.
The Complainant contends that the Respondent is using the Disputed Domain Name to deceive and confuse Internet users for financial gain. The Complainant submits that the Disputed Domain Name was registered in order to disrupt the business of the Complainant. The Complainant supports this submission by reference to the fact that before the Disputed Domain Name was transferred to the Respondent it was registered in the name of Mr. E Oakes, a former employee of the Complainant. The Complainant contends that Mr. E.Oakes was motivated by malice in registering and then transferring the Disputed Domain Name to the Respondent.
The Complainant seeks a transfer in accordance with paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary. 6. Discussion And Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that;
(i) the Disputed Domain Name is identical or confusingly similar to a trade 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 Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant does not rely on any registered trade mark rights in the term “metal bulletin”. Therefore, if the Complainant is to succeed it must prove that it has unregistered trade mark rights in the METAL BULLETIN mark.
Previous panels have held that for a complainant to establish unregistered trade mark rights the complainant must demonstrate that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes the length and amount of sales under the mark, the nature and extent of advertising, and consumer surveys and media recognition. Above All Advertising Inc. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-0775.
The Panel is satisfied that through the Complainant's longstanding use of the METAL BULLETIN mark it has acquired sufficient secondary meaning and serves as a distinctive identifier associated with the Complainant. Sufficient secondary meaning has been established based on the fact that the Complainant has been trading by reference to the METAL BULLETIN mark in the United Kingdom for over 90 years, it has been offering its flagship publication “Metal Bulletin” in hardcopy in the UK since 1915 and it has operated its web site since 1998, as well as registering a number of other domain names containing the METAL BULLETIN mark.
The Disputed Domain Name is made up of the common law trade mark METAL BULLETIN to which the generic top level domain “.net” has been added. The panel in Sensis Pty Ltd, Research Resources Pty Ltd v Kevin Goodall, WIPO Case No. D2006-0793 noted that:
“To make a true comparison between a trade mark and a domain name, the suffix of the domain name is ignored, enabling the real substance of the two expressions to be compared”.
The Panel is therefore satisfied that the “.net” generic top-level domain does not serve to distinguish the Disputed Domain Name from the Complainant's common law trade mark. The Panel therefore finds that the Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark and the Complainant has satisfied paragraph 4 (a)(i) of the Policy. B. Rights or Legitimate Interests
A Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of producing evidence establishing that it has rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to the Respondent of the dispute, use by the Respondent of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) Where the Respondent as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) Where the Respondent is making a legitimate non-commercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is generally regarded as prima facie evidence if; (a) a complainant shows that the disputed domain name is identical or confusingly similar to the complainant's trade mark; (b) that the respondent is not commonly known by the disputed domain name; and (c) that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
The Panel notes that the Disputed Domain Name is identical to the Complainant's METAL BULLETIN mark. The Panel accepts the Complainant's contentions that the Respondent is neither the owner nor the licensee of any rights in the METAL BULLETIN mark and that the Respondent is not, and has not been, commonly known by the Disputed Domain Name. The Panel is therefore satisfied that the Complainant has provided sufficient prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent has failed to file a response to the Complaint. It remains for the Panel to determine whether the Respondent has legitimate rights or interests in the Disputed Domain Name.
The panel in The Bruce Trail Association v. Andrew Camp and Bruce Trail Enterprises, WIPO Case No. D2001-1021 noted that where the disputed domain name is used to offer goods and services that are of a different type to those protected by the complainant's trade mark, the respondent may be regarded as making a bona fide offering of goods or services. However, the Panel notes that the web site to which the Disputed Domain Name resolves appears to be used by the Respondent to offer similar information services to the metals industry as to those provided by the Complainant under the METAL BULLETIN mark.
The Panel considers that the Complainant has established that it had developed substantial goodwill and reputation in the METAL BULLETIN mark at the date of registration of the Disputed Domain Name in 2008. The Panel considers it reasonable to infer that a competitor operating in the UK and European metal industry would have been aware of the Complainant's reputation subsisting in the UK and Europe in 2008. The Panel infers that the Respondent, through his registration and use of the Disputed Domain Name, is intentionally exploiting the Complainant's goodwill by attracting and diverting Internet users who wish to access the Complainant's web site. In all the circumstances, and as the Respondent has failed to supply evidence to the contrary, the Panel infers that the Respondent is not making a bona fide offering of goods or services.
Paragraph 4(c)(ii) of the Policy is not satisfied as there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name. Neither is there any evidence that the Respondent has been making a non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain.
In all the circumstances the Panel therefore finds the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and as such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on respondent's website or location.
For the purposes of paragraph 4(b)(iv) of the Policy the Complainant contends that the Respondent is using the Disputed Domain Name to deceive and/or confuse Internet users for financial gain. As noted, the Complainant has developed a substantial reputation in the METAL BULLETIN mark within the metals industry. The Panel cannot objectively reason why the Respondent would use the Complainant's trade mark in the Disputed Domain Name for any other reason save as to create a likelihood of confusion amongst Internet users with the Complainant's common law trade mark. The fact that the Disputed Domain Name also resolves to a web site offering an information service for stakeholders in the metals industry is likely to cause further confusion amongst Internet users with the Complainant's mark. In the absence of any evidence to the contrary the Panel is willing to infer that the Disputed Domain Name is being used by the Respondent in bad faith for financial gain.
For the purposes of paragraph 4(b)(iii) the Complainant contends that the Disputed Domain Name was registered in order to disrupt the business of the Complainant. The Complainant supports this contention by reference to the fact that Mr. E. Oakes, a former employee of the Complainant registered the Disputed Domain Name and transferred it to the Respondent only after the Complainant sent him a cease and desist letter on the February 16, 2009. The Complainant submits that Mr. Oakes may have had a grudge against the Complainant and that Mr. Oakes was motivated by malice in registering the Disputed Domain Name and transferring it to the Respondent. The Complainant has provided evidence that Mr. Oakes and the Respondent were both employees of Our Metals, the company the Complainant believes to be in control of the Disputed Domain Name. The Complainant contends that Mr. Oakes transferred the registration of the Disputed Domain Name in bad faith and that the Respondent accepted it, and has allowed it to be used since then in bad faith.
The panel in RuggedCom, Inc v. LANstore, Inc, WIPO Case No. D2005-0760 noted that to establish bad faith registration as set out in paragraph 4(b)(iii), the following three elements must be made out;
(i) the respondent knew of the complainant's business,
(ii) the “primary purpose” of the respondent's registration of the disputed domain name was to disrupt the complainant's business,
(iii) the respondent and the complainant are competitors.
The Panel is willing to infer, based on the evidence provided by the Complainant and in the absence of any evidence to the contrary having been put forward by the Respondent that;
(i) the Respondent was aware of the Complainant's business when he registered the Disputed Domain Name,
(ii) as the Respondent appears to be using the Disputed Domain Name to offer an information service to the metals industry in competition with the Complainant, the Respondent's primary purpose was to disrupt the complainant's business,
(iii) as the Respondent appears to be using the web site to which the Disputed Domain Name resolves to provide similar goods and services to those of the Complainant the Respondent and Complainant are competitors.
The Panel accepts the Complainant's contention based on Telstra Corporation Limited v. Norman Fry, WIPO Case No. D2001-0757 that the Respondent's failure to reply to the cease and desist letters sent to him on March 25, 2009 and April 29, 2009 is further evidence of bad faith on the part of the Respondent.
The Panel infers that in all these circumstances the Complainant has established that the Respondent registered and used the Disputed Domain Name in bad faith.
Accordingly the Panel considers that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: July 15, 2009
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