Complainant is BlueScope Steel Limited of Melbourne, Victoria, Australia, represented by Davies Collison Cave, Australia.
Respondent is Rabi Joes of Canterbury, New Zealand. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On February 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on April 3, 2014. 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
Complainant is an international steel solutions company registered in Australia, specializing in the manufacture, marketing and provision of high quality steel and metal products to members of both industry and the public in Australia, New Zealand, Asia, and North America. Complainant operates in at least 17 countries, employing more than 16,000 people.
Complainant has been incorporated since March 15, 1921. After a corporate name change, Complainant has carried on business under the name BlueScope Steel Limited since November 17, 2003. Complainant has also been listed on the Australian Stock Exchange (“ASX”) since July 15, 2002.
Complainant holds many trademark registrations for the BLUESCOPE Mark in various countries throughout the world, including Australia, New Zealand, the United States, Canada, Indonesia, among others throughout Asia. Complainant’s earliest Australian trademark registration No. 957656 is of June 12, 2003 (Annex 5 to the Complaint). As of January 8, 2000, Complainant is the registered owner of the domain name , which automatically redirects users to Complainants’ website .
Respondent registered the Disputed Domain Name on January 28, 2014. 5. Parties’ Contentions A. Complainant
Complainant is a large global steel solutions company and its BLUESCOPE Mark is well known in connection with the manufacture and provision of steel and metal products worldwide. Complainant contends that these well-known rights in respect of the BLUESCOPE Mark have been recognized in prior panel discussions. See Bluescope Steel Ltd v. Fan Zouxin, WIPO Case D2008-0207; Bluescope Steel Ltd v. Werping Zhing, weipingzheng,WIPO Case No. D2013-1910.
Complainant contends that the Disputed Domain Name incorporates and is confusingly similar to Complainant’s BLUESCOPE Mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s BLUESCOPE Mark. Complainant observes that the Disputed Domain Name fully incorporates the BLUESCOPE trademark. Complainant observes that the only differences between Complainant’s BLUESCOPE Mark and the Disputed Domain Name are the additions of the letters “stl,” which Complainant contends is an abbreviation for the word “steel,” and the generic Top-Level Domain (“gTLD”) reference “.com”.
Complainant contends that Respondent cannot demonstrate any legitimate interest in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy. Complainant contends that neither Respondent nor any individual, business, or organization associated with Respondent has been authorized by Complainant to use its BLUESCOPE Mark in the Disputed Domain Name. Complainant contends that Respondent’s use of Complainant’s BLUESCOPE Mark was commercial in nature. However, Complainant further alleges that the use was not related to a bona fide offering of goods or services. Rather, Complainant contends that Respondent used the BLUESCOPE Mark to take advantage of Complainant’s reputation and goodwill in perpetrating a scam to recover Complainant’s debts from its overseas customers.
Lastly, Complainant contends that the Disputed Domain Name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. Moreover, Complainant contends that Respondent’s use of the Disputed Domain Name is an attempt to attract and dupe Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s BLUESCOPE Mark and its business as to the source, sponsorship, affiliation, or endorsement of Respondent. Complainant contends that Respondent did so for the purpose of pursuing Complainant’s debts from unassuming debtors in Canada. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Respondent provided no Response, and the deadline for so doing expired on March 27, 2014. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the BLUESCOPE Mark. The Disputed Domain Name and Complainant’s BLUESCOPE Mark are not identical, and, therefore, the issue is whether the Disputed Domain Name and Complainant’s trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant’s BLUESCOPE Mark; (2) the letters “stl,” which may be an abbreviation for the word steel; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “bluescopestl”), as it is well-established that the gTLD (i.e., “.com”) may be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR). Here, the Disputed Domain Name incorporates the BLUESCOPE Mark in its entirety.
Moreover, the addition of the letters “stl” as a suffix does not mitigate the confusing similarity between the Disputed Domain Name and Complainant’s BLUESCOPE Mark, since the Disputed Domain Name gives the overall impression of being associated with Complainant’s BLUESCOPE Mark despite the addition of these three letters. Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798 (finding that domain names and gave the overall impression of being associated with complainant’s WIKIPEDIA mark). Further, “stl” could increase the risk of confusion with Complainant’s BLUESCOPE Mark and Complainant itself, given that it may be viewed by the public as an abbreviation for “steel” as Complainant suggests. See Eleven v. Howword Flower,WIPO Case No. D2013-1423 (finding the addition of letters “fr” to complainant’s “Eleven Paris” mark in respondent’s domain name increased the risk of confusion with complainant’s mark since it could be viewed as a reference to France, the country where the complainant was based).
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s BLUESCOPE Mark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights to use the BLUESCOPE Mark. Complainant has alleged, and Respondent has not denied, that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, is not commonly known by the Disputed Domain Name, and is misleading Complainant’s customers for financial gain.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel is convinced that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website. Registered in Bad Faith
The Panel finds that Respondent likely knew of Complainant’s BLUESCOPE Mark when it registered the Disputed Domain Name given that Complainant is a large, internationally recognized Australian public listed company, doing business in the steel industry since 1921. See Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (“[S]ince Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant’s trademark rights.”).
Further, the provision of false registration details has been recognized as evidence of bad faith. See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138.
Based upon the foregoing circumstantial evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. Use in Bad Faith
The Panel also finds that Respondent used the Disputed Domain Name in bad faith.
Respondent appears to be holding the infringing domain name, without active use. However, this holding in conjunction with the failure of Respondent to respond to communications and the provision of a false identity to the Registrar, gives clear indications of use in bad faith. See Clerical Medical Investment Group Limited v. C,WIPO Case No. D2000-1228 (finding conclusive evidence of use in bad faith when Respondent registered and held a domain name incorporating complainant’s trademark, and failed to respond to communications and complainant’s allegations).
Moreover, Complainant alleges, and Respondent has not denied, that Respondent is using the Disputed Domain Name in an attempt to derive financial benefit by misleading Complainant’s debtors so that Respondent may collect Complainant’s outstanding debts.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy. 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 be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: April 15, 2014
Full & Egal Universal Law Academy