Complainant is Barrett Steel Limited, United Kingdom (“UK”), represented by DWF LLP, UK.
Respondent is Registration Private, Domains by Proxy LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 24, 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 April 28, 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2020. The Center notified Respondent’s default on May 21, 2020. Due to an administrative oversight, Respondent was granted until May 31, to submit a Response. Although written notice of the proceedings was successfully delivered, Respondent did not submit any response. Accordingly, the Center proceeded to the Panel appointment process. The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 15, 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 Complainant is the UK's largest independent steel stockholder and steel supplier. The Barrett Steel group consists of 44 steel stockholding companies and divisions operating from 27 locations across the UK and serving customers worldwide, under the mark BARRETT STEEL. The history of Complainant's use of the mark BARRETT STEEL in the UK in relation to steel stockholding and steel supply dates back over 150 years of continuous use. The mark appears on Complainant's promotional and advertising material, including its website at “www.barrettsteel.com”, which has been in use since 2011. 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 937 million with approximately GBP 422,000 having been spent during that period on marketing, advertising and promotion under the BARRETT STEEL mark. Complainant is the owner of the registered trademark for BARRETT STEEL (UK Trade Mark No. UK 00003409685, dated June 26, 2019). The mark is registered in respect of goods and services in classes 6, 37, and 40. Complainant recently became aware of the registration of the Domain Name by Respondent. On checking the content of the website linked to the Domain Name, Complainant found that this is a landing page listing seven steel/steel related product types, e.g., “Steel Expansion Plug”, “Steel Hole Cutter”. Each of these categories when clicked on, leads to a list of sponsored advertisements for third party retailer websites. Complainant contacted the Registrar in March 2020 to request a takedown of Respondent’s website, but at the time of filing this Complaint has not had any reaction from the Registrar. The Domain Name was registered by Respondent on July 17, 2019. 5. Parties’ Contentions A. Complainant (i) Identical or Confusingly Similar Complainant states that as a result of its business operations and promotional activities, it has acquired significant and substantial goodwill, reputation and common law rights in the UK in its BARRETT STEEL trademark in relation to the provision of steel stockholding and steel supply. The relevant trading public in the UK take Complainant's mark when used in relation to such activities as exclusively denoting the business of Complainant. Complainant claims the Domain Name is identical or confusingly similar to Complainant's trademark; the only difference being the use of one letter “t” in the word “barret”, instead of two. Complainant contends that the registration and use of the Domain Name by Respondent in the UK is highly likely to constitute infringement of Complainant’s BARRETT STEEL registered trademark and passing off in relation to Complainant's unregistered mark, as relevant members of the public in the UK are likely to be misled into believing that the Domain Name and any associated website, are that of Complainant or are in some way connected to and/or associated with it. The likelihood of confusion on the part of the public is only heightened by the fact that Complainant promotes its steel stockholding and steel supply services through the website “www.barrettsteel.com”. (ii) Rights or Legitimate Interests Complainant contends that serious issues are raised by the registration and use of the Domain Name by Respondent, which Complainant submits demonstrate that Respondent has no rights or legitimate interest in respect of the Domain Name. Complainant states that when the Domain Name is inputted into a web browser it resolves to an active website with click-through commercial/sponsored links, which redirect to other third party websites offering a range of services and goods, including “steel expansion plugs”, “steel hole cutters”, and “steel hole plugs”. Complainant asserts the Domain Name is being used by Respondent to create a likelihood of confusion with the BARRETT STEEL mark, to fraudulently solicit consumers to click on the links on Respondent’s website for commercial gain. In these circumstances, Complainant submits that Respondent is not making use of the Domain Name in connection with the bona fide offering of goods or services. There is also no evidence of Respondent making demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods or services. When a simple Google search is conducted for the term BARRETT STEEL, all of the results on the first page relate to Complainant's trademark. Complainant submits this demonstrates that Respondent is not commonly known by the name “barrett steel” and is unlikely therefore to have acquired any legitimate rights or interest in respect of the Domain Name. Complainant submits that Respondent is not entitled to any trademark, trade name or any other right in the name “barrett steel” (or “barret steel”). It has not sought any authorization or license to use the trademark. Respondent does not have any registered or unregistered trademark rights in connection with “barrett steel” (or “barret steel”) in the UK. There is no business relationship or affiliation between Complainant and Respondent to justify the use by Respondent of the trademark or any mark confusingly similar. Complainant argues that the fact Respondent chose to make use of a privacy service in an attempt to conceal its details on the WhoIs search is also suspicious, and again suggests that Respondent has no legitimate rights or interests in respect of the Domain Name. Complainant states there is no evidence that the registration of the Domain Name is for a legitimate noncommercial or fair purpose without intent for commercial gain to misleadingly divert consumer or to tarnish the trademark. Furthermore, by registering a domain name that is a close misspelling of the trademark and Complainant's domain name, Respondent's behavior also constitutes “typosquatting”. Such use does not constitute a legitimate business use under the Policy. For all of these reasons, Complainant is concerned about Respondent’s registration and use of the Domain Name. Accordingly, Complainant contends that Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name and that it should be transferred to Complainant. (iii) Registered and Used in Bad Faith Complainant asserts bad faith is demonstrated through Respondent's registration of the Domain Name, in knowledge of Complainant's rights in the BARRETT STEEL mark, and with the primary purpose of using it unlawfully to fraudulently solicit consumers to click on the links on Respondent's site. Respondent has intentionally attempted to attract for commercial gain internet users to Respondent’s Website by creating a likelihood of confusion with Complainant's BARRETT STEEL mark as to source, sponsorship, affiliation or endorsement of Respondent's website. Complainant submits that the registration of the Domain Name was made with full knowledge of Complainant, its business and its BARRETT STEEL mark. Respondent's knowledge of Complainant's rights can be presumed because BARRETT STEEL is a registered trademark and because of Complainant's longstanding and extensive use of the BARRETT STEEL mark. The Domain Name resolves to an active website with click-through commercial/sponsored links, redirecting to other third party websites offering a range of services and goods. Respondent presumably stands to profit or make a commercial gain from advertising revenue through such an arrangement with the sponsored third party websites. Furthermore, Complainant states that Respondent is engaging in typosquatting by registering the Domain Name as a typographical variant of Complainant’s trademark and Complainant’s domain name, and using sponsored links to redirect Internet users to websites offering third party goods and services. This deprives Complainant of the opportunity to sell its goods to prospective customers who are clearly looking for Complainant's website, and at the same time promotes the goods and services of third parties. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its BARRETT STEEL trademark, based on use of the mark in the UK and ownership of the trademark registration in the UK. Further, the Panel determines that the Domain Name is identical or confusingly similar to the BARRETT STEEL mark. Section 1.7 of the WIPO Overview 3.0, states that the test of confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name”. Here, the Panel determines that Domain Name is virtually identical (or at least confusingly similar) to Complainant’s BARRETT STEEL trademark, with the Domain Name omitting one “t” as compared to Complainant’s mark. The use of the generic Top Level Domain (“gTLD”) “.com” does not alter this analysis. Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its BARRETT STEEL trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used not only to resolve to a landing webpage with links that redirect users to products competitive with those of Complainant. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its BARRETT STEEL mark, and intentionally targeted that mark, when registering the Domain Name. The two words forming Complainant’s trademark, when combined, work to create a unique and distinctive brand and mark. The mark does not correspond to a common word, phrase or name used by third parties; instead, also owing to it’s longstanding use and marketing expenditures: it is unique. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive BARRETT STEEL trademark in its entirety, while omitting one “t”. This appears to be a case of typosquatting. Given the reputation of the BARRETT STEEL trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its BARRETT STEEL mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered). This point is further confirmed by Respondent’s use of the Domain Name in connection with a landing page containing links to third parties providing competitive goods. In these circumstances, it is clear that the Domain Name has been registered in bad faith and that Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the BARRETT STEEL trademark as to the source, sponsorship, affiliation, or endorsement. Respondent had an opportunity to submit a Response in this case in which it could deny these contentions; instead, it failed to provide a Response. In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third 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 Domain Name Christopher S. Gibson
Sole Panelist
Date: July 5, 2020
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