WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barrett Steel Limited v. Web Hosting

Case No. D2021-0055

1. The Parties

The Complainant is Barrett Steel Limited, United Kingdom (“UK”), represented by DWF LLP, United Kingdom.

The Respondent is Web Hosting, Kenya.

2. The Domain Name and Registrar

The disputed domain name <barrettsteelltd.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2021. On January 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2021, 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 the Complainant on January 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 11, 2021.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 24, 2021.

The Center appointed Dennis A. Foster as the sole panelist in this matter on March 1, 2021. 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

Founded more than 150 years ago, the Complainant is an established UK company that processes and distributes steel products in the UK and other countries. The Complainant conducts its operations under the BARRETT STEEL trademark, which has been registered with the UK Intellectual Property Office (“UKIPO”) (i.e., Registration No. UK00003409685; registered on October 11, 2019).

The Respondent is confirmed by the Registrar as the registrant for the disputed domain name, <barrettsteelltd.com>, which was registered on December 11, 2020. The disputed domain name resolves to the Complainant's website.

5. Parties’ Contentions

A. Complainant

The Complainant, which processes and distributes steel products, is domiciled in the UK and has been in operation for more than 150 years. It is the largest independent steel company in the UK and conducts business on a worldwide basis. The Complainant has used the BARRETT STEEL trademark for almost all of its existence, and has also utilized its domain name, <barrettsteel.com>, for company dealings since 2011.

The disputed domain name is confusingly similar to the Complainant's BARRETT STEEL trademark. The mark is completely contained within the disputed domain name, and the addition of “ltd” fails to reduce confusion because the result simply reflects the Complainant's registered company name.

The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name simply redirects Internet users to the Complainant's website, which does not constitute use in connection with a bonafide offering of goods or services or for legitimate noncommercial or fair use purposes. Moreover, the Respondent has never sought authorization or license from the Complainant to use its mark. Also, there is no evidence that the Respondent is commonly known as the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent was surely aware of the Complainant's trademark due to its strong reputation in the UK and throughout the world. The Respondent's intent is to trade off that reputation in a bad faith manner. Furthermore, the Respondent's concealment of its true name as registrant of the disputed domain name is a clear indication of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and grant it a transfer of the disputed domain name, <barrettsteelltd.com>, provided the Complainant demonstrates that:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted to the Panel conclusive evidence of a valid UKIPO registration for the BARRETT STEEL trademark, and thus the Panel finds that the Complainant has sufficient rights in that mark for the purposes of Policy paragraph 4(a)(i). See, Skyscanner Limited v. Domain Administrator, WIPO Case No. D2020-2939; and Daily Mail and General Trust Plc v. Sun Stefen, WIPO Case No. D2018-0818 (“The Panel accepts the uncontested evidence in the form of a copy of the UKIPO registration document that the Complainant has rights as required under the Policy in the trademark DMGT.”).

The disputed domain name contains in full the Complainant's BARRETT STEEL trademark. The only additions are “ltd” and the generic Top-Level Domain (“gTLD”), “.com”. The addition of “ltd” offers virtually no distinction with the mark, as that term is the common abbreviation for “limited" and the full company name of the Complainant is “Barrett Steel Limited”. Also, it is well settled under prior Policy decisions that the inclusion of a gTLD within a disputed domain name creates no basis for distinguishing that name from a valid trademark. As a result, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark. See, ICICI Bank Limited v. Domain Dmin, Transfer Discounter, WIPO Case No. D2020-2492 (finding <icicibankltd.com> to be confusingly similar to the ICIC BANK service mark); and Brewin Dolphin Limited v. Global Domain Privacy / Doudou Sow, WIPO Case No. D2018-0184, (where <brewindolphinltd.com> was held to be confusingly similar to the mark, BREWIN DOLPHIN).

Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus of previous Policy decisions that a complainant need only put forth a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, and then the burden of production passes to the respondent to produce direct evidence of those rights or legitimate interests. See, for example, Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In addition to demonstrating that the disputed domain name is confusingly similar to the BARRETT STEEL trademark, the Complainant has claimed that the Respondent was not granted authorization or license by the Complainant to use that mark for any reason. Therefore, the Complainant has met the minimum standard required to sustain a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent having failed to respond in these proceedings, the Panel nonetheless will search the record for evidence that the Respondent has rights or legitimate interests in the disputed domain name while accepting as true any reasonable contentions submitted by the Complainant. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“[...] the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.”); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“Given Respondent's failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).

The Panel accepts the Complainant's contention, supported by evidence attached to the Complaint (Annex 7), that the disputed domain name is used to redirect Internet users to the Complainant's website. The Panel finds that this is not a bona fide offering of goods or services as might have met the criterion for rights or legitimate interests in a disputed domain name per Policy paragraph 4(c)(i). See, Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533 (“The apparent lack of rights or legitimate interests in the disputed domain name is supported by the invisible redirection to the Complainant’s official website, indicating there is very likely no connection with a bona fide offering of goods and services.”); and Bureau Veritas v. Xavier Garreau, WIPO Case No. D2017-1570 (“[...] the disputed domain name redirects to the Complainant's official website, without authorization [...] this does not claim for a use of the disputed domain name in connection with a bona fide offering of goods or services.”).

As the Complainant contends, the Respondent does not seem to have used its actual name as a company to register the disputed domain name. This use of a “privacy service” to conceal its identity makes any claim that the Respondent is commonly known as the disputed domain name seem all the more unlikely. Therefore, the Panel concludes that Policy, paragraph 4(c)(ii) is inapplicable to this case.

While it is not clear to the Panel whether or how the Respondent might profit monetarily from the disputed domain name's redirection to the Complainant's website, the Panel determines that this action does not constitute a legitimate noncommercial or fair use of the disputed domain name per Policy, paragraph 4(c)(iii). See, Equinor ASA v. WhoisGuard Protected, WhoisGuard, Inc. / Iuzza Kucz, WIPO Case No. D2021-0096 (“The Panel observes that the Disputed Domain Name redirects to the Complainant’s website. According to the Panel, this is not a legitimate noncommercial or fair use of the Disputed Domain Name.”).

Since the Panel detects no feasible rebuttal on behalf of the Respondent to the Complainant's prima facie case, that case must be found conclusive as to the Respondent's lack of rights or interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four circumstances, the confirmation of any of which would provide sufficient evidence for a finding of bad faith registration and use of a disputed domain name. However, that finding is not intended by the Policy to be confined only to those circumstances. See, Equinor ASA v. WhoisGuard Protected, WhoisGuard, Inc. / Iuzza Kucz, WIPO Case No. D2021-0096 (“Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.”).

As noted above, the Panel has accepted the Complainant's contention that the disputed domain name resolves to the Complainant's website. In the Panel's view, this simple redirection to an already existing website is equivalent to the Respondent making no use of the disputed domain name. It is well established by prior UDRP decisions that nonuse of a disputed domain can give rise to a finding of bad faith registration and use. See, WIPO Overview 3.0, section 3.3; and Telstra Corporation Limited v. Nuclear Marshmallows, supra. Even if the redirection was to be considered as an active use, such use would qualify as bad faith under the Policy, noting the composition of the disputed domain name, which would make the redirection an unjustifiable bad faith threat hanging over the head of the Complainant and, as such, a continuing bad faith use of the disputed domain name (Securitas AB v. Advocaat Peter, WIPO Case No. D2020-2126).

In this case, the Panel observes that the Respondent has deliberately concealed its identity in registering the disputed domain name and has failed to file a Response. Moreover, the Panel believes that the Respondent must have been aware of the Complainant and its well-established trademark, as evidenced by the redirection of the disputed domain name to the Complainant's website. Given these additional indications of bad faith, the Panel concludes that nonuse of a disputed domain name in the form of redirection to the Complainant's pre-existing website is conclusive evidence of bad faith registration and use of the disputed domain name. See, Securitas AB v. Davina Rodrigues / Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2016-0890; Statoil ASA v. Domains By Proxy, LLC / John Brendon, WIPO Case No. D2013-1074; and CSC Holdings, Inc. v. cablevision-lightpath.com Inc., WIPO Case No. D2004-1057 (“The Panel finds that the Respondent was simply trying to avoid the appearance of bad faith when the domain name at issue automatically redirected to Complainant’s website, “www.lightpath.ne”'. If ownership of the domain name at issue remains with the Respondent, it can obviously be re-directed to another website of Respondent’s choosing. The Panel cannot conclude that bad faith is not present simply because no measurable harm has yet been done.”).

Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.

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, <barrettsteelltd.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: March 15, 2021