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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berg Europipe Holding Corp. v. Joel Powell

Case No. D2013-1625

1. The Parties

The Complainant is Berg Europipe Holding Corp. of Panama City, Florida, United States of America, represented by Morrison Cohen LLP, United States of America.

The Respondent is Joel Powell of Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <bergsteelpipecorp.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2013. On September 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 18, 2013, the Registrar 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 September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2013.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on November 4, 2013. 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 a New York corporation wholly owned by Europipe GmbH, a leading manufacturer of large-diameter steel line pipe.

The Complainant has registered on the Principal Register of the United States Patent and Trade Mark Office (USPTO) the following U.S Federal trade mark registrations:

- BERG, in classes 6 and 40, registration number 3,762,244;

- BERG STEEL PIPE CORP. A Company of the Europipe Group, in class 6, registration number 3,739,230;

- BERG STEEL PIPE CORP. A Company of the Europipe Group, in class 40, registration number 3,738,881;

- BERG PIPE, in class 40, registration number 3,739, 288.

together the “Berg Steel Marks”.

The Complainant has been using the Berg Steel Marks since at least December 1996.

The Domain Name was registered on June 3, 2013.

After discovering the existence of the Domain Name, the Complainant’s legal counsel notified the Respondent, through the address provided by the Registrar, requesting the Respondent cease and desist in all use of the “bergsteelpipecorp.com” name and the Domain Name and that the Respondent transfer the rights to the Domain Name to the Complainant.

The Complainant did not receive an answer from the Respondent to its cease and desist email and filed the present Complaint on September 16, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical and confusingly similar with its Berg Steel Marks and that the Domain Name is the exact duplicate of the mark BERG STEEL PIPE CORP which the Complainant claims to have used in commerce since at least 1996.

The Complainant also contends that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent’s website at the Domain Name attempted to generate generic advertising revenue through the use of the Complainant’s Berg Steel Marks to direct web traffic.

The Complainant also claims that the Respondent is conducting an elaborate phishing and spamming scheme utilizing the Domain Name’s email. Specifically, the Complainant contends that the Respondent has sent numerous emails using a “Bergsteelpipecorp” email address to lawyers and others across the United States, claiming to be persons employed by or associated with the Complainant and seeking legal services on behalf of the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:

(i) The domain name is identical or confusingly similar to a trade mark 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.

Paragraph 5(e) of the Rules provides that if a respondent fails to submit a response (as in this case) in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.

A. Identical or Confusingly Similar

The Domain Name is composed entirely of the mark BERG STEEL PIPE CORP and the first element of the trade mark BERG STEEL PIPE CORP. A Company of the Europipe Group. The trademarks BERG PIPE and BERG are both wholly encompassed within the Domain Name, which also includes the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that the “.com” gTLD may be considered irrelevant for the purposes of determining whether a domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights under paragraph 4(a)(i) of the Policy (see, for example, Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499).

Therefore, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s Berg Steel Marks under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples (without limitation) where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following:

(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name;

(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.

Based on the Respondent’s default and on the prima facie evidence provided in the Complaint, the Panel finds that the above circumstances are not present and the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant argues that the Respondent is not known by the name “bergsteelpipecorp” and is not using that mark or the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent’s site attempted to generate advertising revenue, using the Complainant’s trade marks to direct web traffic. The Complainant provided at Annex 12 to its Complaint a screenshot showing the website at the Domain Name on July 31, 2013, which shows the Domain Name in use as described by the Complainant.

The Panel notes that the website operating from the Domain Name, on November 13, 2013 displayed a notice that stated “Sorry! This site is not currently available”.

The Complainant also argues that an email address attached to the Domain Name was used by the Respondent to carry out phishing activities and spam attacks. The Complainant provided copies of numerous emails sent from email addresses “[name]@bergsteelpipecorp.com” as evidence of the spam campaign.

The Complainant included, as Annex 14, 15, 16 and 17 to its Complaint, copies of four UDRP decisions which hold that registering and using a domain name for the purposes of conducting a phishing scheme is use in bad faith (Google Inc v. Robert Takovich, WIPO Case No. DMX2012-0006; BinckBank N.V. v.Silue Tiessolikaabdoul, WIPO Case No. D2011-1980; Confederation Nationale du credit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001; Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031.

The Panel finds that the Complainant has proved that the Domain Name was registered and is being used in bad faith, satisfying 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, <bergsteelpipecorp.com>, be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: November 15, 2013

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