WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Columbia Metals Ltd v. Terra Serve
Case No. D2013-0958
1. The Parties
The Complainant is Columbia Metals Ltd of Earls Barton, Northamptonshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
The Respondent is Terra Serve of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <columbiametals.com> (the “Domain Name”) is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed through the online system with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2013. On May 29, 2013, the Center requested the Complainant to clarify the trademark on which it relied and to specify whether it was registered or unregistered. The Complainant replied on May 30, 2013, stating that it relied on the unregistered trademark COLUMBIA METALS.
The Center transmitted its request for registrar verification to the Registrar by email on May 30, 2013. The Registrar replied on May 31, 2013, confirming that the Respondent is listed as the registrant and providing the contact details held on its database in respect of the Domain Name. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name would expire on December 2, 2013 and had been placed and would remain during this proceeding on registrar lock or equivalent, and that the language of the registration agreement is English.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2013.
The Center appointed Jonathan Turner as the sole panelist in this matter on July 2, 2013. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant was incorporated under the name Columbia Metals Limited in 1961 and has traded since then as a stockholder of non-ferrous metals. It operates a website at “www.columbiametals.co.uk” in which its company name is prominently displayed in the banner as well as being used as the name of the business in the text. The Complainant’s business is also promoted under its company name on other websites.
The Domain Name was registered on March 12, 1998. Currently it does not resolve to any active website.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its unregistered mark, COLUMBIA METALS, which it has used as the name of its business of stockholding non-ferrous metals since 1961. The Complainant submits that it has a reputation and goodwill under this name which could be protected by an action for passing off under English law.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the Domain Name. It states that it has not licensed the Respondent to trade as an agent or distributor or given it permission to use the name “Columbia Metals”, that the Respondent is not commonly known by the Domain Name, and that the Respondent has not used or made demonstrable preparations to use the Domain Name in connection with any bona fide offering of goods or services. The Complainant alleges that the Respondent’s website contains sponsored links relating to metal and metal-related products and attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s name, which is reinforced by a picture of a metal foundry.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. It asserts that the Domain Name has not been used for any legitimate activity since it was registered in 1998 and that by using it the Respondent has attempted to cause confusion with the Complainant’s name as to the source, sponsorship, affiliation or endorsement of the Complainant’s website or of a product or service offered by the Complainant. The Complainant also draws attention to other cases where the Respondent has registered and used domain names similar to other parties’ trademarks in bad faith.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the unregistered mark COLUMBIA METALS by virtue of the reputation and goodwill established through its use as its trading name since 1961. In the light of the matters mentioned in the Complaint, the Panel is satisfied on the basis of the evidence submitted, and the reasonable, unrebutted, and specific assertions made in the Complaint that for those interested in non-ferrous metals in the United Kingdom this mark denotes the Complainant and its business and that it would be protected by the English law of passing off.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the generic top level domain suffix “.com” and the omission of the space between the words “Columbia” and “Metals”, which Internet users anticipate since a space is an inadmissible character in a domain name.
The Panel concludes that the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. In the absence of any evidence to the contrary, the Panel accepts the Complainant’s statements that it has not granted the Respondent permission to use its name, that the Respondent is not commonly known by the Domain Name, and that the Respondent has not used or made any demonstrable preparations to use the Domain Name in connection with any bona fide offering of goods or services.
If, as the Complainant states and the Panel accepts, the Respondent’s only use of the Domain Name has been for a web page containing sponsored links to websites of third parties trading in the same area of goods and services as the Complainant, the Panel does not regard this as a bona fide offering of goods or services.
It is also evident that the Respondent is not making legitimate non-commercial or fair use of the Domain Name.
There does not appear to be any other basis on which the Respondent could claim any rights or legitimate interests in respect of the Domain Name. On the balance of probabilities, the Panel finds that the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the undisputed evidence that the Respondent has used the Domain Name intentionally to attract Internet users to a web page containing sponsored links to competing third party websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to its source, sponsorship, affiliation or endorsement.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith. There is no material in the file which displaces this presumption, and it is reinforced by the evidence of other bad faith registrations by the Respondent. Accordingly the Panel finds on the balance of probabilities and on the basis of the evidence before it that the Domain Name has been registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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 <columbiametals.com> be transferred to the Complainant.
Date: July 14, 2013