WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barrett Steel Limited v. Klevin Frank, Harmony Investment Limited
Case No. D2020-0981
1. The Parties
The Complainant is Barrett Steel Limited, United Kingdom, represented by DWF LLP, United Kingdom.
The Respondent is Klevin Frank, Harmony Investment Limited, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <baretsteel.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
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 disputed domain name. On April 23, 2020, 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 April 26, 2020 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 April 29, 2020.
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 May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 29, 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
The Complainant is one of the largest independent steel stockholder and steel suppliers in the United Kingdom and operates under the BARRETT STEEL mark (the “Mark”). The Complainant and/or its group companies have been using the Mark continuously for 150 years, including on its website at “www.barrettsteel.com” which has been in use since 2011.
The Complainant’s turnover over the past three years was approximately GBP 937 million with approximately GBP 422,000 having been spent during that period on marketing, advertising and promotion under the Mark. The Complainant has also registered the Mark as a trade mark in the United Kingdom, under trade mark number 00003409685, which was registered on June 26, 2019.
The disputed domain name was registered on March 5, 2020. It appears to have been used immediately to send an email to which, for the reasons set out below, the Complainant took exception and in respect of which the Complainant on March 6, 2020 sought from, and was granted by, the registrar an immediate takedown. There is accordingly no active website currently being operated from the disputed domain name.
5. Parties’ Contentions
The Complainant submits that, in addition to its registered trade mark rights, it has acquired significant and substantial goodwill and reputation in the Mark as a result of its continuous use throughout the United Kingdom, where the Respondent resides, over the last 150 years. The Complainant states that when an Internet search is conducted for the Mark, all the results on the first page relate to the Complainant, demonstrating that the Respondent is not commonly known by the Mark.
The Complainant submits that the disputed domain name is identical or confusingly similar to the Mark, with the only difference being the use of only one letter “r” and one letter “t”, i.e. replacing “barrett” with “baret”. The Complainant contends that relevant members of the public in the United Kingdom are likely to be misled into believing that the disputed domain name and any associated website, or any associated email address, are that of the Complainant or are in some way connected to and/or associated with it, contrary to the fact.
The Complainant alleges that on March 6, 2020, a contact forwarded an email dated March 5, 2020, which had in turn been received via a supplier on that date. The email is purported to have been sent from the email address “[...]@baretsteel.com”, i.e. the disputed domain name. The subject of the email is “Request for quotation from Barrett House” and its author claims to have an enquiry for a business arrangement for the supply of products from the recipient of the email, while requesting that certain information be sent to it.
The Complainant points out that “Barrett House” is not the name of any registered company in the United Kingdom but that it is the building name of the Complainant’s registered address. The Complainant also notes that the body of the email refers to the Complainant’s registered address and sets out the website address “www.barrettsteel.com”, which is the genuine website address of the Complainant’s website. Other information in the email appears to have been copied from other company websites not associated with the Complainant.
The Complainant submits that the Respondent has not sought any authorisation or licence to use the Mark and that there is no business relationship or affiliation between the Complainant and the Respondent to justify the use by the Respondent of the Mark or any mark confusingly similar thereto in the disputed domain name or otherwise.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has been used to create a likelihood of confusion with the Complainant. It notes that there is no evidence that the Respondent is making demonstrable preparations to use the disputed domain name in connection with the bona fide offering of goods or services, not least because the email referred to above was sent the same day as the disputed domain name was registered, incorporated the Complainant’s registered office address, and refers to the Complainant’s domain name <barettsteel.com>.
The Complainant argues that the registration of the disputed domain name was made with full knowledge of the Complainant and with the aim of impersonating the Complainant, as evidenced by the email sent by the Respondent on the very day the disputed domain name was registered, which amounts to both registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
The Panel therefore accepts that the disputed domain name is confusingly similar to the Mark since it is an obvious misspelling of the Mark, comprising the omission of a second “r” and a second “t” from the word “barrett” in the Mark. These are minor differences and do not alter the phonetic or conceptual similarity between the disputed domain name and the Mark.
The disputed domain name is clearly intended to appear, and is, confusingly similar to the Mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter this conclusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark enjoys a degree of distinctiveness that has arisen through 150 years of use in the United Kingdom, which makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the disputed domain name or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
Section 2.13.1 of the WIPO Overview 3.0 states that: “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” Although the Complainant’s swift action in respect of the registration of the disputed domain name and the sending of the March 5, 2020 email means that there is limited evidence of use before the Panel, it seems highly likely, given the speed with which the Respondent impersonated the Complainant and sought to engage a third party in the supply of goods to it while misrepresenting its identity (which is an increasingly common form of fraud being perpetrated online), that the disputed domain name was acquired for the purposes of, and was in the early stages of, illegal activity.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered many years after the Complainant and its group companies first began using the Mark, and accepts that the disputed domain name was chosen by reference to the Mark.
The disputed domain name is a clear example of a typosquatting domain name, that is, one which was chosen with a trade mark owner in mind, for the purpose of diverting traffic or business away from that trade mark owner by capitalising on Internet users’ typographical mistakes or misreading of a domain name.
As a result, and in the absence of robust evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith since it is being used for a commercial purpose that involves misleading Internet users into believing that they are dealing with the Complainant.
Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” As discussed above, the disputed domain name appears to have been used to try to solicit custom from a third party in the name of the Complainant, without any justification for doing so. This is an unacceptable use of the Complainant’s trade marks.
The Panel accepts that, as a result of the Complainant’s swift action as described above, the Respondent is not currently using the disputed domain name to provide access to a website. However, the fact that a domain name does not provide access to an active website does not prevent a finding of bad faith use. See section 3.4 of the WIPO Overview 3.0.
The Panel notes that the Mark is distinctive of the Complainant, both through its registration as a trade mark and through the goodwill generated through longevity and extent of use, and further notes that the Respondent has not participated in these proceedings or sought to explain its registration and use of the disputed domain name, and has sought to conceal its identity through a privacy service. Furthermore, there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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, <baretsteel.com>, be transferred to the Complainant.
Date: June 15, 2020