WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barrett Steel Limited v. 1 & 1 Internet Limited / Morton Cowie, Notek Limited

Case No. D2020-2147

1. The Parties

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

The Respondent is 1 & 1 Internet Limited, United Kingdom / Morton Cowie, Notek Limited, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <barrett-steel.com> is registered with 1&1 IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 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 August 17, 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 amended Complaint on August 19, 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 the Respondent of the Complaint, and the proceedings commenced on August 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2020.

The Center appointed David Stone as the sole panelist in this matter on September 22, 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 an independent steel stockholder and steel supplier, operating across the UK. The Barrett Steel group consists of 44 steel stockholding companies and divisions operating from 27 locations across the UK. It commenced trading in 1866 and has been using the mark BARRETT STEEL (the “mark”) since that time.

BARRETT STEEL appears on the Complainant’s promotional and advertising material, including its website at “www.barrettsteel.com”, which has been in use since 2011.

The Complainant is the registered owner of the following registered trade mark for BARRETT STEEL: UK Trade Mark number UK00003409685, registered on October 11, 2019, for Nice classes 6, 37, and 40.

The disputed domain name was registered by the Respondent on April 23, 2020, and resolves to the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

First, the Complainant contends that it has acquired significant and substantial goodwill and reputation among the relevant trading public in the UK, in relation to the provision of steel stockholding and steel supply. In addition, the Complainant claims that the disputed domain name is identical or confusingly similar to the Complainant’s registered trade mark and the rights acquired through goodwill.

Second, the Complainant submits that the Respondent has no rights or legitimate interest in respect of the disputed domain name. To the best of the knowledge of the Complainant, the Respondent does not, and is not preparing to, use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant submits that the Respondent is not commonly known by the name “Barrett Steel”, based on a result of a Google search for “Barrett Steel”. Furthermore, the Complainant claims that the Respondent has not sought any authorisation or licence to use the mark from the Complainant and that no licence or permission to use the mark has been granted by the Complainant to the Respondent. The Complainant further points to the fact that a privacy service has been used by the Respondent in an attempt to conceal the details of the registrant in the WhoIs search, as evidencing the lack of legitimate interest or any rights in the mark.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent registered the disputed domain name for the purpose of capitalizing on the reputation of the Complainant and its goodwill. Furthermore, the Complainant alleges that the Respondent lacks any legitimate interest in the disputed domain name as it is currently using it to redirect users to the Complainant’s website. For the Complainant, this is evidence of the Respondent’s awareness that the BARRETT STEEL mark has goodwill and further demonstrates that the disputed domain name is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant owns rights in BARRETT STEEL. The disputed domain name incorporates the Complainant’s BARRETT STEEL mark in its entirety. The hyphen does not impact this assessment, as hyphens are routinely used instead of spaces in domain names, given that spaces are not possible in domain names. As outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11, the presence of a generic Top-Level Domain (“gTLD”) in a domain name is a requirement of registration and as such is disregarded under the first element confusing similarity test (CANAL + FRANCE v. Franck Letourneau, WIPO Case No. DTV2010-0012). Therefore the Complainant has satisfied the condition in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) as an individual, business, or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent does not appear to run any business activity in connection with the disputed domain name nor does it appear to be commonly known by the disputed domain name. The disputed domain name is currently being used to redirect users to the Complainant’s website. The Panel accepts the Complainant’s submission that the Respondent is using the mark without authorisation.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complaint and thus has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith can be defined as the intention to register and use a domain name in order to:

(i) sell, rent, or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;

(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;

(iii) disrupt the business of a competitor; or

(iv) divert Internet traffic for commercial gain.

The disputed domain name is identical or confusingly similar to the mark and currently redirects users to the Complainant’s website. Previous UDRP panels have found that redirecting a domain name to the complainant’s website may support a finding of bad faith (WIPO Overview 3.0, section 3.1.4; see also Allen & Overy LLP v. Can Kulah, WIPO Case No. D2019-1147).

The mark enjoys a reputation and is widely known in the UK by virtue of its widespread use by the Complainant, including through its Internet presence under the mark. Members of the public would believe that the entity owning and/or using the disputed domain name was the Complainant or in some way associated with the Complainant. This leads to a likelihood of confusion between the disputed domain name and the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

The Respondent has presented no evidence as to why it has set the disputed domain name to redirect to the Complainant’s website. However, this is evidence, as the Complainant submits that the Respondent knows of the Complainant, and its business. The Complainant submits that the only plausible explanation for the Respondent registering the disputed domain name was for the purpose of capitalising on the reputation of the Complainant and its goodwill in the BARRETT STEEL mark, either by using the disputed domain name to disrupt the business of the Complainant (paragraph 4(b)(iii) of the Policy) or for commercial gain for the purpose of “[…] intentionally [attempting] to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location” (paragraph 4(b)(iv) of the Policy).

The Panel finds that the redirection of the disputed domain name to the Complainant’s own website supports a finding of bad faith registration and use of the disputed domain name in the circumstances of this case.

Based on the above, the Panel concludes that the Complainant has satisfied the condition in paragraph 4(a)(iii) 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 disputed domain name, <barrett-steel.com>, be transferred to the Complainant.

David Stone
Sole Panelist
Date: September 28, 2020