WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barrick Gold North America Inc. v. Sulei
Case No. D2020-2758
1. The Parties
The Complainant is Barrick Gold North America Inc., United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.
The Respondent is Sulei, China.
2. The Domain Name and Registrar
The disputed domain name <barrickcgcc.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 22, 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 October 24, 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 November 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. On November 5, 2020 and December 4, 2020, the Center received two email communications from the Complainant. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on January 6, 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
The Complainant is a member of a group of companies which undertakes substantial gold mining operations in multiple countries worldwide.
Since its formation in 1983, the Complainant’s group of companies has used the trade mark BARRICK in connection with its mining and associated activities and it has registered many trade marks to protect this trading style. These include, by way of example only, United States Trade Mark, registration number 4,578,245, for BARRICK in classes 37 and 42, registered on August 5, 2014. The Complainant has also registered the domain name <barrick.com>, which resolves to a website on which the Complainant advertises, and provides information on, a variety of its mining services, business initiatives and other commercial activities.
The disputed domain name was registered on July 25, 2020. The Complainant provides evidence that the disputed domain name resolves to a website, branded throughout as “Golden Compass”, on which the Respondent promotes its crypto tokens, referred to as “CGCC Tokens”, and claims that its activities are closely associated with those of the Complainant. By way of example, it asserts that: “CGCC Token is positioned as a physical asset that anchors the gold resources and mined physical gold in the Canadian Barrick Gold Company Gold Mine Project” and that: “The physical gold exchanged on the CGCC platform with the CGCC token can be mined from Barrick Gold’s existing gold mine project […]”. The Respondent’s website also asserts, incorrectly, that the Complainant’s Executive Chairman and its Chief Executive Officer form part of the Respondent’s management team.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It draws attention to its portfolio of BARRICK trade marks, full details of one of these marks having been set out above, and says that its marks enjoy substantial consumer recognition and goodwill in the marketplace. The disputed domain name uses the Complainant’s BARRICK mark in a manner which is likely to cause confusion because many consumers will assume that the disputed domain name, and the website to which it resolves, are associated with the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a franchisee, affiliated business or licensee of the Complainant, nor has the Complainant otherwise authorized the Respondent to register the disputed domain name or otherwise use the Complainant’s mark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services nor for any legitimate business purpose. Rather, in an attempt to legitimize its purported cryptocurrency token, it is engaging in fraudulent conduct by misappropriating the recognition of the Complainant’s BARRICK trade mark thereby deceiving consumers for its own financial gain.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant’s use of its BARRICK trade marks pre-dates the Respondent’s registration of the disputed domain name by 25 years and its trade mark registrations should be considered as providing the Respondent with constructive notice of its mark; see, for example, America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004. Accordingly, the Respondent’s unauthorized registration of a domain name confusingly similar to the Complainant’s marks was made in bad faith and is a blatant attempt to trade on the Complainant’s goodwill associated with those marks.
The disputed domain name does not contain any content associated with a bona fide business. In fact, the Respondent is attempting to profit from the goodwill associated with the Complainant’s BARRICK mark by using a domain name confusingly similar to it and by fraudulently claiming the endorsement and involvement of several of the Complainant’s officers and directors. These actions are intended to attract Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant and its BARRICK marks. Moreover, to the extent that consumers invest in or purchase risky cryptocurrency tokens as a result of the Respondent’s use of the disputed domain name, such users may mistakenly believe that they were harmed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of the many registered trade marks it owns for BARRICK, which establish its rights in this mark.
As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s BARRICK mark and the disputed domain name are the additional letters “cgcc”, which are placed after the mark. This does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s BARRICK trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
So far as the first of these circumstances is concerned, the Respondent’s website asserts, without foundation, that its activities are closely linked with those of the Complainant and that executive officers of the Complainant form part of its management team. Such a seeming endorsement is likely to provide consumers with an unjustified degree of confidence in the legitimacy of the Respondent’s operations. Dishonesty of this type suggests fraudulent intent on the part of the Respondent and prevents its use of the disputed domain name from being considered a bona fide offering of goods and services. In this respect, see section 2.13.1 of the WIPO Overview 3.0, which explains that “Panels 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”.
The second of the circumstances set out at paragraph 4(c) of the Policy is also inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. As for the third circumstance, using the disputed domain name to resolve to a website which falsely asserts a close commercial connection with the Complainant in order to promote the Respondent’s cryptocurrency tokens comprises neither a legitimate noncommercial nor a fair use of the disputed domain name.
The Complainant has made out a prima facie case under the second element and, in the absence of any response to it by the Respondent, the Panel finds that it has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Dealing, first, with registration, the Complainant’s first BARRICK trade mark rights were registered in August 2014, many years prior to the Respondent’s registration of the disputed domain name in July 2020 and the Complainant asserts that it has actually been using this trading style since 1983. In the light of the fact that, following registration, the Respondent has used the disputed domain name to resolve to a website which claims an association with the Complainant, the circumstances clearly indicate that the Respondent was aware of the Complainant as at the date of its registration of the disputed domain name. Moreover, the disputed domain name couples the Complainant’s BARRICK mark with the letters “cgcc”. Whilst the exact meaning that the Respondent intended to attribute these letters is unclear, “GCC” is an established acronym for “Global Crypto Currency” and it is likely that the Respondent intended that Internet users would be misled into believing that the disputed domain name was associated in some way with activities by the Complainant in the field of cryptocurrency. See, in similar circumstances; Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447. The Panel therefore finds that the Respondent’s registration of the disputed domain name falls within the circumstances described at paragraph 4(b)(iv) of the Policy and is in bad faith.
The use to which the Respondent has put the disputed domain name is similarly in bad faith in that it resolves to a website which purports to be closely associated with the Complainant by its untrue assertions that the Respondent’s crypto tokens are financially supported by the Complainant and that members of the Complainant’s board form part of the Respondent’s management team. The belief of Internet users that the Respondent’s website is operated with the active endorsement of the Complainant will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s registered trade mark. Whilst the Respondent’s website is branded as “Golden Compass”, this does not significantly reduce the likelihood of confusion because the website will have been accessed by the disputed domain name, which is confusingly similar to the Complainant’s trade mark, and the website content expressly asserts a close relationship with the Complainant. The fact that the Respondent has not filed a response to the Complaint and that there is no conceivable good faith use to which the Respondent could put the disputed domain name comprise further evidence of bad faith on the part of the Respondent; see, by way of example, Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607.
For these reasons, the Panel finds that the disputed domain name was both registered and is being used 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 <barrickcgcc.com> be transferred to the Complainant.
Date: January 20, 2021