WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barrett Steel Limited v. Whois Agent (465789573), Whois Privacy Protection Service, Inc. / Scott Schwandt, BSEP

Case No. D2021-0069

1. The Parties

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

The Respondent is Whois Agent (465789573), Whois Privacy Protection Service, Inc., United States of America (“United States”) / Scott Schwandt, BSEP, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 11, 2021, 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 January 18, 2021 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 January 18, 2021.

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 January 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2021. On March 3, 2021, the Center noted that the amendment to the Complaint was not included in the Center’s notification of the Complaint email dated January 26, 2021, informed the Complainant and the Respondent of this, and provided the amendment to the Complaint indicating that the Center would proceed with the appointment of the Panel.

The Center appointed John Swinson as the sole panelist in this matter on March 9, 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 Barrett Steel Limited, a company incorporated in the UK. According to the Complaint, the Complainant is the UK’s largest independent steel stockholder and supplier. The Complainant’s corporate group operates from 27 locations across the UK and services customers worldwide.

The Complainant is the owner of UK registered trade mark number 00003409685 for BARRETT STEEL, which was registered on June 26, 2019 (the “Registered Mark”).

The Complainant has operated under the brand BARRETT STEEL (“Trade Mark”) continuously since it was founded in 1866 by Henry Barrett. The Trade Mark appears on the Complainant’s promotional and advertising material. The Complainant has owned the domain name <barrettsteel.com> since 2011 and the Trade Mark is featured prominently on the Complainant’s website at this domain name (the “Complainant Website”).

The Disputed Domain Name was registered on April 4, 2017. The Disputed Domain Name does not currently resolve to an active website. The Complainant provided evidence that at some point, the Disputed Domain Name resolved to a website with a sign in page where Internet users could enter their email address and password. The browser tab for this website featured the words ‘Barrett Order System’ and a design similar to the Complainant’s logo.

The Respondent is Scott Schwandt, BSEP, domiciled in the United States. The Respondent did not submit a Response so little information is known about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

The Complainant registered the Registered Mark in 2019 and holds unregistered, common law rights in the Trade Mark as a result of its continuous and extensive use of the Trade Mark in connection with its business since 1866.

The Complainant is well known. In 2019, the Complainant was ranked in The Sunday Times Top Track 250 as one of the UK’s leading private mid-market growth companies. The Complainant sponsors the British Stockholding & Distribution Constructional Steelwork Association's marketing development program.

The Disputed Domain Name incorporates the entirety of the Trade Mark and is confusingly similar to the Trade Mark.

Rights or Legitimate Interests

There is no evidence that the Respondent has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Disputed Domain Name does not currently resolve to a website. Archive snapshots taken on August 8, 2018 and August 29, 2019 show that at these times the Disputed Domain Name resolved to a website which directed users to sign in by entering their email address and password. The browser tab for this website featured the words ‘Barrett Order System’ and a design similar to the Complainant’s logo.

All of the results on the first page of a Google search for the Trade Mark relate to the Complainant. This demonstrates that the Respondent is not commonly known by the Disputed Domain Name. The Respondent does not have any registered or unregistered trade mark rights in respect to the Disputed Domain Name in the UK. There is no business relationship or affiliation between the Complainant and the Respondent.

The Respondent’s use of a privacy service to register the Disputed Domain Name further indicates that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant at the time the Disputed Domain Name was registered due to the Complainant’s longstanding and exclusive use of the Trade Mark in the UK and worldwide, including through the Complainant’s Website.

The only plausible explanation for the Respondent registering the Disputed Domain Name was to capitalise on the reputation of the Complainant and its goodwill in the Trade Mark, either by using it to disrupt the business of the Complainant or to intentionally attempt to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

The Disputed Domain Name does not currently resolve to an active website. The passive holding of a domain name does not prevent a finding of bad faith.

The Respondent has taken active steps to conceal its true identity and previously used the Disputed Domain Name to direct users to a website featuring a logo very similar in design to the Complainant's own logo.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(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.

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Complainant registered the Registered Mark in 2019 but has used the Trade Mark continuously in connection with its steel stockpiling and supply business since 1866. The Complainant’s Website prominently features the Trade Mark and according to the Complaint, the Trade Mark appears on the Complainant’s promotional and advertising material. The Complainant has also provided evidence of its substantial turnover and spend on marketing, advertising and promotion under the Trade Mark. The Panel accepts that the Complainant had a substantial reputation in and held common law trade mark rights in the Trade Mark at the time the Disputed Domain Name was registered on April 4, 2017.

Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element (section 1.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the term “app”. “App” is a term often used in connection with the supply of digital products and services and its inclusion in the Disputed Domain Name does not prevent a finding of confusing similarity between the Disputed Domain Name and the Trade Mark.

The Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following the Complainant’s contentions:

- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to the Disputed Domain Name.

- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name does not currently resolve to an active website. The Disputed Domain Name previously directed users to a website which prompted them to sign in and featured a logo similar in design to the Complainant’s own logo. There is no evidence that this website was used to provide goods or services or that it otherwise amounts to legitimate noncommercial or fair use.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Registered in bad faith

The Respondent registered the Disputed Domain Name on April 4, 2017. As outlined above, the Panel accepts that the Complainant held common law trade mark rights in the Trade Mark at this time as a result of its continuous use of the Trade Mark since 1866 in connection with its business. In the Panel’s view, taking into account the Complainant’s reputation, the nature of the Disputed Domain Name and the Respondent’s subsequent use of the Disputed Domain Name, the Respondent either knew or should have known of the Complainant or its Trade Mark when the Disputed Domain Name was registered.

In the absence of any submissions to the contrary, the Panel accepts the Complainant’s contention that the Respondent likely registered the Disputed Domain Name to capitalise on the reputation of the Complainant and its goodwill in the Trade Mark to either disrupt the Complainant’s business or intentionally attempt to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the website at the Disputed Domain Name or of a product or service on that website.

Based on the Respondent’s subsequent use of the Disputed Domain Name to direct Internet users to a website that featured a design similar to the Complainant’s logo and encouraged users to sign in, it is possible that the Respondent registered the Disputed Domain Name to harvest email addresses and passwords of the Complainant’s customers.

In light of the above, the Panel is satisfied that the Disputed Domain Name was registered in bad faith.

Used in bad faith

The Disputed Domain Name previously resolved to a website which prompted users to sign in and featured a logo similar in design to the Complainant’s own logo. The purpose of this website is unclear, but in the absence of a response the Panel considers that such use supports a finding of bad faith.

The Disputed Domain Name does not currently resolve to an active website. The fact that the Disputed Domain Name is not currently being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good-faith use to which the domain name may be put.

The particular circumstances of this case which lead to a conclusion in the Complainant’s favour are:

- Although the Registered Mark was only registered in 2019, it has been used by the Complainant in connection with its business since 1866 and the Complainant has operated its website at <barrettsteel.com> since 2011.

- The Respondent has not submitted a Response or provided any evidence of actual or contemplated good-faith use.

- The Respondent used a privacy service to conceal its identity when registering the Disputed Domain Name.

- It is difficult to conceive of any good-faith use to which the Disputed Domain Name could be put, given its degree of similarity to the Complainant’s Trade Mark.

In light of the above, the Panel finds that the Complainant has succeeded on 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 Disputed Domain Name <barrettsteelapp.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: March 23, 2021