The Complainant is NORMALU S.A. of Kembs, France, represented by Fidal., France.
The Respondent is Elif Yucesan Urgan of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain names and are registered with Nics Telekomünikasyon Ticaret Ltd. Şti. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2013.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 29, 2013. 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 French company, operating in the field of stretch ceilings. Furthermore, the Complainant is the holder of several trademark registrations world-wide, inter alia, in Turkey for the word mark BARRISOL and in the European Union for the word mark BARISOL.
The Turkish trademark was filed on March 11, 1996, and registered for goods in class 19 and 24 under number 167997. The community trademark was filed on October 7, 2011, under number 010321594 for goods in class 19, 24 and 27.
The disputed domain names were registered on July 9, 2012 () and July 11, 2012 (). 5. Parties’ Contentions A. Complainant
BARRISOL is the world leading brand in terms of sales and innovation on the stretch ceiling market since its creation in 1975, and the Complainant has registered nearly 100 trademarks throughout the world.
The disputed domain names are confusingly similar to the Complainant’s pre-dated trademark BARRISOL. First, the generic top-level domains (gTLD) “.org” and “.com” have no distinguishing effect and must be removed from analysis. The inclusion of the generic top-level domain extensions does not give any distinctiveness to the disputed domain names.
The disputed domain names are reproducing letter-by-letter the Complainant’s trademark, except for the second letter “r”, which is omitted, and the mere addition of generic terms. The first part of the disputed domain names are visually close to the BARRISOL trademark, and phonetically, the first part of both disputed domain names are identical to the Complainant’s trademark.
The mere addition of a generic or descriptive term to the trademark BARRISOL does not grant self-distinctiveness to the disputed domain names. “Tavan” and “gergi tavan” are words describing the main activity of the Complainant. The word “tavan” in Turkish means ceiling, and the words “gergi tavan” means stretch ceiling. The Complainant has precisely developed its reputation in the designing and installing of stretch ceilings.
Inclusion of the Complainant’s trademark BARRISOL into the disputed domain names may confuse the Internet users who may believe that the disputed domain names are used by the Complainant or with its authorization. The addition of a generic or non-distinctive word to the Complainant’s trademark in the disputed domain names does not dispel confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. To the Complainant’s best knowledge, the Respondent is not currently and has never been known under the name BARRISOL. The Complainant conducted a trademark search before the Turkish Patent Institute over “barisol” and noticed that the Respondent had never been known under this trademark.
The Complainant did not know the Respondent before the disputed domain names were registered. The Respondent is not in anyway related to the Complainant’s business, and is not one of the Complainant’s distributors. The right to use a trademark as a basis for a domain name requires an express authorization. In this case, the Complainant has never given any authorization or permission to the Respondent to register or to use the dispute domain names. This absence of link and authorization is evidenced by the cease and desist-letter that has been sent by the Complainant to the Respondent before this proceeding began.
In registering the disputed domain names, the Respondent deprives the Complainant from strategic domain names, which describe exactly its main activity. Furthermore, the Complainant has a network of authorized distributors which would have more grounds than the Respondent for registering and using the disputed domain names.
The Respondent registered the disputed domain names in bad faith. The trademark BARRISOL has a strong reputation and it has a leading position throughout the world in the field of stretch ceilings, particularly in Turkey where the BARRISOL trademark is protected since 1996. As a consequence, the notoriety of the Complainant’s trademark in the range of stretch ceilings is such that a prima facie presumption is raised that the Respondent registered the disputed domain names for the purpose of selling them to the Complainant or one of its competitors, or that they were intended to be used in some way to attract, for commercial gain, users to the website by creating a likelihood of confusion with the Complainant’s mark.
It is therefore highly unlikely that the Respondent ignored the existence of the Complainant and its well-known reputation and trademark in the field of stretch ceilings, while it registered the disputed domain names, at least for the three following reasons:
- The trademark BARRISOL was registered by the Complainant in Turkey since 1996, many years before the disputed domain names were registered;
- The trademark BARRISOL was registered by the Complainant in France since 1975;
- The famous trademark BARRISOL is combined to the generic words “tavan” and “gergi tavan” meaning in Turkish “ceiling” and “stretch ceiling”, which is exactly what the Complainant is producing under its trademark.
Moreover, the registration of the disputed domain names has been made primarily for the purpose of disrupting the business of a competitor, or in this case, of the main company and its single authorized distributor in Turkey. Before the formal notification addressed to the Respondent, dated August 9, 2012, both disputed domain names resolved to a website promoting products of stretch ceilings under the trademark “New Hart stretch ceiling systems” “”. The products promoted on this website are manufactured by competitors of the Complainant. It is only after the formal notification that the Respondent ceased its activity on the website. The mere absence of rights or legitimate interests in the disputed domain names points out that the disputed domain names have not been registered in good faith.
Furthermore, the Complainant claims that the Respondent is using the disputed domain names in bad faith. Internet users may believe that the disputed domain names lead to the Complainant’s official website and they would be right to expect finding information related with the Complainant or at least with its authorized dealer or installer based in Turkey. Instead, the disputed domain names direct the Internet user to an error page.
As a consequence, the Complainant claims that the Respondent is using the disputed domain names to intentionally misdirect Internet users searching for information about the Complainant or searching for the Complainant’s authorized goods and services by creating a likelihood of confusion with the Complainant’s trademark. This use of the disputed domain names has been made primarily for the purpose of disrupting the business of a competitor or, in this case of the main company and its single authorized distributor. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark 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 names; and (iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the holder of the registered trademarks BARRISOL (in Turkey) and BARISOL (in the European Union).
The first disputed domain name consists of the word BARRISOL except for the letter “r”, with the addition of the generic words “gergi tavan” and the gTLD “.com”. The second disputed domain name also consists of the trademark BARRISOL except for the letter “r”, but this time with the addition of the generic word “tavan” and the gTLD “.org”. According to well established consensus among UDRP panels, the gTLD is not distinguishing.
The Panel finds that the Complainant’s BARRISOL trademark is the distinctive part of the disputed domain names, and that the deletion of the letter “r” and the addition of the generic words “gergi tavan” or “tavan” is not sufficient to avoid Internet user confusion in relation to the trademark. Rather, the added words are more likely to increase the risk of confusion because of their close association with the Complainant’s business.
Consequently, the Panel finds the disputed domain names to be confusingly similar to the trademark in which the Complainant has rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled. B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission to register the disputed domain names has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests to the disputed domain names which entirely incorporates the Complainant’s trademark.
Having considered the submissions of the Complainant, and the absence of a formal response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the Complainant’s BARRISOL or BARISOL trademarks in the disputed domain names. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
The disputed domain names were registered more than a decade after the Complainant’s Turkish trademark registration of BARRISOL. Furthermore, the Respondent has combined the Complainant’s trademark with the Turkish words for “ceiling” and “stretch ceiling”, which is what the Complainant is producing under its trademark.
The Complainant has asserted that before August 9, 2012, which is the date of the Complainant’s formal notification to the Respondent, both disputed domain names resolved to websites promoting products of stretch ceilings manufactured by competitors of the Complainant. The Respondent is in default and has not rebutted the Complainant’s contentions. The word BARRISOL is distinctive and protectable in relation to, inter alia, stretch ceilings. It is not probable that the Respondent has selected the disputed domain names including the trademark BARISOL without knowledge of the Complainant’s trademarks.
Having regarded these facts, it is in this Panel’s view apparent that the disputed domain names were registered with knowledge of the Complainant’s trademark rights and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s website or location. At one point, the website at the disputed domain name was taken down. This is further evidence of bad faith. All in all, the Panel finds that the disputed domain names have been registered and used in bad faith.
The third and final element of the Policy is fulfilled. 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 names and be transferred to the Complainant.
Jonas Gulliksson
Sole Panelist
Date: June 11, 2013
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