The Complainant is Normalu S.A. of Kembs, France, represented by Fidal, France.
The Respondent is Ahu Ersine of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names , and are registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 22, 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 May 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2013. The Center received an informal email communication from the Respondent on May 14, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 3, 2013.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 10, 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 the owner of, inter alia, the Community Trade Mark registration No 10321594 BARISOL, filed on October 7, 2011, and the United States trademark registration no. 1769308 BARRISOL, filed on October 5, 1990. The disputed domain names have been registered on May 20, 2012 and 19 June 2013. 5. Parties’ Contentions A. Complainant
The Complainant is a leading company in the field of stretch ceilings. It has an authorized reseller in Turkey, where the Respondent is based. It has used the trademark BARRISOL since 1975.
The disputed domain names reproduce the Complainant’s trademarks in their entirety combining them with generic and non-distinctive Turkish words, as follows: the word “fiyatlari” means price, the word “firmalari” means firms and the word “tavan” means ceiling.
The Respondent is not generally known by the disputed domain names and the Complainant has not authorized the Respondent to use the trademarks BARRISOL or BARISOL.
The Respondent has registered and is using the disputed domain names in bad faith because it must have been aware of the Complainant’s reputed trademark when registering the disputed domain names and because the disputed domain names have resolved to a website promoting the goods of the Complainant’s competitor. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. On May 14, 2013, the Respondent did send an email to the Center saying that it would not renew the disputed domain names and requesting information about what to do. However, no material response was received thereafter. 6. Discussion and Findings A. Identical or Confusingly Similar
It is evident that the disputed domain names include in their entirety the Complainant’s earlier registered Community Trade Mark BARISOL. The Panel also finds that the prefix “barisol” in the disputed domain names is confusingly similar to the Complainant’s earlier trademark BARRISOL.
The Complainant has explained the meaning of the Turkish words that are also incorporated in the disputed domain names. The Respondent is based in Turkey and has not contested the Complainant’s explanation of the meaning of the words. Therefore, the Panel accepts the meaning of these words as explained by the Complainant and indicated in Section 5A above.
Combining a non-distinctive or generic name with a trademark is not sufficient to render the domain name so crated different from the trademark. The Panel therefore accepts that the disputed domain names are confusingly similar to the Complainant’s earlier trademarks. B. Rights or Legitimate Interests
The consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the Respondent to come forward with evidence of a right or legitimate interest in the disputed domain names, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. See, e.g. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant has contended that the Respondent is not known by the disputed domain names, it is not an authorized reseller of the Complainant’s goods in Turkey and that the Complainant has not authorized the Respondent to use the disputed domain names or its trademarks.
The Respondent has not contested these contentions. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain names. C. Registered and Used in Bad Faith
Although the Complainant has not put forward any evidence of reputation of its trademark, such as surveys, marketing information or recognitions, the Panel accepts that in all probability the Respondent was aware of the Complainant’s trademark when registering the disputed domain names. This can be concluded from the fact that the Complainant’s trademark has been registered in Turkey since 1996, the trademark is combined with non-distinctive words in the disputed domain names, and the domain names at first resolved to a website offering the goods of the Complainant’s competitors.
The fact that the Respondent has, after the Complainant contacted it, removed the links to the competitor’s website, does not in the Panel’s opinion remedy the fact that the disputed domain names were being used in bad faith. Similarly, the offering of the Respondent not to renew the disputed domain names does not reverse the bad faith of the same Respondent. The consideration could have been different had the disputed domain names been transferred to a third party and since been put to bona fide use, but this is not the case at hand.
Consequently, the Panel finds that the disputed domain names were registered and are being used in bad faith. 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.
Tuukka Airaksinen
Sole Panelist
Date: June 18, 2013
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