The Complainant is Normalu S.A. of Kembs, France, represented by Fidal, France.
The Respondent is Le Hai Hoan of Ho Chi Minh City, the Socialist Republic of Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2014. On January 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2014, 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 Registrar also confirmed that the language of registration agreement was made in Vietnamese. Accordingly, the Center sent an e-mail communication on January 15, 2014, concerning the Language of Proceedings in English and in Vietnamese to the Complainant, copied to the Respondent. On January 20, 2014, the Complainant sent a request for English to be the language of proceedings in this case, indicating the reasons for it.
The Center verified that the Complaint, together with the request made on January 20, 2014, by the Complainant 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 January 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2014.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 21, 2014. 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 was founded in France in 1967 and has become a global manufacturer and exporter of stretch ceilings to date. Since early 1990s, the Complainant’s stretch ceilings products have been exported into over 110 countries around the world, with more than 1,200 approved installers. The Complainant is now operating five (5) production sites in France, employing more than 130 staffs with revenue in 2001 reaching Euro 21 million, of which 50% came from export.
The Complainant’s trademark BARRISOL was first created in 1975 and has been put into use for the stretch ceilings products since then. The trademark BARRISOL has been registered in a number of countries, including its home country France, the United States of America and other countries, under either the national route or the EU Community Trademark systems or the Madrid system. In Vietnam, the trademark BARRISOL was protected under International Registration No. 1105869 dated May 19, 2011, for goods/ services in Classes 6, 11, 17, 19, 24, 27, 37, 41 & 42. Since 1975, more than 30 professional accreditations have been awarded to the BARRISOL products, and the trademark BARRISOL may be considered as a worldwide well-known trademark.
The Complainant also registered numerous domain names bearing the trademark BARRISOL, including , , , , , , , , .
The Respondent registered the Disputed Domain Name on April 18, 2013. The Disputed Domain Name resolves to an error page. The Complaint attempted to obtain the cease and desist from any use of the trademark BARRISOL and the transfer of the Disputed Domain Name by sending a formal notification to the Respondent on June 7, 2013, reiterated by an email on July 22, 2013. The Respondent refused to assign the Disputed Domain Name, but offered it for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the holder of the trademark BARRISOL, which is registered under the French Trademark Registration No. 1324992, US Trademark Registration No. 1769308, Community Trademark Registration No. 10321594, and International Registration No. 1105869, designating Vietnam. The trademark BARRISOL predates the Respondent’s registration of the Disputed Domain Name.
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s trademark BARRISOL, as first, the generic Top-level Domain “.com” is not of distinguishing effect and does not give any distinctiveness to the Disputed Domain Name; second, the Disputed Domain Name is reproducing letter-by-letter the Complainant’s trademark BARRISOL, except for the mere addition of the generic term “tran”; and third, “tran” is a common name in Vietnam, the phrase “tran xuyen sang” may be translated into English as “ceiling which the light passes through”, thus, the mere addition of the generic or descriptive term “tran” to the trademark BARRISOL does not grant self-distinctiveness to the Disputed Domain Name.
Finally, the Complainant submits that the combination of this word “tran” to the trademark BARRISOL to create the Disputed Domain Name may confuse the Internet users who may believe that the Disputed Domain Name is used by the Complainant or with its authorization.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the Respondent is not currently and has never been known under the name “Barrisol”. The Respondent has no registered trademark for BARRISOL. The Complainant did not know the Respondent before the Disputed Domain Name was registered. The Respondent is not in any way related to the Complainant’s business, or one of its distributors nor carries out any activity for nor has any business with it.
The Complainant further contends that the Respondent is not engaged in any distribution agreement with the Complainant, and thus is not a member of the Complainant’s network of authorized dealers and installers. The Complainant has never given any authorization or permission to the Respondent to register or to use the Disputed Domain Name.
Finally, the Complainant contends that in registering the Disputed Domain Name, the Respondent deprives the Complainant from a strategic domain name, which describes exactly its main activity. Furthermore, the Complainant has a network of authorized distributors which would have more grounds than the Respondent’s registering and using this domain name.
(iii) The Disputed Domain Name was registered and is being used in bad faith
The Complainant contends that the Complainant has demonstrated the strong reputation and the leading position of its trademark BARRISOL throughout the world in the field of stretch ceilings, particularly in Vietnam where the BARRISOL trademark is protected since 2011. 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, when he registered the Disputed Domain Name.
The Respondent is also the registrant of the domain name , containing the Complainant trademark BARRISOL in its entirety, and the domain name , meaning in Vietnamese “luminous ceiling”. So, registering two domain names including the BARRISOL trademark, and also a domain name including three generic words describing the main activity of the Complainant cannot be placed on the account of fortuity.
The mere absence of right or legitimate interests in the Disputed Domain Name should point out that the disputed domain name has not been registered in good faith. Thus, the Complainant claims that the Respondent registered the Disputed Domain Name in bad faith.
The Complainant further contends that Internet users may believe that the Disputed Domain Name is the Complainant’s official website and they would expect finding information related with the Complainant or at least with its authorized dealer or installer based in Vietnam. Instead, the Disputed Domain Name directs the Internet users to an error page. As a consequence, the Complainant claims that the Respondent or any related company is using the website under to intentionally misdirect Internet users to that the BARRISOL trademark is not distributed in Vietnam, or that the Complainant stopped its activity in this country.
The Complainant also argues that the Respondent could not ignore the existence of the Complainant and its well-known trademark in the field of stretch ceilings after the receipt of the formal notification. It is thus knowingly that the Respondent reserved the Disputed Domain Name and refused the transfer to the Complainant. Thus, the Complainant alleges that the use of the Disputed Domain Name by the Respondent has been made primarily for the purpose of disrupting the business of the Complainant and its single authorized distributor in Vietnam. As a consequence, the Complainant upholds that the Disputed Domain Name was registered and used in bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hah,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark 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.
Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case. A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights to BARRISOL registered well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its trademark for its commercial activities, and in particular to offer stretch ceilings products worldwide.
Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known BARRISOL mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix “tran”, which is written with accent marks as “trần” in Vietnamese and means “ceiling” in English. Despite the fact that “tran” itself has no meaning in English, Vietnamese customers are likely to perceive it as “trần” (“ceiling” in English). Thus, this prefix should be considered as a descriptive term. The Panel finds that BARRISOL remains the dominant element in the Disputed Domain Name. It is well established that the addition of descriptive terms to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the Trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see, e.g., Normalu SA v. Seref Akkaya, WIPO Case No. D2012-1513; Normalu SA v. Elif Yucesan Urgan, WIPO Case No. D2013-0592; Normalu SA v. Shangai Pinpoint Network-Tech Co. Ltd, WIPO Case No. D2012-0864).
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the generic top-level domain (gTLD) “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see e.g. Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds and concludes that the Disputed Domain Name is confusingly similar to the Complainant’s BARRISOL trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no own rights in the trademark BARRISOL.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (Oki Data):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller (e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that it does not fulfill the Oki Data criteria. Indeed, the website under the Disputed Domain Name resolves to an error page. This means that the Respondent is not actually offering the goods or services at issue, i.e. the stretch ceilings products, by operating the website subject the Disputed Domain Name. Further, it is apparent that the Respondent did not accurately disclose the Respondent’s relationship with the trademark owner via such a webpage. For these reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services under the Oki Data criteria.
Moreover, the Panel finds that the Disputed Domain Name’s resolving to an error page suggests that the Respondent, as an individual, business, or other organization, has not been commonly known by the Disputed Domain Name.
The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
In this particular case, the Panel finds that the Disputed Domain Name resolves to an error page saying that “This website is not available”. Further, there is no evidence of advertising, promotion or display to the public of the domain name; there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. (In this regard, for avoidance of doubt, the Panel opines that the emails dated July 23, 2013 and December 5, 2013 by the Respondent may show the Respondent’s intention to sell, but not serve as an offer for sale of the Disputed Domain Name.). In such a case, the Panel finds that the Respondent has engaged in the act of “passive holding”, which is widely held by various UDRP panels to be an act of bad faith under paragraph 4(b) of the Policy (e.g.,Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
The Panel has considered the foregoing precedents, in addition to following findings:
- The Panel believes that the Respondent must have known and be aware of the rights in the prior well-known trademark BARRISOL and the associated products at the time of the registration of the Disputed Domain Name.
- The Respondent intentionally chose to register the Disputed Domain Name, which comprises the Complainant’s trademark BARRISOL, together with two other domain names , containing the Complainant trademark BARRISOL in its entirety, and the domain name , meaning in Vietnamese “luminous ceiling”, which describes exactly the business that the Complainant is being engaged in;
- Any attempt to actively use any of the Disputed Domain Name would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the registrant’s web site among users of the Internet who would inevitably be led to believe that such a website would be owned by, controlled by, established by or in some way associated with the Complainant;
- As mentioned in section B. above, it is evidenced that the Respondent does not have any rights or legitimate interests in the disputed domain name;
- The Respondent has failed to file a Response or make any attempt to traverse the claims and submissions made by the Complainant.
Taking into account all of the above, the Panel upholds that the Disputed Domain Name was registered and used by the Respondent in bad faith under 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 be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: March 7, 2014
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