The Complainant is Barrisol / Normalu Group S.A.S. of Kembs, France, represented by Soroker - Agmon, Advocates & Patent Attorneys, Israel.
The Respondent is Amit Nitzan of Moshav Adanim, Israel, represented by Seigel - Goldshmidt & Leventhal, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with Communigal Communications Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 14, 2016. On July 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2016. The Response was filed with the Center on August 11, 2016.
On August 16, 2016, the Center received a Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 25, 2016. 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 incorporated under the laws of France. It was founded in 1967. It develops, produces and supplies stretch ceilings, walls and related products. It has been engaged in this business since at least the mid-1970s.
It has rights in a number of registered trademarks for BARRISOL. These include:
(a) French Registered Trademark No. 934047, which was registered on September 30, 1975 in International Classes 1, 3, 17, 19, 20, 22, 27 and 40;
(b) International Registration No. 518317, which was registered on October 13, 1987 in International Classes 19 and 24;
(c) International Registration No. 589894, which was registered on July 18, 1992 in International Class 11; and
(d) numerous registered trademarks in Israel.
The trademark registered in France referred to above includes a device element of a house or building as well as the word BARRISOL. While it was originally registered in the Complainant's name it appears that formal ownership of it was transferred to the Complainant's founder, M. Scherrer, on September 27, 1985. Curiously, the International Registrations were originally held by M. Scherrer and subsequently transferred (after 1985) to the Complainant.
The Respondent is based in Israel. He, or his company, has at times been the Complainant's distributor in that country. The relationship has come to an end. The parties are in dispute about the rights and wrongs of that termination and its consequences.
In his Response, the Respondent states that while he denies and objects to all of the Complainant's arguments, he has no intention to retain or maintain the registration of the disputed domain name, or to renew or use it for any purpose. The Response states:
"the respondent has no intention to retain or maintain registration or renew or use the domain for any purpose - despite the commercial legal disputes between the parties (to be determined by the authorized courts in Israel) there is actually No case to determine by the esteemed Administrative Panel - since the domain can thus be allocated and transferred to the Complainant as of the expiration date - without prejudice to any of the parties' commercial and other arguments or rights which are to be determined, if at all, in the proper sole jurisdiction of the courts of Israel." (original emphasis)
The expiration date of the disputed domain name was August 17, 2016. As this administrative proceeding was on foot at that time, the disputed domain name is under Registrar lock. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name 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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Supplemental Filing
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant's Supplemental Filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
For the most part, the Complainant's Supplemental Filing addresses matters raised in the Response which could not reasonably have been anticipated. The Panel, therefore, will include the Supplemental Filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2. B. Surrender
It is apparent from the extract from the Response quoted in section 4 above that the Respondent has no desire to keep the disputed domain name. Rather, the Respondent is principally concerned to ensure that any surrender of the disputed domain name is without prejudice to the Respondent's rights in connection with what appear to be a range of commercial disputes between the parties.
The Panel notes that the sentiments expressed in the extract quoted above are repeated in several other parts of the Response. In that connection, the Respondent claims he made the same proposal to the Complainant before the Complaint was even filed. The balance of the Response appears to be directed to justifying the Respondent's position in relation to the other commercial disputes.
Given the Respondent has no intention to retain or use the registration in the future, the Panel proposes to treat the Respondent has having offered voluntarily to surrender the disputed domain name. As noted above, the Panel acknowledges that the Respondent has advanced his proposal without prejudice to the Respondent's rights, if any, in relation to any other matters which are, or may be, in dispute between the parties.
In relation to those other matters, if any, the Panel does not have any jurisdiction or role in the determination of the disputes between the parties insofar as they do not bear on the registration and use of domain names in bad faith which are confusingly similar to another person's trademark. Whether those rights, if any, fall to be determined in the courts of Israel depends on a multitude of matters which the Panel has no information about. In any event, it is not something which is relevant to the issues in this administrative proceeding under the Policy and it is not something that the Panel is called upon to decide.
The Respondent's registration of the disputed domain name, however, is subject to the requirements of the Policy: see in particular paragraph 4(a) of the Policy. Contrary to the Respondent's assertion, therefore, the Panel has a role in determining, and is required to determine, the application of the Policy to the registration and use of the disputed domain name in accordance with the Policy.
Numerous panels have accepted that an order for transfer is appropriate when consented to by a respondent, either immediately or on a showing of a prima facie case by the complainant in such circumstances. See, e.g., Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207; Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336; Amgen Inc. v. Texas International Property Associates,WIPO Case No. D2007-0155; Levantur, S.A. v. Rarenames, WebReg,WIPO Case No. D2007-0857; Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc.,WIPO Case No. D2007-0917; Fry's Electronics Inc. v. Texas International Property Associates,WIPO Case No. D2007-0343; and, Tom Stoppard, Tom Stoppard Limited v. Texas International Property Associates,WIPO Case No. D2007-1404.
In this case, as already noted, the Complainant has clearly established that it owns, or has rights, in numerous trademarks for BARRISOL or of which BARRISOL is the dominant and distinctive verbal element.
The disputed domain name differs from the verbal element of those trademarks by the addition of the generic Top-Level Domain and "-il", which is recognisable as the country-code Top-Level Domain for Israel. Thus, the inclusion of "-il" is likely to suggest an association with the Complainant as its official Israeli arm. In those circumstances, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademarks.
In light of this, and the Respondent's asserted position, the Panel considers it is appropriate to order that the disputed domain name be transferred to the Complainant, necessarily without prejudice to the parties' respective rights, if any, with respect to any other matters that they may be in dispute about. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: September 10, 2016
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