The Complainants are Ms. Heidi Barnes-Watson of Paris, France and Barnes SAS of Neuilly-sur-Seine, France, both represented by Mr. Olivier Hayat and Mr. Laurent Paris, France.
The Respondent is Mr. Jean Luc Baptiste of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2017. On November 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2017, 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 December 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2018.
The Center appointed Alejandro Garcia as the sole panelist in this matter on January 18, 2018. 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 A. The Complainants
The Complainants are well-known real estate agents doing business in respect of high-end properties in a number of regions, including Europe and the United States of America.
In light of the documents accompanied to the Complaint, the Panel understands that both Complainants are related and thus their consolidation as Complainants is proper, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0), section 4.11.1. B. The Complainants' Trademark
The Complainants aver that they hold two registrations for the trademark BARNES. The first registration is the French trademark No. 3861673, protecting services in classes 36, 37 and 42 (including, inter alia, real estate services). A copy of this registration has been accompanied as Annex 1-1 to the Complaint. This registration, held by the two Complainants, predates the registration of the disputed domain name.
The second registration, which also predates the registration of the disputed domain name, is the international trademark No. 1114909 BARNES, also for services in classes 36, 37 and 42. A copy of a printout of WIPO's Global Brand Database is accompanied as Annex 1-2 to the Complaint.
The Panel is satisfied that the Complainants have evidenced rights to the trademark BARNES for the purposes of the present decision. C. The Complainants' Domain Name
According to the WhoIs database, Barnes, which the Panel assumes is Barnes SAS, registered the domain name on July 25, 2007, thus also predating the registration of the disputed domain name. D. The Respondent
The Respondent did not participate in these proceedings. The disputed domain name was registered on September 10, 2017 and resolves to a website purportedly engages in commercial real estate activities. 5. Parties' Contentions A. Complainants Identical or Confusingly Similar
The Complainants state that the disputed domain name is identical or confusingly similar to the trademark BARNES, in respect of which they have rights.
In addition, the Complainants argue that they use their trademark BARNES internationally, especially in respect of class 36 services, in particular those related to real estate business, including the sale, valuation and management of properties.
The Complainants argue, with the support of uncontroverted documentary evidence, that at relevant times, the website linked to the domain name , apparently run by the Respondent, offered identical services to those offered by the Complainants under the BARNES trademark. In this respect, the website in issue stated the following about the Respondent's purported business under the banner "Barnes Europa": "Founded in 1996 and now located in 7 capitals of Europe, the Barnes Europa brand is a unique and distinctive network of brokerage agencies offering a wide selection of luxury homes, estates and properties for sale throughout the world." Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Moreover, according to the Complainants, the Respondent does not have any kind of authorization from them to offer the same services offered by the Complainants under the trademark BARNES. Registered and Used in Bad Faith
In this respect, the Complainants argue that the disputed domain name has been registered and is used in bad faith. In particular, they argue that the website linked to the disputed domain name contains false information and even is intended to defraud customers by asking them to furnish a 1% deposit in respect of the properties they wish to acquire through the "Barnes Europa" website. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (Complainants) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainants are required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. The Panel finds that the Complainants have provided uncontested evidence to establish that they have rights over the trademark BARNES. The Panel also notes that the term "barnes" is contained in the trade name of one of the Complainants and it is indeed part of the surname of Ms. Heidi Barnes-Watson, one of the Complainants in this proceeding.
The disputed domain name consists of the whole of the Complainants' trademark BARNES along with the term "Europa". The addition of this term, simply a geographical locator linked to Europe, is insufficient to distinguish the disputed domain name from the Complainants' trademark.
The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the disputed domain name being confusingly similar to the Complainants' trademark BARNES. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
"(i) before any notice […] of the dispute, [the respondent's] 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) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [The respondent is] 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."
In this case, the Complainants' (uncontroverted) evidence shows that the disputed domain name has resolved to a website which apparently offers services that squarely compete with those of the Complainants.
Furthermore, on the basis of the evidence before it, the Panel concludes that the Complainants have made a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainants' contentions. Accordingly, the Complainants meet the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that [the respondent] registered or […] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant [the owner of the trademark or service mark] or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [circumstances indicating that the respondent] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [circumstances indicating that the respondent] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) [circumstances indicating that the respondent is using the domain name to] intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondents'] web site or location or of a product or service on its website or location."
On the basis of the evidence before it and in particular the fact that the disputed domain name resolved to a website that appeared to have offered competing and identical services to those of the Complainants, the Panel finds that the Respondent has engaged in bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. In turn, on the basis of this finding, the Panel concludes that the disputed domain name has been registered and is 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 name be transferred to the Complainants.
Alejandro Garcia
Sole Panelist
Date: February 1, 2018
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