The Complainant is Knoll, Inc., United States of America (“United States”), represented by The Belles Group, P.C., United States.
The Respondent is Demian Beenakker, the Netherlands, represented by Hortis Legal, the Netherlands. 2. The Disputed Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaint on December 16, 2020. The Center verified that the Complaint, together with the amended 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 January 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2020. On January 23, 2020, the Respondent contacted the Center requesting an automatic four days extension to the Response filing period. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended to January 31, 2020. On February 5, 2020, the Complainant contacted the Center requesting a suspension of the proceedings for purposes of settlement negotiations. On February 6, 2020, pursuant to paragraph 17 of the Rules, the proceedings were suspended until March 7, 2020. The Response was filed with the Center on March 6, 2020. On March 9, 2020, the Center notified the Parties that it would proceed with the process for panel appointment. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 25, 2020. 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, Knoll, Inc., is a furniture manufacturer based in the United States. Since at least January 1, 1954, the Complainant and its predecessors in interest have manufactured, displayed, promoted, and sold Ludwig Mies van der Rohe’s famous collection of furniture originally designed for the German Pavilion at the 1929 Barcelona International Exhibition. One of these pieces of furniture is known as the “Barcelona Chair”. The Complainant is the holder of various trademark registrations for BARCELONA covering furniture, including in the Netherlands where the Respondent is located. The Complainant provides evidence of, inter alia, the following trademark registrations: - BARCELONA, United States trademark registration No. 0772313, registered on June 30, 1964, in class 20 (living room and bedroom furniture, and occasional tables and chairs); - BARCELONA, European Union trademark registration No. 004467064, registered on July 3, 2006, in class 20 (armchairs, chairs, couches, tables). The Respondent states that he acquired the Disputed Domain Name The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a bona fide use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith, as it unfairly creates an impression of association with the Complainant. B. The Respondent The Respondent does not dispute the Complainant’s trademark registrations but rejects any claim as to the extensive use and well-known character of these trademarks. The Respondent claims that the indication “Barcelona chair” is descriptive of the geographical origin (Barcelona) and kind (“chair”) of this piece of furniture, and that it was already an established description before the filing dates of the trademarks claimed by the Complainant. According to the Respondent, the Disputed Domain Name is not confusingly similar to the Complainant’s BARCELONA mark. The mark has too limited distinctive character as the relevant public will know that a “Barcelona chair” is a piece of furniture but not a trademark belonging to the Complainant. The Respondent further states that his principal argument is that the production and sale of replicas does not necessarily involve a lack of legitimate interest on his part, neither is the authorization of the Complainant required if such replicas are properly named after their commonly accepted description and indication of geographical origin and kind. According to the Respondent, there is a legitimate interest in the production and sale of replicas in territories where design- or copyrights are expired. Finally, the Respondent contests the Complainant’s claims regarding bad faith registration and use of the Disputed Domain Name. In his view, the Disputed Domain Name has never been acquired primarily for the purpose of selling it to the Complainant or a competitor, or in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The Respondent claims that the use of historically established, commonly accepted and solely descriptive indications of geographical origin (Barcelona) and kind (chair) cannot be forbidden by any trademark and that, therefore, use of the indication “Barcelona chair” in a domain name does not involve bad faith. 6. Discussion and Findings 6.1. Preliminary Procedural Issue: Language of proceedings Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information received from the concerned registrar, the language of the registration agreement for the Disputed Domain Name is Dutch. The Complaint has been submitted in English. UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include: - evidence showing that the respondent can understand the language of the complaint; In the present case, the Respondent did not ask for any translation of the Complaint and filed his Response in English – demonstrating his familiarity therewith. In these circumstances, the Panel finds it fair and efficient to use English as the language of the present proceeding. 6.2 Substantive elements of the Policy Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed he must prove, within the meaning of paragraph 4(a) of the Policy, that: (i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are BARCELONA trademarks in which it has rights. The trademarks have been registered and used in connection to the Complainant’s furniture products. The Disputed Domain Name It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the Disputed Domain Name (see section 1.7 of the WIPO Overview 3.0). As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity. In this case, the Panel finds that the Complainant’s BARCELONA mark is clearly recognizable within the Disputed Domain Name. Additionally, it is well established that generic Top-Level Domains (“gTLDs”) (in this case “.com”) may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainants have rights (see section 1.11 of the WIPO Overview 3.0). In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s BARCELONA mark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent does not show to be commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name, and the Complainant’s mark, was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists. Therefore, the Panel finds that the Complainant had made out a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production on this element thus shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent’s principal argument is that the production and sale of replicas does not necessarily involve a lack of legitimate interest on his part, neither is authorization of the Complainant required if such replicas are properly named after their commonly accepted description and indication of geographical origin and kind. According to the Respondent, there is a legitimate interest in the production and sale of replicas in territories where design- or copyrights are expired. The Panel finds that design and copyright issues are beyond the scope of the Panel’s limited jurisdiction. In the framework of the present proceedings, the Panel must assess whether the Respondent can claim rights or legitimate interests in respect of the Disputed Domain Name itself. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). It is undisputed that the Complainant can claim trademark rights on the term BARCELONA in relation to chairs since the 1960’s in the United States and since 2006 in the European Union. Based on the evidence provided by the parties and the Panel’s own limited research, the Panel finds that the relevant public will easily link the “Barcelona Chair” with the Complainant as the producer of the authentic model, even though the BARCELONA mark may not be visible on the Complainant’s products themselves. The Complainant consistently used its BARCELONA mark for the promotion of the chair. Also, as put forward in Annex 4 to the response, authorized resellers apparently usually identify the distinguishing features of authentic models by mentioning the Complainant, e.g., with a picture of the chair on which “KnollStudio” is mentioned. The Respondent himself acknowledged the Complainant as being the producer of the authentic chair model on the website linked to the Disputed Domain Name: “If you decide to purchase an authentic chair with Knoll, a small percentage of the profit will go to the Museum of Modern Art”. In these circumstances, the Panel finds that the Disputed Domain Name carries a high risk of implied affiliation with the Complainant. Indeed, before any mention of the offered products being replicas, the Respondent’s website prominently mentioned the term “Barcelona Chair” several times together with several invitations to order the product. The Panel finds that this can mislead Internet users, and does not in the circumstances constitute a legitimate noncommercial or fair use of the Disputed Domain Name. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 WIPO Overview 3.0 and, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location. In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its rights in the BARCELONA trademark when it registered the Disputed Domain Name. The Respondent identifies itself as a producer of replicas of the chair model produced by the Complainant, and states he acquired the Disputed Domain Name many years after the Complainant’s trademarks were registered. Furthermore, as mentioned above, the Respondent made express reference to the Complainant as being the producer of the authentic chair model on the website connected to the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007; where it was held that the respondent acted in bad faith when registering that disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks). In the instant case, the Respondent has been using the Disputed Domain Name to promote the sale of replica chairs under the title “Barcelona Chair”. In view of the above circumstances, the Panel finds that by using the Disputed Domain Name incorporating the Complainant’s trademark in connection with a website promoting the sale of replicas of the chair model produced by the Complainant, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of 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 Flip Jan Claude Petillion
- potential unfairness or unwarranted delay in ordering the complainant to translate the complaint;
- other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
(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.
Sole Panelist
Date: April 9, 2020
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