Complainant is Normalu S.A. of Kembs, France, represented by Fidal, France.
Respondent is Domain Admin / AYDIN KAYA of Nobby Beach, Queensland, Australia and Istanbul, Turkey, respectively. 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 April 22, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2013, 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 April 25, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2013.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 5, 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
Complainant is the owner of the mark BARRISOL for use in connection with stretch ceilings, which it has marketed since its creation in 1975.
Complainant is the owner of numerous trademark registrations for the mark BARRISOL for use in connection with stretch ceilings and suspended ceilings and related products, including the following:
- United States of America Trademark Registration No. 1769308, registered on May 4, 1993.
- Colombian Trademark Registration No. 230889, registered on August 25, 2000.
- French Trademark Registration No. 1324992, registered on September 30, 1985
Complainant is also the owner of Community Trademark Registration No. 10321594 for the mark BARISOL, registered, on March 8, 2012.
All the above trademark registration issuance dates predate registration of the disputed domain name on September 19, 2012.
Complainant is also the owner of the following domain names , , , , , , , . All these domain names were registered prior to registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, that Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Identical or Confusingly Similar
Complainant has numerous registered trademarks for BARRISOL, including the United States, Colombian and Community Trademark registrations that pre-date Respondent’s registration of the disputed domain name. In addition, Complainant has established common law rights in that name by virtue of the undisputed use of the mark by Complainant since 1975.
The country code top-level domain “.co”, indicates Colombia, where Complainant has an authorized distributor and a sizeable business.
Complainant has previously succeeded in obtaining transfer of the domain name (see Normalu SA v. Demi-lune SRL,WIPO Case No. DMD2011-0002) in which the domain name incorporated Complainant’s mark BARRISOL in its entirety. Here, the disputed domain name incorporates Complainant’s Community trademark in its entirety, and its Colombian, United States and other trademarks, except for the omission of one “r” in the word. This appears to be a typical case of “typosquatting.” In such cases, domain names are generally found to be confusingly similar to the marks which they mimic. See e.g. Yahoo! Inc. and GeoCities v. Data Art Corp., et al.WIPO Case No. D2000-0587.
The Panel finds that the disputed domain name is identical and confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Based on previous UDRP decisions, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Complainant’s allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has no relationship with Complainant and has no permission from Complainant to use Complainant’s trademark or any domain name incorporating that trademark. Respondent is not commonly known by the name “barisol”. Nothing in the WhoIs contact information for Respondent implies that it is commonly known by that name.
Complainant conducted a trademark search before the Colombian Intellectual Property Office for the term “barisol”. , which revealed that Respondent has not filed any such trademark. Respondent’s website at the disputed domain name indicates that it is under construction and does not provide evidence of any legitimate business.
Respondent has failed to come forward with any evidence demonstrating rights or legitimate interests in the domain name.
The Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. (Policy, paragraph 4(b).)
Complainant registered the trademark BARRISOL in Colombia in 2000 and in other countries, many years before the disputed domain name was registered. Complainant also registered the trademark BARISOL in the European Community in March 2012. In addition to the disputed domain name, Respondent has also registered the domain name , and received a cease and desist letter from Complainant in respect of that trademark on November 9, 2012. Respondent did not reply to that letter or to subsequent demands to transfer the disputed domain name.
This evidence indicates that Respondent was most likely aware of Complainant’s trademark rights at the time of Respondent’s registration of the disputed domain name.
The disputed domain name directs Internet users to a website under construction that appears in the Turkish language, and includes a link to a webhosting site. It is likely that Internet users who are directed to the website at the disputed domain name may question the existence of Complainant’s business in Colombia.
The Panel finds that Respondent has registered and is using the disputed domain name 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 Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: June 17, 2013
Full & Egal Universal Law Academy