WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normalu SA v. Ktdom
Case No. D2012-0993
1. The Parties
The Complainant is Normalu SA of Kembs, France, represented by FIDAL, France.
The Respondent is Ktdom, Seoul, Republic of Korea (“Korea”).
2. The Domain Name and Registrar
The disputed domain name <barrisolart.com> (the “Domain Name”) is registered with Internet Nayana Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 10, 2012, the Center transmitted by email to Internet Nayana Inc. a request for registrar verification in connection with the Domain Name. On May 11, 2012, Internet Nayana Inc. transmitted by email to the Center its verification response confirming that 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”).
On May 11, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On May 11, 2012, Complainant submitted a request that English be the language of the proceeding. Respondent did not submit any request regarding the language of the proceeding within the specified due date.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2012.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 18, 2012. 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 Normalu SA, a limited company registered under the laws of France and having its principle office in Kembs, France. It was founded in 1967 and started manufacturing stretch ceilings a few years later. Since 1975, Complainant has designed and manufactured stretch ceilings under the brand “Barrisol”.
In the early 1990s, Complainant began exporting Barrisol stretch ceilings to Eastern Europe, Asia, South America and Australia. Since then, Complainant has developed several new products each year and registered corresponding patents around the world. Complainant has received numerous international awards for innovative capacities and the quality of Barrisol products.
Complainant currently has five production sites in France and three in other countries. Its main production site is located in Kembs, France, and it employees more than 160 people. Complainant has over 1,200 approved installers, which are located in more than 110 countries.
Renowned architects such as Massimiliano Fuksas, Peter Eisenman, Philippe Starck, Kristian Gavoille, Normal Foster and Jean Nouvel use the Barrisol technique. Moreover, numerous museums, art galleries, commercial or sport or music centres, and exhibition halls throughout the world bear the BARRISOL mark.
Complainant has been operating a website located at “www.barrisol.com” and “www.barrisol.fr” for over 10 years. The websites display historical information about Complainant, a description of its products, and a picture and video gallery of its stretch ceiling designs.
Complainant has registered nearly 100 trademarks throughout the world, many of which include the name “Barrisol.” Complainant’s founder had registered and renewed the trademark BARRISOL in Korea since 1992, and the trademark was assigned to Complainant in 2004. Also, the trademark BARRISOL ART has been registered by Complainant in France since November 18, 2010.
According to the publicly available WhoIs database, Respondent is Ktdom. Respondent appears to be based in Korea, where Complainant has an authorized distributor, trademark rights, and a sizeable business. Respondent has no relationship with Complainant. Respondent does not appear to own any trademark registrations in the “Barrisol” name. Further, Respondent does not otherwise trade under the name “Barrisol.” Complainant has not authorized or licensed the use of the mark BARRISOL to Respondent or any person or entity affiliated with the Domain Name.
The Domain Name was registered to Respondent on January 13, 2012. The website appears to advertise and directly sell stretch ceiling products that directly compete with Complainant. Respondent is not related to Complainant nor is Respondent selling Barrisol products.
5. Parties’ Contentions
1. Identical or Confusingly Similar.
Complainant alleges abusive registration and use of the Domain Name <barrisolart.com> by Respondent and seeks the transfer of this Domain Name.
Complainant contends that it owns several trademark registrations for BARRISOL in countries around the world. Complainant further contends that it is the owner of registered trademark BARRISOL ART in France since 2010. All of these trademarks predate the creation of the Domain Name, registered on January 13, 2012.
Complainant contends that the Domain Name is identical and/or confusingly similar to trademarks in which Complainant has rights. In particular, Complainant alleges that the mere addition of a generic or descriptive term to the trademark BARRISOL does not grant self-distinctiveness to the Domain Name and dispel confusing similarity.
2. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or any legitimate interests in respect of the Domain Name. Complainant contends that Respondent is not currently and has never been known under the name Barrisol. Complainant further contents that Respondent is not in any way related to its business, is not one of its agents, and does not carry out any activity for or have any business with it.
Complainant contends that its stretch ceilings are sold throughout the world, including Korea, through a network of authorized dealers and installers. Complainant contends that it is engaged in an exclusive distribution agreement with Cocis Holding in Korea, which is not in any way affiliated with Respondent.
Complainant contends that Respondent is directly selling stretch ceiling products on its website operated under the Domain Name, and is doing so to associate this distribution with the trademark BARRISOL, which is one of the most recognized trademarks in the industry. The website under the Domain Name is not selling any Barrisol products.
Consequently, Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because Respondent was not expressly authorized or permitted to “use the trademark as a basis for the [D]omain [N]ame” and as its use of the Domain Name is not in connection with a bona fide offering of goods.
3. Registered and Used in Bad Faith
Complainant alleges that Respondent registered and is using the Domain Name in bad faith.
Complainant alleges that Respondent registered the Domain Name in bad faith because it could not have ignored the existence of Complainant and its well-known reputation and trademark in the field of stretch ceilings at the time the Domain Name was registered, for at least the following three reasons: (1) the trademark BARRISOL was registered by and in connection with Complainant in Korea since 1992; (2) the trademark BARRISOL was registered by Complainant since 1991 in France; (3) the trademark BARRISOL ART was registered by Complainant since 2010 in France; and (4) the company using the Domain Name is doing business in the same area as Complainant.
Complainant alleges that Respondent is using the Domain Name in bad faith because the Domain Name directs the Internet users to a website offering identical or very similar products as the Barrisol products sold by Complainant. Complainant contends that Respondent is using the website under the Domain Name in order to intentionally misdirect and attract for commercial gain Internet users searching for information about Complainant or searching for Complainant’s authorized goods and services by creating a likelihood of confusion with Complainant’s trademark.
Consequently, Complainant alleges: (1) pursuant to paragraph 4(b)(iv) of the Policy, Respondent’s use of the Domain Name constitutes evidence of bad faith use of the Domain Name; (2) pursuant to paragraph 4(b)(iii) of the Policy, Respondent’s use of the Domain Name has been made primarily for the purpose of disrupting the business of a competitor; and (3) Respondent’s use of the Domain Name qualifies as unfair competition because it knew of and has sought to take unfair advantage of the similarity between the Domain Name and Complainant’s BARRISOL trademark.
Respondent did not reply to Complainant’s contentions by the Response deadline of June 7, 2012, otherwise during the course of these proceedings.
6. Discussion and Findings
A. Preliminary Matter – Language of Proceeding
Although the language of the Registration Agreement and accordingly the default language under the Rules of the proceedings is Korean, the circumstances may permit this Panel to determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
Complainant submitted that English should be the language of the proceedings for the following reasons:
(1) The Domain Name is registered in English language. The word “art” is a common English and French word to describe a wide range of human activities aiming to creation.
(2) The website under the Domain Name is also available in English, which means that Respondent is fluent in English, at least for business purposes.
(3) There is no Registration Agreement provided on the website of the Registrar.
The Panel has to balance fairness to the parties against any procedural cost-efficiency and speed that may be gained by departing from the default language of the proceedings. The reasons cited by Complainant are helpful to address the question of whether English should be the language of the proceedings in preference to the default language. However, the Panel is especially persuaded by the following circumstances to justify the adoption of English as the language of the proceedings.
(1) The Complaint is filed in English and Complainant desires that English be the language of the proceedings;
(2) Although Respondent was offered the opportunity to submit a Response in English or Korean, it did not submit any formal Response, which in all likelihood either means that Respondent does not have any valid response, or is simply not interested to resist the Complaint;
(3) Significant disadvantage will be caused to Complainant and the further progress of the proceedings in terms of additional cost and time without any apparent advantage being gained should the proceedings continue in the default language; and
(4) There are no special circumstances which suggest that Complainant’s request should be denied.
It must be borne in mind that the Policy was created, among other reasons, for the effective and expeditious disposition of domain name disputes. In a case where a respondent does not respond to a complaint, the Panel is of the view that the complainant’s request should be respected unless special circumstances suggest otherwise.
Accordingly, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Administrative Panel to order the transfer of the Domain Name to Complainant. Those requirements are: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent 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.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraph 14(b) of the Rules, if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
B. Identical or Confusingly Similar
Complainant has provided sufficient evidence demonstrating that for many years it has been the registered owner of a large number of BARRISOL trademarks worldwide, including in Korea since 1992. Complainant has also provided sufficient evidence demonstrating its rights in the mark BARRISOL ART, which has been registered by Complainant in France since November 18, 2010.
The next question is whether the Domain Name is identical or confusingly similar to the trademark. To this Panel, the answer is that it is.
The Domain Name is identical to the trademark BARRISOL ART, except for the addition of a space between the words in the Domain Name. Since it is impossible to render spaces in the domain name system, the Panel concludes that the Domain Name is identical to the trademark BARRISOL ART.
Moreover, the Domain Name is identical to the BARRISOL trademark when the word “art” is discounted from the Domain Name. The Panel finds that the mark BARRISOL is well-known in the stretch ceiling industry throughout the world, including Korea. The word “art” does not distinguish the Domain Name from Complainant’s trademark and it is descriptive of the Barrisol products, which are advertised as artful (designed by renowned architects) and installed in numerous museums, art galleries, commercial or sport or music centres, and exhibition halls throughout the world.
Complainant cites the decision in Velcro Industries B.V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, WIPO Case No. D2008-0864 (<velcroart.net>) for the proposition that the complainant’s trademark is readily recognizable in the domain name and many commercial organizations are noted for their sponsorship of the arts. Similar to the reasoning in this cited decision, the Panel has no difficulty in accepting that a person familiar with Complainant’s widely known trademark will be likely to believe that the Domain Name is a name of or associated with Complainant.
The Panel therefore concludes that the Domain Name is identical or confusingly similar to Complainant’s trademark and that Complainant consequently has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Domain Name. Those circumstances are described as follows:
(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.
Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the Domain Name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). Complainant should nevertheless make out a prima facie case that Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Complainant owns several trademark registrations for BARRISOL in countries around the world. Complainant also owns several domain names referring to the trademark BARRISOL where it conducts sales and marketing of products under the Barrisol name. On the other hand, Respondent does not appear to own a registered trademark in the term Barrisol and does not otherwise appear to trade under the name Barrisol. Moreover, Complainant has not authorized, licensed, or otherwise consented to the use of the term Barrisol or Barrisol Art by Respondent or any person operating the website to which the Domain Name directs Internet users. Finally, it does not appear that Respondent is commonly known by the Domain Name.
There is also no indication that Respondent is making a legitimate noncommercial or fair use of the Domain Name without the intent for commercial gain to misleadingly divert users. Quite the contrary, it appears that Respondent or (if different) the operator of the Domain Name offers the same or confusingly similar stretch ceilings as Complainant. As pointed out by Complainant in its Complaint, the Domain Name directs Internet users to a website that advertises and offers for sale stretch ceiling products that compete with the products of Complainant, which is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that Respondent has any legitimate noncommercial or fair use in respect of the Domain Name. The Panel finds that the Complainant has made out a prima facie case, that the Respondent has not rebutted
The Panel therefore concludes that Respondent does not have rights or legitimate interests with respect to the Domain Name and that Complainant consequently has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of 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 website 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 website or location or of a product or service on your website or location.
As already mentioned, Respondent did not file any Response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the Domain Name.
Nevertheless, the Panel still has the responsibility of determining which of Complainant’s assertions are established as facts, and whether the conclusions asserted by Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The evidence, which is not rebutted by Respondent, shows to the Panel that Respondent must have known of Complainant and the BARRISOL mark and has sought to take unfair advantage of the similarity between the Domain Name and Complainant’s trademark, in order to draw Internet users to a website selling stretch ceiling products that compete with Complainant’s products sold under the Barrisol name. The Panel finds that Complainant has adduced convincing evidence that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s BARRISOL and/or BARRISOL ART trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s website. Accordingly, the Panel finds that the only credible explanation for the current use of the Domain Name is to direct Internet users to Respondent’s website and that Respondent is seeking to take advantage of the identity or confusing similarity between the Domain Name and Complainant to draw Internet users to that website for commercial advantage. Also, no evidence has been presented showing that Respondent has any connection to the name Barrisol.
Additionally, the Panel finds that Respondent’s behavior constitutes evidence of the registration and use of the Domain Name in bad faith under paragraph 4(b)(iv). As discussed above, by the time the Domain Name was registered to Respondent (on or about January 13, 2012), Complainant had already established a worldwide reputation as a market leader in stretch ceiling products sold under the BARRISOL mark and was the owner of dozens of registered trademarks that incorporated the term Barrisol in multiple jurisdictions, including the trademark BARRISOL ART in France since 2010. Accordingly, the evidence demonstrates to the Panel that Respondent has been using the Domain Name to direct Internet users who believe that the Domain Name is associated with Complainant to Respondent’s website in an attempt to advertise and sell various products that compete with the products of Complainant. This behavior evidences bad faith.
Overall, the Panel finds that the above demonstrates a typical cyber-squatting case.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith and that Complainant consequently has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <barrisolart.com> be transferred to Complainant.
Andrew J. Park
Dated: July 2, 2012