WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normalu v. Domain Hanger Sales
Case No. D2012-1494
1. The Parties
The Complainant is Normalu of Kembs, France, of France, represented by Fidal, France.
The Respondent is Domain Hanger Sales of Philadelphia, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <barrisolceilings.com> is registered with GoDaddy.com, LLC (the ““Registrar””).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 24, 2012. On July 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information of the Respondent. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 276, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2012. The Respondent did not submit any formal response, but did communicate twice with the Center during these proceedings.. Accordingly, the Center notified the Respondent’s default on August 17, 2012.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 12, 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
The Complainant is in the business of stretch ceilings and sells its products under the trademark BARRISOL. The Complainant has several registered trademarks for its BARRISOL marks and among these are:
US trademark BARRISOL and design, filed on October 28, 2003 in class 11 under No.2951027.
US trademark BARRISOL, filed on October 5, 1990 in class 19 under No.1769308.
French trademark BARRISOL, filed on April 17, 1987 in classes 19 and 27 under No.140407.
The Complainant has registered several domain names with its BARRISOL mark and these include <barrisol.com> and <barrisol.fr>, which the Complainant uses to operate its websites concerning its business.
The Respondent registered the disputed domain name <barrisolceilings.com> on April 15, 2012.
5. Parties’’ Contentions
The Complainant traces its history and states that Mr. Fernand Scherrer is its founder who established the company in 1967. Initially he was selling aluminum products and later started producing stretch ceilings. The Complainant claims that the first patent for stretch ceilings was granted in 1975 and around the same time its brand BARRISOL was created. In the early 1990’’s the Complainant states it increased its exports to new countries in Eastern Europe, Asia, South America and Australia. Two decades later, the Complainant alleges it became a member of the club of world’s leaders for exports while it continued to make several new products each year with corresponding international patents. The Complainant states it has received numerous international awards for its innovations and its quality products and at the turn of the millennium, BARRISOL stretch ceilings were used in many architectural places in a variety of ways , incorporating functional aspects like acoustics, thermal insulation and environmently friendly features.
The Complainant states it has five production sites in France and three in other countries, the main one being located in Kembs, France. It employs more than one hundred and sixty people and claims its turnover exceeds twenty one million Euros and half its production is exported. The Complainant states that it has more than one thousand two hundred approved installers located in over one hundred and ten countries worldwide and has won more than thirty awards for its BARRISOL products. Famous architects such as Massimiliano Fuksas, Peter Eisenman, Phillippe Starck, Kristian Gavoille, Nornam Foster and Jean Nouvel use its products for museums, art galleries, commercial, sport centers and exhibition halls. The Complainant states Mr. Jean-Marc Scherrer, the founder’s son, is its new CEO and is a member of the French association Union des Fabricants (UNIFAB), engaged in the defense of intellectual property rights on behalf of French companyies leaders in their respective fields of business.
The Complainant asserts that BARRISOL is a world-leading brand in terms of sales and innovation in the stretch ceiling market since its creation in 1975 and that it has nearly one hundred registered trademarks throughout the world. The Complainant states that it has rights in the trademark that predates the registration of the disputed domain name and argues that that incorporating the trademark in its entirety renders the disputed domain name confusingly similar to its mark and the gTLD “.com” is not significant in the analysis of confusing similarity. The addition of the generic word “ceilings “ does not distinguish the disputed domain name from the mark as it describes the products marketed under its mark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, and extends the following arguments: The Respondent is not known by the name BARRISOL. The USPTO search for the name BARRISOL shows the Complainant owns all trademarks under the name and none are in the name of Respondent. The Complainant believes that the Respondent has no other rights in the name BARRISOL. The Respondent is not related to its business and is not its authorized agent. The website operated under the disputed domain name resolves to a parking page offering links to competitors of the Complainant, this shows the Respondent does not use the disputed domain name for a bona fide offering of goods and services.
The Complainant submits that the disputed domain name has been registered in bad faith, as the Respondent could not have ignored the existence of the Complainant and its well-known trademark in the field of stretch ceilings as it was registered in the USA since 1990 and in France since 1975. Given its strong reputation in the BARRISOL mark for stretch ceilings it raises a prima facie presumption that the Respondent registered the domain name for selling it to the Complainant or its competitors. Further the use of the word ““ceilings”” by the Respondent’s indicates an intention to attract users for commercial gain to the Respondent’s site by creating a likely hood of confusion with Complainant’s mark.
The Complainant argues that the disputed domain name is being used in bad faith as Internet users are likely to be misdirected or attracted to the disputed domain name based on the Complainant’s trademark believing <barrisolceilings.com> is the Complainant’s official website. The Complainant further argues that the Respondent has registered the disputed domain name primarily for disrupting the business of a competitor and is targeting its main company and its single authorized distributor. The disputed domain name is being offered for sale to the general public and as its mark is being unfairly exploited the Complainant requests for transfer of the disputed domain name.
The Respondent is Domain Hanger Sales and as per the Whois contact information the Respondent’s postal address is shown as a Post Box number in Philadelphia, Pennsylvania, USA. The Respondent did not file a formal response in the proceedings but there are two email communications on record from the Respondent.
The first one is dated July 25, 2012 and is addressed to the Complainant’s counsel. In that email the Respondent states that the domain name was purchased in good faith with the intention of using it as a public forum to talk about the Complainant’s stretch ceiling products. In the Respondent’s words ““….to talk about the wonderful ceilings that stretch and go back in place. This is such a new thing and I was thinking of giving it a place for people in the industry to find out about their needs for genuine and uncensored questions and answers”.
The Respondent goes on to state that research for the trademark “Barrisol Ceilings” showed ““there was none”” and that the Respondent did see via Google that the Complainant already had a website called ““Barrisol USA”” but wanted a place for the public to talk about the incredible stretch ceilings and did not think it was an infringement of any trademark. The Respondent concludes the email with the question: ““What is it you are seeking for me to do?””.
On August 18, 2012 a further email from the Respondent was sent to the Center in bid to settle the dispute. The email states that the Respondent’s email account was hacked and a Trojan horse virus was found and that someone was using the account and the Respondent was unable to read .pdf files until recently. Further the Respondent seems to state that he had contacted the Complainant’s counsel, Nappy to offer the transfer of the disputed domain name. The Respondent then mentions that the present email could be considered as his authorization to transfer the disputed domain name.
The Center replied to the Respondent’s email stating the due date for the response was August 16, 2012 and under paragraph 6 of the Rules a Panel had to be appointed in the case. The Center further informed the Complainant of the email received from the Respondent enquiring whether the Complainant was open for the settlement offer made in the Respondent‘s email. The Complainant replied by an email dated August 24, 2012 that it was not interested in settling the matter, thereby implying that it wished to continue with the case.
6. Discussion and Findings
The Panel notes the Respondent’s email from August 18, 2012, and the apparent consent to transfer the disputed domain name to the Complainant. As there appears to be at least some ambiguity as to the genuineness of the Respondent’s consent and as the Complainant has stated its intention not to settle the matter, the Panel will proceed to a substantive determination of the merits. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.13.
The Complainant has to establish three factors under the Policy paragraph 4 (a) to obtain the remedy of transfer of the disputed domain name. These are:
(i) The disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first factor under paragraph 4(a) requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds the Complainant has established its rights in the trademark BARRISOL in these proceedings by submitting documents of its registered rights in the trademark. The Panel also notes that the Complainant’s rights in the BARRISOL mark has been recognized in previous cases. See Normulu S.A / Privacy Protect.org, WIPO Case No. D2011-0444 (<barrisol.org> and <barrisol.info>) and Normulu SA v. Shanghai Pinpoint Network-Tech Co. Ltd., WIPO Case No. D2012-0864 regarding (<barrisolstar.com> and <barrisolfabric.com> ).
It is a well accepted in domain name jurisprudence that the addition of a generic term with a trademark does not typically influence the finding of confusing similarly of the domain name with the mark in question. See Normulu SA v. Shanghai Pinpoint Network-Tech Co. Ltd [supra], where it was found that the addition of generic words ““star”” and “fabric” to the Complainant’s BARRISOL mark did not to lessen the confusing similarity of the domain names with the mark. Furthermore, if the generic term used in the domain name is one that describes or reflects the product or the services offered under the trademark, such a term would be found to increase the confusing similarity with the trademark. See for instance Tommy Bahama Group Inc. v. Berno Group International, WIPO Case No. D2012-0531, concerning the domain name <tommybahamawatch.com>, where it was found that the use of the term ““watch”” added to the confusing similarity when used with the trademark TOMMY BAHAMA.
In the present case, the trademark BARRISOL is found to be associated with the term ““ceilings”” as the Complainant has established its use of the said mark with products related to ceilings. The Panel therefore finds the trademark combined with the generic word ““ceilings”” in the disputed domain name substantially increases the confusingly similar of the disputed domain name with the Complainant’s trademark BARRISOL.
The Panel further finds the Respondent’s statement concerning the non-existence of a trademark for “Barrisol Ceilings” does not alter the Panel’s conclusion that the disputed domain name is confusingly similar to the Complainant’s BARRISOL mark, given the Complainant's evidence of its well-established rights in the mark.
The Complainant has accordingly satisfied the first requirement of paragraph 4 (a) of the Policy.
B. Rights or Legitimate Interests
The second factor under paragraph 4 (a) of the Policy requires the Complainant to show that the Respondent lacks rights or and legitimate interests in the domain name. It is sufficient for the Complainant to make a prima facie showing that the Respondent lacks rights or and legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO of WIPO Panel Views on Selected UDRP Questions.
The Complainant has submitted that the Respondent has no trademark rights or other rights corresponding to the BARRISOL name and that the Complainant owns all trademarks under the name. The Complainant has asserted that the Respondent is not related to its business and is not its authorized agent. As the website operated under the disputed domain name resolves to a parking page offering links to third party sites or competitors of the Complainant, under the circumstances, the disputed domain name is not used for a bona fide offering of goods and services.
The Panel finds merit in the Complainant’s arguments that the Respondent lacks rights in the domain name and has merely registered the disputed domain name with the intention of deriving some kind of monetary gain due to the trademark value associated with the Complainant’s BARRISOL mark. The Panel notes that the disputed domain name is advertised for sale and has posted pay per click links to third party sites. Given these facts, under the circumstances of the present case it can be reasonably inferred that the disputed domain name has been acquired for the commercial exploitation based on the Complainant’s trademark value. It is well recognized that such use of the domain name is not legitimate, bona fide or non-commercial use. See Allstate Insurance Company v. Domain Admin, E-Promote c/o Allstatelife insurance.com, c/o Allstaelifeinsurance.com, WIPO Case No. D2011-0051;. (<allstatelifeinsurance.com> and <allstatelifeinsurance.com>) where it was found that the use of a well known trademark in a domain name that redirects consumers to a website that is only used for hyperlinks is not a legitimate commercial use.
Furthermore, the Panel finds the Respondent’s unsupported contention that the disputed domain name “was purchased by [it] but was intended for use as a public forum” to be without basis and does not afford the Respondent a right or legitimate interest in the disputed domain name.
The Panel finds that the Respondent has not filed any evidence to show any rights in disputed domain name under paragraph 4 (c ) of the Policy or otherwise. In the absence of any evidence from the Respondent to demonstrate any rights, the Panel finds the evidence provided by the Complainant validates the arguments that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and has no legitimate rights in the disputed domain name. Furthermore, the Respondent has indicated in the email dated August 18, 2012 willingness to transfer the disputed domain name to the Complainant, which indicates the Respondent’s tacit lack of rights in the disputed domain name.
Based on an assessment of the evidence on record and the parties’ pleadings, the Panel finds the Complainant has made a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant has satisfied the second requirement of paragraph 4 (a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has argued that the disputed domain name was registered and is being used in bad faith to exploit the fame and goodwill of the Complainant’s trademark.
Paragraph 4 (b) (i) of the Policy makes reference to circumstances indicating bad faith registration and use of the domain name if the Respondent has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark for valuable consideration in excess of documented out of pocket costs. The Panel finds the unchallenged evidence on record clearly shows the Respondent has advertised the sale of the disputed domain name to the general public on the website. Under the circumstances of the case, this shows is evidence of bad faith registration and use of the disputed domain name as described under paragraph 4 (b) (i) of the Policy.
Paragraph 4 (b) (iv) of the Policy makes reference to circumstances indicating bad faith registration and use of the disputed domain name with the intent to attract 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 Respondent’s website. The circumstances in the present case show the Respondent is clearly aware of the intrinsic value of the disputed domain name to generate click through revenue based on the Complainant’s mark.
The Panel finds that the Respondent’s registration of the disputed domain name has been long after the Complainant has adopted and used the BARRISOL mark and established its rights in the BARRISOL mark for its stretch ceiling products. The disputed domain name is being used to host a parking page and is not used for any legitimate bona fide or non commercial use as alleged by the Respondent and finally the disputed domain name has been offered for sale to the general public. All these circumstances demonstrate that the disputed domain name was registered and is being used by the Respondent with an intention to obtain some form of commercial gain arising from the like hood of affiliation with the Complainant’s BARRISOL trademark, which is considered bad faith registration and use as described under paragraph 4 (b) (iv) of the Policy.
In the light of the preceding discussions the Panel finds that the Respondent has registered the disputed domain name in bad faith and uses it in a manner that constitutes bad faith use as described under paragraphs 4 (b) (i) and 4 (b) (iv) 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 disputed domain name <barrisolceilings.com> be transferred to the Complainant.
Dated: September 26, 2012