WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normalu SA v. Seref Akkaya, barrisoltavan.com
Case No. D2012-1513
1. The Parties
The Complainant is Normalu SA of Kembs, France, represented by Fidal, France.
The Respondent is Seref Akkaya, barrisoltavan.com of Istanbul, Turkey.
2. The Domain Name And Registrar
The disputed domain name <barrisoltavan.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2012. On July 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2012.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on August 30, 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 Normalu SA, a company registered under the laws of France and having its principal place of business in Kembs, France. It was founded in 1967 and started manufacturing stretch ceilings a few years later. Since 1975, the Complainant has designed and manufactured stretch ceilings under the brand “Barrisol”.
In the early 1990s, the Complainant started exporting its “Barrisol” stretch ceilings to countries in Eastern Europe, Asia, South America and Australia. Since then, the Complainant has continuously developed new products and obtained corresponding international patents for those products. The Complainant gained numerous international awards recognizing the Complainant’s capacity and quality of its products branded “Barrisol”.
The stretch ceilings under the brand “Barrisol” can be found in many architectural places, combined or not with lighting or painted or printed design. Architects such as Massimiliano Fuksas, Peter Eisenman, Philipp Starck, Kristian Gavoille, Norman Foster or Jean Nouvel use the “Barrisol” technique for their projects, and many museums, art galleries, commercial, sport or music centers or exhibition halls are making use of “Barrisol” ceilings.
The Complainant has five production sites in France and three in other countries and has more than 160 employees in France. The Complainant’s 2011 turnover is more than EUR 21 million, 50% of which account for exports. The Complainant disposes of a network of more than 1,200 proved installers in more than 110 countries, including France, Europe and other countries of the world, such as Turkey.
The Complainant is mainly operating, on the Internet, under the domain names <barrisol.com> and <barrisol.fr>. Besides that, the Complainant disposes of the domain names <barrisol.asia>, <barrisol.net>, <barrisol.us>, <barrisol.de> and <barrisol.co.uk>.
According to a WhoIs excerpt generated from Domain Tools according to Annex A to the Complaint, the Respondent, Seref Akaya of Istanbul, Turkey, is the current registrant of the disputed domain name and thus the Respondent in this proceeding. The disputed domain name resolves into a website in Turkish language, in which pictures of rooms and room ceilings are displayed and the words “Barrisol Tavan” are mentioned. The disputed domain name was registered on 16 March 2012.
5. Parties’ Contentions
The Complainant contends that “Barrisol” is the world leading brand in terms of sales and innovation on the stretch ceiling market since its creation in 1975. The Complainant claims to have registered nearly 100 trademarks throughout the world. In particular, the Complainant owns the following trademarks, copies of which are included in the Annexes to the Complaint:
- Turkish trademark BARRISOL no. 167997, registered on November 14, 1996 with a protection date until March 11, 2006, no information on protection beyond this protection date is available in the excerpt dated July 25, 2012 provided in Annex D1 to the Complaint;
- French trademark BARRISOL no. 1404078, registered on April 17, 1987 and currently in force according to excerpt from the French Institute on Intellectual Property dated July 23, 2012 according to Annex D2 to the Complaint.
According to a WhoIs excerpt generated from Domain Tools according to Annex A to the Complaint, the Respondent, Seref Akaya of Istanbul, Turkey, is the current registrant of the disputed domain name and thus the Respondent in this proceeding. The disputed domain name resolves into a website in Turkish language, in which pictures of rooms and room ceilings are displayed and the words “Barrisol Tavan” are mentioned. The disputed domain name was registered on March 16, 2012. The Complainant claims that the above-cited Turkish trademark BARRISOL is in force. The Complainant also claims to own a French device mark BARRISOL no. 3222786, filed on April 28, 2003 which it claims to have provided copies for in Annex D2 to the Complaint. The Complainant contends that its trademarks predate the registration of the disputed domain name. However, the content of Annex D2 to the Complaint refers to the French trademark no. 1404078 only.
The Complainant further contends that “tavan” is a Turkish word which means “ceiling”, and that thus “tavan” is a generic addition to “Barrisol”, meaning “Barrisol ceilings”, which is why the disputed domain name is confusingly similar to the BARRISOL trademark in which the Complainant has rights. In particular, the Complainant alleges that the mere addition of the generic term “tavan” to the BARRISOL trademark does not dispel confusing similarity.
The Complainant alleges that the Respondent has no rights nor any legitimate interests in respect of the disputed domain name. In particular, the Respondent does not belong to the network of authorized dealers and installers of the Complainant in Turkey. The Respondent is not in any way related to the Complainant nor, according to the knowledge of the Complainant, selling “Barrisol” branded products. The Complainant contends that the Respondent is directly selling stretch ceiling products on its website operated under the disputed domain name and is doing so in order to associate this distribution with its BARRISOL trademark, which is one of the most recognized trademarks in the industry.
Finally, the Complainant alleges the Respondent has registered and is using the disputed domain name in bad faith. The Complainant claims that Internet users may believe that the disputed domain name is the Complainant’s official website and would expect finding information related to the Complainant or at least one of its authorized dealers or installers on it. Instead, the disputed domain name directs Internet users to a website offering an identical or at least very similar product and thus the Respondent is, under the disputed domain name, intentionally misdirecting and attracting for commercial gain Internet users to searching information about the Complainant on the website, into which the disputed domain name resolves. Furthermore, the Complainant alleges that the use of the disputed domain name is being made primarily for the purpose of disrupting the business of the Complainant as a competitor to the Respondent, and, besides that, engaging in unfair competition to the Complainant by using the confusingly similar domain name pointing, by the Turkish word “tavan”, precisely to the area of expertise of the Complainant, namely ceilings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of the Respondent to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.
In the event of default, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate.” As stated by numerous panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”
In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.
A. Identical or Confusingly Similar
As far as the Complainant claims that it has rights in the BARRISOL trademark, being confusingly similar to the disputed domain name, it would have been helpful if the Complainant had provided – if it does dispose of nearly 100 trademarks worldwide, as it claims – consistent evidence at least on the two trademarks that the Complainant has named as a basis to this Complaint, namely the Turkish trademark BARRISOL No. 167997 and the French trademark BARRISOL No. 3222786. According to the Annexes to the Complaint, the trademark details as contended in the Complaint do not match with what is reflected in the Annexes D1 and D2 to the Complaint. As far as the Turkish trademark in Annex D1 to the Complaint is concerned, which document is a very recent excerpt dated July 25, 2012, thus reflecting the present state of trademark protection, there is no protection for “Barrisol” in Turkey beyond the protection date March 11, 2006. As far as the French trademark BARRISOL No. 3222786 (stylized harpoon device) is concerned, Annex D2 to the Complaint gives information on what appears to be a completely different trademark, namely the French trademark BARRISOL No. 1404078 (word), which, according to the excerpt dated July 23, 2012, is at least still in force, but the further details of which do not match with what is contended in the Complaint. Be that as it may, the Panel deducts from the information provided by the Complainant, that the Complainant at least has trademark rights in France in the mark BARRISOL No. 1404078 which predate the registration of the disputed domain name.
In summary, the Complainant has provided evidence for and has thus established that it has rights in the BARRISOL trademark.
It is common practice under the Policy to disregard the generic top-level domain (“gTLD”) of a disputed domain name such as “.com”, “.net” or others for the purposes of establishing identity or confusing similarity under paragraph 4(a)(i) of the Policy. Therefore, the relevant part for the comparison is “Barrisoltavan”. The word or letter combination “tavan” is not derived from the English language. As it has not been contested by the Respondent, the Panel accepts the contention of the Complainant that “tavan” is the Turkish word for “ceiling”. As the Respondent is apparently seated in Turkey, and as it is apparent from the website excerpt provided in Annex E to the Complaint, that the Respondent is addressing predominantly the Turkish Internet users, the Panel accepts that, in this particular context, the element “tavan” as meaning ceiling is a generic addition to the BARRISOL trademark, and that thus the disputed domain name is a combination of the BARRISOL trademark, in which the Complainant has rights, and the generic Turkish term “tavan” indicating the nature of the products, for which the trademark of the Complainant is generally used, namely ceilings. In view of this, the disputed domain name is considered to be dominated by the part “Barrisol”.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the BARRISOL trademark, in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has claimed that the Respondent has no rights or legitimate interests in the disputed domain name, and provides a number of arguments to that extent. The Complainant has to establish a prima facie case under the Policy, paragraph 4(a)(ii).
In making the prima facie case, the Complainant has established that the Respondent is not known under the name “Barrisol”. The Respondent does not, according to the contentions of the Complainant, own any BARRISOL trademark. The Complainant further ascertains that the Respondent is not in any way related to the business of the Complainant, and that none of the agents of the Complainant carries out any activity with the Respondent. Furthermore, the Complainant specifies that “Barrisol” products are sold through a closed network, and that the Respondent, while there are actually authorized distributors in Turkey, is none of those. Finally, the Respondent appears to be directly selling stretch ceiling products and appears to want to be associated in the Complainant’s distribution with the BARRISOL trademark and thus the Complainant. In view of all these contentions, none of the circumstances described in paragraph 4(c)(i) to (iii) of the Policy is apparent here, thus the Respondent cannot be considered to have acquired any venue in trademark rights in respect of the disputed domain name, to be generally known by the disputed domain name or to be making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. With this, the Panel considers the prima facie case to have been made by the Complainant.
It is a well-established principle that once the Complainant makes a prima facie case, that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of evidence shifts on the Respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present any arguments providing for the contrary. In particular, the Respondent has not contended that any of the circumstances described in the Policy paragraph 4(c), or any other circumstances are present in its favour.
Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of the Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the domain name holder has registered or has acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant, who is the owner of the trade mark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the domain name holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’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 his website or location or of a product or service on the domain name holder’s website or location.
In the present case, the disputed domain name consists of the Complainant’s trade mark and a generic addition. The generic addition “tavan” for the Turkish consumer indicates exactly the products, for which the BARRISOL trademark is claimed to be well-known. The Respondent, according to the evidence provided in Annex E to the Complaint, appears to be actually in the business of interior design and providing ceilings to rooms, and, on its website, into which the disputed domain name resolves, apparently offers various ceiling types, such as “Asma Tavan”, “Tas Yünü Tavan” and “Metal Tavan”. The website that the Respondent has created in order to link the disputed domain name to “Barrisol” is designed in such a way that it appears that any Internet user in Turkey looking for ceiling products of the Complainant under “Barrisol” and led to the disputed domain name, would naturally assume that this is at least the website of an authorized dealer of the Complainant, which, in reality, is not the case. So, by using the BARRISOL trademark for in the disputed domain name, the Panel accepts the view that the Respondent, as the holder of the disputed domain name, is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website of its products or services. This view is supported by the fact that the disputed domain name was created at a time, when the Complainant, under its BARRISOL trademark had already established reputation in the ceiling business. Therefore, it does not have to be decided, whether any of the other elements described above under paragraphs 4(a)(i), (ii) or (iii) of the Policy, as had been claimed by the Complainant, are present in this case.
Therefore, and in the lack of any allegation or evidence to the contrary, the Panel accepts that the Respondent has registered and is using the disputed domain name in bad faith.
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 <barrisoltavan.com> be transferred to the Complainant.
Dated: September 21, 2012