WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normalu SA v. Cover BV
Case No. DNL2011-0040
1. The Parties
Complainant is Normalu SA, of Kembs, France, represented by MEYER & Partenaires, France.
Respondent is Cover BV of Tilburg, The Netherlands, represented by Gerritse Poelman advocaten, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <barrisol.nl> (the “Domain Name”) is registered with SIDN through Protagonist BV.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2011. On June 9, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 10, 2011, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 10, 2011. In accordance with the Regulations, article 7.1, the due date for Response was June 30, 2011. The Response was filed with the Center on June 30, 2011.
On July 4, 2011, SIDN commenced the mediation process. On August 4, 2011, SIDN extended the mediation process until September 4, 2011. On September 2, 2011, SIDN extended the mediation process until October 4, 2011. On October 5, 2011, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on October 21, 2011. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
On October 23, 2011, Complainant filed a further submission replying to the Response filed by Respondent. Based on article 12.1 of the Regulations, the written phase of the procedure shall be concluded after the appointment of the panelist, provided that any requested or admitted submissions made thereafter shall be deemed to be part of the record. Based on article 11.2 of the Regulations, should a party file a further submission without being so invited, the panelist shall determine the admissibility of such submission. In view of the nature and the purpose of these proceedings, a quick and cheaper alternative to court proceedings, and in view of the relatively short terms for filing the statements and the decision, it is not evident that such an additional submission will always be admissible. Now that no further explanation has been given why this additional submission would be necessary, the Panelist considers the submission in the present case inadmissible and will not take it into consideration.
4. Factual Background
Complainant is the owner of the trademark BARRISOL, which apparently is the world-leading brand in terms of sales and innovation on the stretch ceiling market since its creation in 1975.
Complainant owns several trademark registrations for this mark world wide. In these proceedings it invokes the following trademarks (hereinafter: the “Trademarks”):
International trademark BARRISOL with validity in Benelux, registered on October 13, 1987, under number 518317 for goods in classes 19 and 24;
International trademark BARRISOL with validity in Benelux, registered on July 18, 1992, under number 589894 for goods in class 11.
Respondent was one of Complainant’s distributors for The Netherlands for Barrisol products. In this capacity Respondent registered the Domain Name on February 4, 1999.
5. Parties’ Contentions
A trademark or trade name protected under Dutch law
Complainant claims that it is entitled to the Trademarks. According to Complainant, the Domain Name is identical to the Trademarks since it exists merely of the word “barrisol” and the non distinguishing extension “.nl”.
No rights or legitimate interests
According to Complainant, at the time of registering the Domain Name, Respondent had a right or legitimate interest to do so, being one of Complainant’s distributors. However, this distributor relationship was terminated by Complainant on June 24, 2010. As a result, the potential consent for use of the Domain Name by Respondent would have been automatically withdrawn when the agreement was terminated.
Therefore, according to Complainant, Respondent no longer has any rights to or legitimate interests in the Domain name after this date.
Registration or use in bad faith
According to Complainant, the Domain Name was directed to its Dutch website after numerous requests to Respondent. However, on March 24, 2011, Complainant noticed that the Domain Name was no longer directed to its website but for a short period showed Respondent’s website instead. Respondent is currently selling products of Complainant’s direct competitors, and Complainant believes that in the future Respondent may use the Domain Name to take advantage of Complainant’s well-known Trademarks to confuse and divert Internet users to Respondent’s website.
Moreover, according to Complainant, the Domain Name could also be used for e-mail addresses and for sending advertising to attract Internet users. The e-mail address to contact Respondent displayed on Respondent’s website is “firstname.lastname@example.org”. Complainant found evidence that seems to show that e-mail addresses with the extension “@barrisol.nl” have been used to send spam, which would damage the repute of the Trademarks.
Therefore Complainant claims that Respondent has engaged in bad faith use of the Domain Name.
Primarily Respondent claims that the Complaint is inadmissible because it is not Respondent but the company CoverAll B.V., the legal entity that is holding the Domain Name.
Alternatively, Respondent claims that there were no grounds for the termination of the distribution agreement on June 24, 2010. Therefore, according to Respondent, the agreement is still in force. Therefore Respondent claims to have a valid reason to maintain the registration of the Domain Name.
Moreover Respondent claims that it does not use the Domain Name in bad faith as it merely redirects to the website of Complainant.
Further, there is a matter of pre-use as Respondent claims that the brand is five years younger than the Domain Name.
Lastly, Respondent claims that Complainant forfeited its rights in the Domain Name as Complainant’s first request for transfer of the Domain Name was already made in 2008.
6. Discussion and Findings
With respect to Respondent’s primary defense, this defense is denied. SIDN has confirmed that the Domain Name is registered in the name of Respondent and not in the name of CoverAll B.V.
A. Identical or Confusingly Similar
The Domain Name consists only of the word “barrisol” which is identical to the Trademarks. As correctly stated by the Complainant, the country code Top Level Domain “.nl” has no distinguishing effect and should be removed from the analysis. Therefore, the Panelist concludes that the Domain Name is identical to the Trademarks.
The Panelist therefore rules that Complainant has met the first requirement of the Regulations as set out in article 2.1 (a) under I.
B. Rights or Legitimate Interests
The Panelist shares both Complainant’s and Respondent’s view that at the time of registration Respondent had a legitimate interest in the Domain Name as a distributor of Barrisol products.
However, it is uncontested between the parties that a termination letter was sent by Complainant more than a year ago. Since this time Respondent no longer trades in Complainant’s products. The fact that Respondent objects to the termination is a matter that cannot be decided in the present proceedings. As Respondent does not claim to have taken any action to contest the termination, the Panelist must address the facts, which are that Respondent is no longer acting as a distributor for Complainant. As a consequence Respondent no longer has legitimate interests in the Domain Name.
Respondent has further claimed that the Domain Name is older than the Trademarks. However, the Domain Name was registered in 1999 and the Trademarks were registered in 1987 and 1992, respectively. Regardless of the relevance of this question in the present proceedings, the Panelist notes that the Trademarks are substantially older than the Domain Name.
Respondent has not claimed any other rights to or legitimate interests in the Domain Name.
The Panelist therefore rules that Complainant has met the second requirement of the Regulations as set out in article 2.1 (b).
C. Registered or Used in Bad Faith
Respondent claims that it does not use the Domain Name in bad faith because it directs to the website of Complainant. However, the Panelist agrees with Complainant that this makes Complainant dependent on Respondent’s actions. It is uncontested between the parties that a technical error has already occurred at least once, leaving the Domain Name linked to Respondent’s website. Furthermore, Respondent is offering products that compete with Complainant’s products under the Trademarks.
It furthermore appears that Respondent is using the Domain Name for the e-mail address “email@example.com” which could create confusion among Internet users who will presume that Respondent is still a distributor of Complainant.
For the above reasons the Panelist concludes that the Domain Name is being used in bath faith.
The Panelist therefore rules that Complainant has met the third requirement of the Regulations as set out in article 2.1 (c).
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <barrisol.nl> be transferred to Complainant.
Remco M.R. van Leeuwen
Dated: November 4, 2011