WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry Callebaut AG v. Gerard Merveille

Case No. D2014-1930

1. The Parties

The Complainant is Barry Callebaut AG of Zurich, Switzerland, represented by Meissner Bolte, Germany.

The Respondent is Gerard Merveille of Paris, France.

2. The Domain Name and Registrar

The disputed domain name <barry-callebaut.company> is registered with Ascio Technologies Inc. (the "Registar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2014, 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 November 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 28, 2014.

The Center appointed Luca Barbero, Thomas Hoeren and Alexandre Nappey as panelists in this matter on December 19, 2014. The Panel finds that it was properly constituted. Each member of 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 a Swiss company manufacturing chocolate and cocoa products and operating its business since 1996 under the name Barry Callebaut AG. It has also several legal sub-entities and joint companies operating under the name Barry Callebaut in many countries all over the world.

The Complainant is the owner, amongst others, of the following word trademark registrations for BARRY CALLEBAUT:

- Swiss trademark No. P-453449, filed on March 5, 1998, in classes 29 and 30;

- International trademark No. 702211, registered on September 4, 1998, in classes 29 and 30;

- United States trademark No. 2320385, filed on May 11, 1998, in international classes 29 and 30.

The Complainant is also the owner of several domain names including the mark BARRY CALLEBAUT, such as <barry-callebaut.com>, <barry-callebaut.org>, <barry-callebaut.ch>, <barry-callebaut.de>, <barry-callebaut.fr> and <barry-callebaut.co.uk>.

The disputed domain name <barry-callebaut.company> was registered on July 15, 2014.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the name of its company, with the sole addition of a hyphen to replace the blank space between the two words "Barry" and "Callebaut".

The Complainant also points out that the new generic Top-Level Domain (gTLD) ".company" is a consistent extension of the Complainant's worldwide web presence and fits with its existing range of domain names. It thus concludes that the Respondent has hindered the Complainant from registering the disputed domain name for its own business.

As to the Respondent's lack of rights or legitimate interests, the Complainant states that the information displayed in the WhoIs records of the disputed domain name and on the corresponding web site does not provide any hint that the Respondent may have rights or legitimate interests in the disputed domain name. The Complainant further asserts that the Respondent does not own a company named Barry Callebaut or any trademark registration for BARRY CALLEBAUT.

The Complainant further alleges that the Respondent is not legitimately using the disputed domain name as it has been merely redirecting it since its registration to a parking page. In addition, it also states that the Respondent did not reply to the Complainant's request to regulate the rising dispute in an amicable way before the filing of the Complaint.

The Complainant informs the Panel that it submitted the Swiss trademark No. P-453449 for BARRY CALLEBAUT into the Trademark Clearinghouse on January 10, 2014 and asserts that the Respondent and the Complainant have received notices from the Trademark Clearinghouse in which the collision of the disputed domain name with the Complainant's trademark was mentioned but, nevertheless, the Respondent did not refrain from registering the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith since the Respondent was aware of the Complainant's trademark at least since the Trademark Clearinghouse sent the corresponding notice and registered it to prevent the Complainant from reflecting its trademark in a corresponding domain name. It also submits that any use of the disputed domain name would be likely to cause confusion with the Complainant's trademarks and existing domain name registrations.

The Complainant also argues that, even if the Respondent was a competitor, such behavior of registering a domain name corresponding to a competitor's mark and company name would be able to disturb the Complainant's commercial activity and to interfere with the Complainant's rights.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence on records, the Panel finds that the Complainant has established rights on the trademark BARRY CALLEBAUT in various jurisdictions, and notably in France, where the Respondent is supposed to be located.

The Panel notes that the disputed domain name is identical to the Complainant's mark, except for the hyphen, standing for the space between the wordings "Barry" and "Callebaut", and the gTLD ".company". As stated in a number of prior UDRP decisions, the technical suffix can be disregarded when comparing the domain name at issue with a complainant's trademark. See, along these lines, the decision rendered by the panel in Carrefour v. Joseph Azuka, WIPO Case No. D2014-1276 (<carrefour.company>).

In view of the above, the Panel finds that the requirement set in paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).

The Panel notes that the Respondent has not submitted a Response and that, according to the Complainant's allegations, there has never been any relationship between the parties and the Respondent has not been authorized to use the Complainant's trademark.

In addition, there is no evidence that the Respondent is commonly known by the disputed domain name or by a name corresponding to the disputed domain name.

The Panel is also satisfied that the current use of the disputed domain name, which resolves to a mere parking page, does not constitute a bona fide offering of goods or services. In addition, in light of the correspondence of the disputed domain name with the Complainant's trademark and in absence of any explanations from the Respondent as to the reasons why it registered the disputed domain name, the Panel also finds that the Respondent is not making a legitimate noncommercial or fair use.

The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the Complainant's trademarks relate to a company name which is well established since 1996 as one of the main chocolate producers in Europe. In view of the above, and considering the identity of the disputed domain name with the Complainant's well-known trademark and company name, the Panel finds that the Respondent was or ought to be aware of the Complainant's marks at the time of the registration of the disputed domain name.

The Panel shares the view of a number of UDRP panels' findings of "opportunistic bad faith" in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated, inter alia, in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868, "It is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith".

As to the use of the disputed domain name, the Panel notes that the Respondent redirected it to a mere parking page. As stated, amongst others, in Missoni S.p.A. v. William Song, WIPO Case No. D2012-0208 (where the domain name at issue resolved to a landing page), "the passive holding of a domain name which has no other legitimate use and clearly references the Complainant's trademark may constitute registration and use in bad faith". See also the leading case Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.

In accordance with prior UDRP decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the panel stated: "Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond".

In light of the above, the Panel concludes that the disputed domain name was registered and is being used 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 <barry-callebaut.company> be transferred to the Complainant.

Luca Barbero
Presiding Panelist

Thomas Hoeren
Panelist

Alexandre Nappey
Panelist
Date: January 2, 2015