WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barry Callebaut AG, Barry Callebaut Belgium NV v. Melissa Chow / Domains By Proxy LLC / DomainsByProxy.com
Case No. D2015-2105
1. The Parties
The Complainants are Barry Callebaut AG of Zurich, Switzerland and Barry Callebaut Belgium NV of Lebbeke‑Wieze, Belgium, receptively, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Melissa Chow of Chiwapa, Mississippi, United States of America / Domains By Proxy LLC, / DomainsByProxy.com of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <barry-callebuats.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 November 19, 2015. On November 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 25, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 26, 2015.
The Center verified that the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2015.
The Center appointed Eduardo Machado as the sole panelist in this matter on December 23, 2015. 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 Complainants (which hereafter are collectively referred to as "the Complainant") are part of the Barry Callebaut International Group of Companies, which has its headquarters in Switzerland.
The Complainant's group has more than 9300 employees operating in over 30 countries. It is one of the world's largest chocolate and cocoa producers.
The Complainant's group was established in 1996 and its BARRY CALLEBAUT mark is protected as a registered trademark in many countries dating back to 1998.
The Complainant's group has operated its main website at "www.barry-callebaut.com" since around 1997.
The Respondent registered the disputed domain name on November 15, 2015. According to the evidence submitted by the Complainant, as of November 18, 2015 the website at the disputed domain name revealed a 404 error message.
5. Parties' Contentions
The Complainant's trademark enjoys international reputation and it is recognized by the public as distinctive of the Complainant's business.
The disputed domain name is confusingly similar to its registered trademark BARRY CALLEBAUT: in particular, the disputed domain name <barry-callebuats.com> is identical to the Complainant's trademark, except for the misspelling callebuats, instead of callebaut (interchange of two letters and inclusion of letter "s").
The Respondent has no rights or legitimate interests in the disputed domain name: the Complainant has no relationship with the Respondent and has never authorized or licensed it to use the BARRY CALLEBAUT mark. Furthermore, there is no evidence that the Respondent has been commonly known by this trademark.
The Respondent has clearly used the disputed domain name and the Complainant's trademarks to impersonate the Complainant and to attempt to defraud the Complainant and its customers.
It is clear that the Respondent had the Complainant's trademarks in mind when registering and using the disputed domain name as it is explicable only as a deliberate misspelling of the Complainant's distinctive trademark and was used specifically to target the Complainant and its customers. The foregoing amounts to registration and use in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel 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.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <barry-callebuats.com> is identical to the Complainant's registered trademark BARRY CALLEBAUT, except for the inversion of the letters "a" and "u" and inclusion of letter "s".
It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".info", ".net", ".name") are generally considered irrelevant in assessing confusing similarity between a trademark and a domain name.
The Panel is also aware that this issue is addressed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which contains the following statement: "The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration)".
Therefore, as indicated above, the only difference between the Complainant's trademark and the disputed domain name is the inversion of two letters and inclusion of one.
It has become a common practice for respondents to register domain names with minor spelling variations, a phenomenon which is commonly known as "typosquatting".
The slight spelling variation does not prevent the disputed domain name from being confusingly similar to the Complainant's mark.
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by verifying whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant has made out its prima facie case, the burden of showing rights or legitimate interests in the disputed domain name shifts to the Respondent.
The Panel notes that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. However, by not submitting a response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
(i) before any notice to respondent of the dispute, respondent's 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is 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.
In this case, the Panel finds that the Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain name. In fact, it is clear that the Complainant and the Respondent have no relationship that would give rise to a license, or other rights by which the Respondent could legitimately own or use a domain name incorporating the Complainant's trademark. The Respondent is not commonly known by the disputed domain name and the Complainant has provided evidence of the Respondent's use of the disputed domain name as part of a fraudulent email scheme.
Accordingly, the Panel finds that the Respondent lacks rights or legitimate interests, and the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel notes that the Complainant's tTademark relate to a company name which has been well established since 1996 as one of the main chocolate producers in Europe. Thus, the Panel finds that the Respondent would have been aware of the Complainant well-known BARRY CALLEBAUT trademark at the time it registered the disputed domain name.
The Panels finds that the Respondent's has deliberately chosen a misspelling of the Complainant's mark as its domain name, commonly known as typosquatting. To perpetuate a fraud by using it as an email address, posing as an employee of the Complainant.
Many UDRP panels have held that typosquatting in and of itself establishes bad faith registration and use in the context of the Policy. See Sahibinden Bilgi Teknolojileri Pazarlama ve Ticaret Anonim Sirketi v. Tansel Buyukkarakas Bekir Kahraman, WIPO Case No. D2009-1541 (it has been accepted in several previous panel decisions that typosquatting itself is evidence of bad faith registration and use).
Furthermore, based on the Complaint and the attached evidence, the disputed domain name was used for an attempted fraud requesting payment to the Respondent from the Complainant. The Panel finds that this fact is consistent with evidence of bad faith use (see Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017).
In fact, the Panel finds that there are no facts set out in the available record which could conceivably justify the registration or use of the disputed domain name by the Respondent.
Accordingly, the Panel concludes that the Complainant has shown that the disputed domain name has been registered and is being used 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 disputed domain name, <barry-callebuats.com> be transferred to the Complainant.
Date: January 6, 2016