WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry Callebaut AG and Barry Callebaut Belgium NV v. Registration Private, Domains By Proxy, LLC / Kristen Sawyer

Case No. D2016-1095

1. The Parties

The Complainants are Barry Callebaut AG of Zurich, Switzerland and Barry Callebaut Belgium NV of Lebbeke-Wieze, Belgium, respectively, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) and Kristen Sawyer of New Orleans, Louisiana, United States.

The first-named Respondent, Domains By Proxy, LLC, is a privacy service, having no substantive role in these proceedings, and accordingly no finding will be made in respect of it and it will not be referred to further in this determination. The second-named Respondent only will be referred to as “the Respondent”.

2. The Domain Name and Registrar

The disputed domain name <barry-callobaut.com> (“Domain Name”) 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 June 1, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 2, 2016 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 June 6, 2016.

The Center verified that the Complaint together with 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 Respondents of the Complaint, and the proceedings commenced on June 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 28, 2016.

The Center appointed William P. Knight as the sole panelist in this matter on July 6, 2016. 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 are part of the Barry Callebaut international group of companies (“the Group”), one of the world’s leading manufacturers and suppliers of high-quality chocolate and cocoa products. It procures, processes, manufactures and supplies cocoa-based ingredients to food manufacturers and it also supplies cocoa-, nut-, and fruit-based ingredients and decorations to food service business.

The Group was established in 1996 and since has traded under the brand name BARRY CALLEBAUT. While the Group owns a number of other brands, BARRY CALLEBAUT is the house brand, used as the branding on many of the Group’s bulk cocoa products and it is also generally displayed in conjunction with each of the Group’s other brands.

The First Complainant was incorporated on December 13, 1994 and the Second Complainant on December 15, 1989.

The First Complainant, the Group’s holding company, owns an extensive portfolio of registered trademarks in many countries, including in the United States, containing BARRY CALLEBAUT. For instance, United States trademark no. 2,320,385, registered on February 22, 2000.

The Second Complainant is the main trading company for chocolate within the Group.

The Group has operated its main website “www.barry-callebaut.com” since approximately 1997. According to the evidence submitted with the Complaint, there have been approximately 2.3 million users and 15.1 million page views of the site over the period 2010-2014, with over one million users and six million page views between January 2013 and December 2014.

The Domain Name was registered on April 15, 2016 and does not appear ever to have been used for any purpose. As of May 19, 2016 and July 11, 2016, the Domain Name resulted in a “404 error” message.

5. Parties’ Contentions

A. Complainants

In accordance with paragraph 4(a) of the Policy, the Complainants assert:

(i) that the Domain Name is identical or confusingly similar to its BARRY CALLEBAUT trademarks;

(ii) that the Respondent have no rights or legitimate interests in respect of the Domain Name;

(iii) that the Domain Name has been registered and used in bad faith.

The Domain Name differs from the Complainants’ BARRY CALLEBAUT trademarks only by the substitution of the letter “E” for the letter “O” and the hyphenation of the two constituent terms. According to the Complainants, this has the obvious potential to cause confusion with the Complainants’ trademarks.

The Complainants assert that have no association with the Respondent. As the Complainants note, there is no evidence before the Panel that the Respondent have used the Domain Name, nor is there evidence that the Respondent are commonly known by the name comprised in the Domain Name.

The Complainants assert that the BARRY CALLEBAUT trademarks are well known and highly distinctive.

B. Respondent

The Respondent did not reply to the Complaint.

6. Discussion and Findings

The onus is on the Complainants to prove each of the three elements set out in paragraph 4(a) of the Policy. The Respondent has had the opportunity to respond to the Complaint, and has failed to do so. The Respondent should not be in a better position by failing to respond than if she had chosen to take advantage of the opportunity afforded to her, expressly, by paragraph 4(c) of the Policy.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The onus upon the Complainants will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainants is not contradicted by the Respondent in the absence of any response from the Respondent; see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011, among numerous other previous UDRP decisions.

The Panel may also conduct limited factual research with matters of public record that are readily available to it, even when the Complainants have not made the minimal effort required to bring such matters expressly to the attention of the Panel; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.

A. Identical or Confusingly Similar

The First Complainant has trademark registrations for the words BARRY CALLEBAUT in many countries. This is sufficient to establish the rights of the First Complainant under the Policy.

The Panel notes that the determination of identity or confusing similarity is a factual one which must be satisfied by making a side-by-side comparison of the Complainants’ well-known trademark BARRY CALLEBAUT and the Domain Name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the trademark, as well as issue relevant to language; see Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl, WIPO Case No. D2001-0079.

Placed side-by-side, the similarity of the BARRY CALLEBAUT trademark and the Domain Name is self-evident. The BARRY CALLEBAUT trademark is highly distinctive, both inherently and on the evidence of the Complainants’ use-based reputation in the trademark before the Panel.

Online enquiries indicate that CALLEBAUT is not a common surname. The substitution of the central vowel is likely to be regarded as a misspelling of the trademark BARRY CALLEBAUT. The hyphenation does nothing to distinguish the Domain Name.

The Panel therefore finds that the Complainants have sufficient trademark rights and that the Domain Name is confusingly similar, if not nearly identical, to the BARRY CALLEBAUT trademark.

B. Rights or Legitimate Interests

The Complainants allege that they have not authorized the Respondent to use their trademark in any way or that Respondent is not commonly known by the Domain Name and that the Respondent is not using the Domain Name.

There appears to be no legitimate explanation for the similarity between the Domain Name and the Complainants’ BARRY CALLEBAUT trademark. The Domain Name appears to be an unusual personal name but, while “Barry” is a common given name, the Panel’s online enquiries indicate that “Callobaut” is not a common surname anywhere, and certainly not in the United States, where the Respondent apparently resides.

The Panel does not accept that BARRY CALLEBAUT is a well-known trademark, but it is a registered trademark in the Respondent’s country, the United States. Whilst the Respondent may have rights or legitimate interests in the Domain Name if used as indicated in paragraph 4(c) of the Policy without violation of the First Complainant’s rights in its trademark in the United States, if used in respect of goods or services unrelated to those of the Group, the improbability of choosing such a name and the absence of any explanation from the Respondent permit the Panel to conclude that that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registration and Use in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may indicate registration and use in bad faith. None of the specific examples given in paragraph 4(b) of the Policy may be found here, but previous decisions under the Policy have given some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; TELSTRA CORPORATION LIMITED V. BARRY CHENG KWOK CHU, WIPO Case No. D2000-0423; Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428; Time Inc v. Chip Cooper, WIPO Case No. D2000-1342.

What these authorities establish is that a combination of circumstances and behaviors on the part of a respondent who has made no use of a disputed domain name may give rise to a finding of registration and use of that domain name in bad faith. In the Telstra Corporation Limited v. Nuclear Marshmallows, supra decision referred to above, and cited by the Complainants, the panel found the required bad faith in:

“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name;

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”

In Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981, a majority of the panel observed:

“Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Those circumstances involve the Respondent registering the Domain Name with intent to damage the Complainant in some way or to take unfair advantage of the Complainant or the Complainant’s goodwill. We believe that in this situation Respondent deliberately registered the Domain Name knowing, or at least strongly suspecting, that the Domain Name was a trademark of another, which is not good faith under the UDRP. Whether Respondent actually offered to sell the Domain Name, or was just waiting for an offer to buy it back, is not relevant under the unique facts of this case.

The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.”

There may be no reason to believe that an ordinary person living in the United States, such as the Respondent, and not being involved in the use of cocoa products in manufacturing, would be aware of the Complainants. However, given the unusual nature of the Complainants’ names, it is impossible to believe that the choice of the Domain Name by the Respondent was a mere coincidence. Considering these criteria, the Panel is satisfied that the Complainants’ trademark BARRY CALLEBAUT must have been known by the Respondent at the time of acquiring the Domain Name.

Furthermore, it is clear from the Case File that the Respondent received the email notifications of the Complaint and the Respondent’s default. The Respondent’s stated address appears to be a real one and that the notification of the Complaint sent to the Respondent’s address by courier was accepted by someone at that address. Yet the Respondent chose not to make any form of reply.

Since the identity and addresses of the Respondent were obscured by a privacy service, the Complainants cannot be criticized for not having contacted the Respondent before the commencement of these proceedings and, in any event, it is most likely that such an approach would have been ignored by the Respondent in the same way that she ignored the emails and couriered correspondence and notifications from the Center.

In these circumstances, therefore, it would appear likely that the Respondent, having chosen the Domain Name because of her knowledge of the Complainants, is now engaging in “typosquatting”; see Pocket Kings Limited v. Al Cabug, WIPO Case No. D2010-1821; ANOVO v. Moniker Privacy Services / Alexander Lerman, WIPO Case No. D2008-1049; Zedge Ltd v. Moniker Privacy Services / Aaron Wilson, WIPO Case No. D2006-1585; Autosales Incorporated dba Summit Racing v. Moniker Privacy Services [2731514] / Registrant [2909991] Charles Kalopungi, WIPO Case No. D2010-1081.

The Domain Name resolves to an inactive page and does not appear ever to have been used for any purpose. The Panel accepts that the Respondent is in passive holding of the Domain Name, which falls within Telstra Corporation Limited v. Nuclear Marshmallows, supra.

The Panel is prepared to conclude, on the balance of probabilities, that the Domain Name was registered and is being used by the Respondent in bad faith.

7. Decision

The Complainants fail to specify to which of them they request the Domain Name to be transferred. However, since the First Complainant is the owner of the Group’s portfolio of registered trademarks, and 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, <barry-callobaut.com>, be transferred to the First Complainant.

William P. Knight
Sole Panelist
Date: July 14, 2016