WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry Callebaut AG and Barry Callebaut Belgium NV v. Privacy Service Provided by Withheld for Privacy ehf / John Hill

Case No. D2021-4217

1. The Parties

The Complainants are Barry Callebaut AG, Switzerland and Barry Callebaut Belgium NV, Belgium, both represented by Adlex Solicitors, United Kingdom.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / John Hill, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <barry-calleibaut.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2021, 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 Complainant on December 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 22, 2021.

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 Respondent of the Complaint, and the proceedings commenced on December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2022.

The Center appointed Torsten Bettinger as the sole panelist in this matter on February 15, 2022. 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 12.000 employees operating in over 40 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 October 11, 2021.

The disputed domain name has not been used for an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that the disputed domain name is confusingly similar to its registered trademark BARRY CALLEBAUT as the disputed domain name is identical to the Complainant's trademark, except for the misspelling calleibauts, instead of callebaut (addition of the of the letters “i” and "s").

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:

- the Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trademarks;

- there is no evidence that the Respondent has ever used the domain name in a commercial or a non-commercial manner;

- there is no evidence that the Respondent has been commonly known by the name.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:

- previous Panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding and that in this case the passive holding of the domain equals bad faith use of the disputed domain name;

- the Complainant’s trademark is well-known and highly distinctive;

- the disputed domain name is explicable only as a deliberate misspelling of the Complainant’s trademark and that it is therefore inconceivable that the Respondent registered the disputed domain name independently of that that trade mark;

- the Respondent has concealed its identity through use of a proxy service;

- it is impossible to conceive of a good faith use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

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

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns multiple trademark registrations for the mark BARRY CALLEBAUT prior to the registration of the disputed domain name on October 11, 2021.

It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name differs from the Complainant’s trademark “BARRY CALLEBAUT” merely by the addition of the letter ”i” and a final letter “s”, which appears to be a common misspelling of the Complainant’s trademark and which does not significantly affect the appearance or pronunciation of the disputed domain name.

Further, it is well accepted under the UDRP case law that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net”, “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable Top-Level Domain may itself form part of the relevant trademark (WIPO Overview 3.0, section 1.11).

The Panel therefore concludes that the disputed domain name is identical to the Complainant’s BARRY CALLEBAUT trademark in which the Complainant has exclusive rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are 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.”

The Complainant stated that the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized by the Complainant to register the disputed domain name.

These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.

From the record in this case, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

On this basis and in light of the fact that the disputed domain name is a deliberate misspelling of the Complainant’s trademark the Panel concludes that the Respondent lacks rights and legitimate interests in the disputed domain name and that, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

ii. the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

iii. the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant holds multiple trademark registrations for the BARRY CALLEBAUT trademark in various countries that predate the registration of the disputed domain name.

Given that the Complainant’s BARRY CALLEBAUT mark is widely known in many countries and that the disputed domain name is a common misspelling of the Complainant’s trademark, it is inconceivable that the Respondent coincidentally registered the disputed domain name without any knowledge of the Complainant’s rights in the BARRY CALLEBAUT mark.

The fact that there is no evidence that the disputed domain name has not yet been actively used does not prevent a finding of bad faith use.

Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a website, in certain circumstances, can constitute bad faith use under the Policy. (See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3.)

While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:

(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;

(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and

(iv) the implausibility of any good faith use to which the domain name may be put. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra; see also WIPO Overview 3.0, section 3.3.)

The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.

Based on the record in this proceeding, the Panel is satisfied that the Complainant’s BARRY CALLEBAUT mark is distinctive and widely-known, including in the United Kingdom, where the Respondent is located.

Given that the Complainant’s BARRY CALLEBAUT mark is solely connected with the Complainant and does not have any generic or descriptive meaning, the disputed domain name is also not susceptible to be used in a good faith generic or descriptive sense.

Furthermore, the Respondent has not replied to the Complaint nor provided any evidence of actual or contemplated good faith use of the disputed domain name.

Finally, the details of the underlying registrant have been protected from the public WhoIs record by a privacy service.

The Panel therefore finds that the circumstances, as described above, show that the Respondent’s registration and passive holding of the disputed domain name equals a bad faith registration and use of the disputed domain name and therefore the Complainant also established the third element of the Policy.

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-calleibaut.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: February 26, 2022