WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normalu SA v. Amin Abdolmohammadi
Case No. DIR2013-0002
1. The Parties
Complainant is Normalu SA of Kembs, France, represented by Fidal, France.
Respondent is Amin Abdolmohammadi of Teheran, Islamic Republic of Iran (“Iran”).
2. The Domain Name and Registrar
The disputed domain name is <barisol.ir> which is registered with IRNIC.
3. Procedural History
The Complaint was filed by email with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2013. On May 13, 2013, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On May 15, 2013, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. A hard copy of the Complaint was received by the Center on May 30, 2013.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2013. On June 6, 2013, Respondent sent an email communication to the Center. On the same date, the Center requested Respondent to confirm whether the above-referenced communication might be regarded as a complete Response, but Respondent made no further filings with the Center.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 1, 2013. This Panel finds that it was properly constituted. This 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
Complainant is a French company engaged in the manufacturing of stretch ceilings which are marketed under the BARRISOL trademark.
Complainant has rights over the BARRISOL trademark for which it holds the following trademark registrations: No. 1404078 with the National Industrial Property Institute of France, registered on April 17, 1987, classes 19 and 27, and No. 1105689 with WIPO, registered on May 19, 2011, classes 6, 11, 17, 19, 24, 27, 37, 41 and 42 (and designated under the Madrid Protocol, inter alia, Iran).
Complainant also owns a number of domain names, such as: <barrisol.com> created on June 26, 1997, <barrisol.co.uk> created on February 26, 1999, <barrisol.fr> created on August 9, 2007 and <barrisol.asia> created on January 7, 2009.
The disputed domain name was registered by Respondent on December 20, 2012.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant started marketing aluminium track products in 1967; a couple of years later started manufacturing stretch ceilings and in 1975 obtained its first patent for stretch ceilings. Barrisol is the world-leading brand in terms of sales and innovation on the stretch ceiling market since its creation in 1975.
Complainant has five production sites in France and three in other countries. In 2009 its turnover reached more than EUR 21 million, 50% of which came from exports. To date, Complainant’s Barrisol network has more than 1,200 approved installers in over 110 countries.
Complainant has been operating a website at “www.barrisol.com” for over 10 years, displaying historical information about the company, a description of its range of products, a map of installers, a pictures gallery with its most remarkable creations, etc. A Persian version of Complainant’s website has been put online recently. Further, Complainant has registered a number of domain names which incorporate the BARRISOL trademark.
Complainant’s trademark is well-known worldwide and its goods and services are sold throughout the world, including in the Middle East where they are available through a network of more than 10 authorized distributors, one established in Iran where Respondent is located. Numerous international awards recognize Complainant’s innovative capacities and the quality of the Barrisol products, more than 30 professional prizes and awards throughout the world rewarded Complainant for its Barrisol products. Famous architects use the Barrisol technique for exceptional projects, and numerous museums, art galleries, commercial or sport or music centers, exhibition halls designed and built throughout the world bear the original signature of Barrisol.
According to Complainant’s investigations, Respondent seems to be a computer programmer or a web-designer based in Iran. His name is displayed at the bottom of several websites, preceded by the mention “design by” or “design and distributed by”. The same mention can be found on the website associated to the disputed domain name. A link under the name of Respondent on those websites redirects Internet users to the website at “www.sepandonline.ir”, which seems to be the website of a company that develops specialized software for the textile industry. The website at “www.sepandonline.ir” contains a link redirecting Internet users to the disputed domain name. The WhoIs information of <sepandonline.ir> and of the disputed domain names is the same. Moreover, the disputed domain name redirects Internet users to a website, in Persian language, promoting stretch ceilings, i.e. the same business activity as Complainant’s.
The disputed domain name is confusingly similar to Complainant’s BARRISOL trademark. It appears that it is a clear typosquatting case and the only difference from Complainant’s trademark consists of the letter “r” which is not doubled in the disputed domain name. The country-code Top-Level Domain (ccTLD) “.ir” has no distinguishing effect and has to be removed from the analysis (Complainant relies on Normalu v. Ideh Sazane Pars Co., WIPO Case DIR2012-0001, relating to the domain name <barrisol.ir>).
Respondent has no right or any legitimate interests in respect of the disputed domain name.
To Complainant’s best knowledge, Respondent is not currently and has never been known as “barisol” or “barrisol”.
A trademark search with WIPO over “barisol” did not identify any trademark registration or pending application in the name of Respondent. Investigations made in the Internet about Respondent did not identify any other intellectual property rights owned by Respondent with respect to “barisol” including business name, sign, or emblem.
Complainant has never given any authorization or permission to Respondent to register or to use the disputed domain name. Respondent is not, in any way, related to Complainant’s business, is not one of its agents and does not carry out any activity for or has any business with Complainant.
The use of a mere imitation of the BARRISOL trademark constitutes evidence that Respondent uses this trademark in the disputed domain name for the only purpose of attracting Internet users to its website and benefiting from the well-known character of this trademark. The website to which the disputed domain name redirects promotes a stretch ceiling activity. Respondent uses the disputed domain name in order to promote a business activity and is, thus, making a commercial use of the disputed domain name. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is knowingly creating a likelihood of confusion between its website and Complainant’s in order to misleadingly divert Internet users for commercial gain.
Respondent has engaged in bad faith registration and use of the disputed domain name.
Respondent could not have ignored the worldwide notoriety of the BARRISOL trademark in the field of professional stretch ceilings, nor the trademark rights belonging to Complainant since 1987, at the time it registered the disputed domain name.
The products promoted on the website to which the disputed domain name redirects, are the same products for which Complainant’s trademark BARRISOL has been registered, including in Iran.
The mere imitation of the trademark BARRISOL in the disputed domain name cannot be placed on the account of fortuity. Indeed, Respondent plainly registered the disputed domain name to benefit from the well-known character of Complainant’s BARRISOL trademark. Respondent registered the disputed domain name for the purpose of increasing its own website’s audience by diverting Internet users seeking information about Complainant, in order to promote competitors’ products. Respondent is therefore misappropriating the reputation of Complainant’s famous trademark for commercial gain.
The disputed domain name constitutes a clear typosquatting of Complainant’s trademark BARRISOL. Benefiting from the typographical mistakes made by Internet users writing a website’s address into their browser, constitutes evidence of bad faith registration.
The mere absence of a right or legitimate interest in respect of the disputed domain name shows that the disputed domain name has not been registered in good faith. That combination of facts shows bad faith in the registration of the disputed domain name.
Respondent’s use of the disputed domain name constitutes bad faith use. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark BARRISOL as to the source, sponsorship, affiliation or endorsement of its website and business. The disputed domain name is used to promote the same products as those which constitute Complainant’s main business activity. Furthermore, there is an authorized distributor of Barrisol products in Iran and a Persian version of Complainant’s official website is available at “fa.barrisol.com”. Therefore, it is obvious that Respondent uses the disputed domain name to divert Complainant’s Persian customers.
Respondent’s use of the disputed domain name, which is confusingly similar to Complainant’s well-known trademark, in order to promote Complainant’s competitors products, does not constitute a fair use as it is only based on the confusion likely to be made by Internet users. Such a use has been made by Respondent to disrupt Complainant’s and its distributors’ activities, especially in Iran, where Respondent is also located.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not formally reply to Complainant’s contentions. Respondent’s informal email communication to the Center of June 6, 2013, only states: “thank you for your email[.] All information is incorrect[.] This is not a commercial site. It is up for sale and it is perfectly legal”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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”. Since the Policy is very similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), this Panel considers appropriate to also refer to some of the principles applied and decisions rendered under UDRP proceedings.1
The Panel considers that the informal email communication from Respondent referred to above cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). Even though after receiving said email communication the Center reminded Respondent of the due date to file a response, Respondent chose not to make any further submission. Thus this Panel has decided not to take into account such email communication from Respondent.2
The lack of a formal response from Respondent does not automatically result in a favorable decision for Complainant.3 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the BARRISOL trademark.
Since the addition of ccTLD suffix “.ir” after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark (see Compagnie Générale des Etablissements Michelin v. Saeed Karimi, WIPO Case No. DIR2011-0001; Kaspersky Lab Zao v. BaniSaz Co., WIPO Case No. DIR2010-0004; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The disputed domain name almost identically incorporates such trademark. The only difference between the BARRISOL trademark and the disputed domain name is the omission of a letter “r” in the disputed domain name. Such variation is not enough to either avoid confusing similarity or prevent the likelihood of confusion. Prior UDRP panel decisions support this Panel’s view (Pfizer Inc., A Delaware Corporation v. Phizer’s Antiques and Robert Phizer, WIPO Case No. D2002-0410; Sanofi-aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s BARRISOL trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant’s allegations that the website associated with the disputed domain name redirects to another website where competing products are promoted were not clearly substantiated (Complainant supplied a screenshot of the website associated with the disputed domain name, but did not provide any screenshot or other evidence of the other website). However, Respondent did not challenge such facts and allegations asserted by Complainant, which on their face are not unreasonable.
Complainant asserts that it has never authorized Respondent to register the disputed domain name which is a mere imitation of its BARRISOL trademark, that Respondent is not associated and has no business with Complainant, that the disputed domain name does not correspond to the name of Respondent and that Respondent is not commonly known by the disputed domain name.
In the overall circumstances Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.4 From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in the disputed domain name which is almost identical to Complainant’s trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.5
Respondent’s lack of formal response may be deemed as indicative of a lack of interest in the disputed domain name and/or lack of arguments and evidence to defend its holding of the disputed domain name.6
Where a domain name incorporates another’s well-known trademark with just a minor typographical variation (practice commonly known as typosquatting), that circumstance generally leads to infer that Respondent must have been aware of the existence of Complainant’s trademark at the time it obtained the registration of the disputed domain name, which has been enough for a finding of bad faith registration under several UDRP proceedings.7
Taking into consideration Complainant’s international presence (including through an authorized distributor in Iran, the country where Respondent is domiciled pursuant to the information provided by IRNIC), the broad recognition of Complainant’s Barrisol products, the fact that the disputed domain name was registered in December 2012 (that is, more than 25 years after Complainant’s registration of the BARRISOL trademark in 1987 and approximately 15 years after Complainant created the domain name <barrisol.com> in 1997) and Respondent’s lack of proper appearance at this proceeding, all coupled with such typographical error variation in the disputed domain name, and without finding in the present record any element that might lead this Panel to reach a different conclusion, this Panel is of the view that most likely Respondent deliberately targeted Complainant’s trademark at the time of registering the disputed domain name, which constitutes bad faith registration.
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <barisol.ir> be transferred to Complainant.
Date: July 12, 2013
2 Similar situations in LEGO Juris A/S v. Charlie Carmichael, WIPO Case No. D2010-1507 and in OLX Inc. and OLX S.A. v. Anis Ahmad, WIPO Case No. D2012-2416, where this Panel also declined to take into account as official response similar email communications.
3 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 See INTOCAST AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given […] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”. See also Facebook, Inc. v. Majid Karimian Ghannad, WIPO Case No. DIR2009-0001 and EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Hasan Fefelian, WIPO Case No. DIR2010-0002.
5 Unlike the UDRP, under the Policy it is enough to establish bad faith registration or use, not both.
7 See Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517: “It is well settled under the Policy that the practice of typosquatting, in and of itself, constitutes bad faith registration”. See also Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568: “Typosquatting is virtually per se registration and use in bad faith”.