WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Normalu SA v. Demi-lune SRL
Case No. DMD2011-0002
1. The Parties
The Complainant is Normalu SA of Kembs, France, represented by Meyer & Partenaires, France.
The Respondent is Demi-lune SRL of Chisinau, Republic of Moldova (“Moldova”).
2. The Domain Name and Registrar
The disputed domain name <barrisol.md> is registered with MoldData, SE (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 10, 2011, the Center transmitted by email to MoldData, SE a request for registrar verification in connection with the Domain Name. On November 14, 2011, MoldData, SE 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 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on December 14, 2011. 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
Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:
The Complainant is a French company that manufactures and sells stretch ceilings. The Complainant owns the following trademark registrations, among others, in the mark BARRISOL: a French registration No. 3222786 dated April 28, 2003 for a combined BARRISOL mark (“French BARRISOL mark”) and an international registration No. 518317 dated October 13, 1987 under the Madrid System for the international registration of the marks administered by the International Bureau of WIPO for the word BARRISOL (“International BARRISOL mark”). The Complainant extended its international registration to Moldova under the Madrid system.
The Respondent is Demi-lune SRL, a company located in Moldova. The Domain Name <barrisol.md> was registered on October 5, 2005. On September 8, 2006 the Respondent applied for registration of the BARRISOL mark with the State Agency on Intellectual Property of the Republic of Moldova, and subsequently obtained a trademark registration in the combined mark BARRISOL. The Respondent’s mark is identical to the Complainant’s combined French trademark No. 3222786 registered on April 28, 2003 and published on June 6, 2003.
The Domain Name resolves to a website belonging to the Respondent. The website content appears to be available in three languages: English, Russian and Romanian. The website offers for sale different kinds of stretch ceilings manufactured by the Respondent.
5. Parties’ Contentions
The Complainant claims that BARRISOL is a world-leading brand in sales and innovation of the stretch ceilings market since the brand’s creation in 1975 in France. It alleges that in the early 1990’s it increased its exports to various countries, including Eastern European countries. The Complainant states that currently it has production sites in France and in three other countries. According to the Complainant, it is the world leader in the stretch ceiling area. The Complainant claims that it owns numerous domain names.
The Complainant claims that it holds approximately 100 trademarks around the world, including the following trademark registrations: French registration No. 934047 dated September 30, 1975 and an international registration No. 518317 dated October 13, 1987. According to the Complainant, its international registration rights were extended to Moldova. As a result, the Complainant alleges ownership of the BARRISOL mark in Moldova since 1987. According to the Complainant, it has a business relationship with an authorized distributor and a sizable business in Moldova.
The Complainant alleges that the Domain Name is identical and confusingly similar to its BARRISOL mark, because the Domain Name incorporates the BARRISOL mark in its entirety. The Complainant alleges that the country code top-level domain should be excluded from consideration, because it does not prevent a finding of confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interest in the Domain Name. The Complainant alleges that the Respondent’s trademark registration of the BARRISOL mark in Moldova is fraudulent because the Complainant has owned the registered BARRISOL mark in Moldova since 1987. The Complainant claims that it has plans to commence a legal proceeding against the Respondent in connection with the fraudulent trademark registration. The Complainant states that it already has an authorized distributor in Moldova which is not the Respondent.
The Complainant asserts that the Domain Name was registered and is being used in bad faith. The Complainant claims that its trademark BARRISOL is well-known among businesses engaged in the same type of business as the Complainant’s, especially in Eastern Europe. In the Complainant’s view, the Respondent was aware of the Complainant’s well-known registration and trademark in the field of stretch ceilings, because the Complainant’s trademark has been registered and used in Moldova since 1987, and the Respondent is in the same business as the Complainant. In the Complainant’s view, the mere absence of rights or legitimate interests in respect of the Domain Name should be indicative of bad faith registration.
The Complainant alleges that Internet users may believe that the website at the Domain Name <barrisol.md> is the Complainant’s official website in Moldova, and would expect to find content related to the Complainant. The Complainant alleges that the Respondent website’s look is completely different from the Complainant’s, and that it displays the Respondent’s stretch ceiling creations. In the Complainant’s view, the Respondent has been using its website to intentionally misdirect and attract for commercial gain users searching for the Complainant’s authorized goods thus creating likelihood of confusion. In the Complainant’s view, the Respondent is misleadingly diverting consumers for its own commercial gain. The Complainant alleges that the Respondent is the owner of a domain name <extenzo.md>, which directs to a website that is identical to the one displayed under <barrisol.md>. According to the Complainant, Extenzo is a French competitor of the Complainant. Therefore, in the Complainant’s view, the Domain Name has been used in bad faith to disrupt its business.
The Complainant requests that the Domain Name be transferred to the Complainant.
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.” In case of a respondent’s default, “A respondent’s default does not automatically result in a decision in favor of the complainant.”1 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”2 Thus, to succeed on its claim, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no “rights or legitimate interests in respect of the Domain Name”; and (iii) the Domain Name “has been registered and is being used in bad faith.”3
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”4
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided copies of an international trademark registration in the term BARRISOL showing that the Complainant has rights in the BARRISOL mark since September 30, 1975 (Registration Nos. 934047, 518317 and 3222786). The Panel, therefore, finds that the Complainant has established its rights in the BARRISOL mark.
The test for confusing similarity should be a comparison between the mark and the disputed domain name, which typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the disputed domain name.5 The Panel finds the BARRISOL mark and the Domain Name to be identical or confusingly similar because the Domain Name incorporates the Complainant’s trademark in its entirety.6 The addition of the top-level domain suffix such as “.com” or its equivalent may be disregarded under the confusing similarity test, as it is a technical requirement of registration.7 Therefore, the country-code top–level domain suffix “.md” may be disregarded from consideration.
Therefore, the Panel finds that the Complainant has proven that the Domain Name is identical or confusingly similar to the Complainant’s BARRISOL mark, and the first element of paragraph 4(a) of the UDRP has been satisfied.
B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the UDRP, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.8
To satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.9 If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
It is a consensus view of WIPO UDRP panelists that “respondent’s registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent’s rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. […] panels have generally declined to find respondent rights […] in a domain name on the basis of corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP.”10 The Panel finds that several prior UDRP decisions provide helpful guidance in this situation. For example, the WIPO panel’s reasoning in Beca11, provides helpful guidance in this situation:
“(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s disputed domain name registration. A trademark application made subsequent to notice of a dispute or the disputed domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the disputed domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate.””
Other panels found that the following circumstances may be indicative of “legitimacy of the trademark registration: (i) whether the trademark registration system in the jurisdiction where the registration is obtained has a full examination application process or is it just a lodgment system;12 and (ii) whether the Respondent used the trademark in commerce in the country of the registration.13
The following facts of this case suggest that the Respondent may have obtained its trademark registration to bolster its Domain Name registration and has been trading on the Complainant’s goodwill. The evidence shows that the Respondent filed for registration of the mark BARRISOL almost a year after it registered the Domain Name and several years after the Complainant obtained its International BARRISOL mark registration in Moldova. In addition, the Respondent’s registered BARRISOL trademark is a carbon copy of the Complainant’s French BARRISOL mark that was registered three years prior to the Respondent’s application. Both the Respondent’s mark and the French Barrisol mark consist of identical word and graphical elements. Both parties manufacture and sell stretch ceilings. In addition, the Complainant’s BARRISOL trademark registration in Moldova predates the Respondent’s registration in Moldova.
The Panel considers the factor of connection between the Respondent and the jurisdiction in which it owns the trademark registrations to be neutral. The Respondent is located and conducts its business in Moldova. It is, however, unclear, whether the Respondent is using the BARRISOL mark in commerce. The Respondent’s website at <barrisol.md> contains absolutely no reference to the BARRISOL mark or products. Likewise, the Complainant offered no evidence concerning its use of the BARRISOL mark in Moldova despite its allegations to the contrary.
The factor of the trademark application examination process weighs in favor of the Respondent. Unlike the trademark registration process in Tunisia14, the trademark application process in Moldova is a rigorous process with an ample opportunity to object to trademark registrations. It includes a formal examination, an examination of distinctiveness and a search for prior trademarks. The opposition period is three months from publication of the trademark application.15
The Panel finds that the Respondent’s failure to respond to the Complainant’s allegations is telling. It seems to be reasonable to expect that a company that has used a certain trademark in commerce for at least three years, owns trademark rights in that brand and operates a website under the Domain Name consisting of its trademark, would have at least tried to preserve it. This is especially so, when such company appears to have a sizable customer base consisting of Romanian, English and Russian- speaking people. Instead, the Respondent, which was properly notified of the Complaint, did not make any attempt to protect its presumably valuable property and offered no rebuttal to the Complainant’s allegations.
Under the circumstances of this case, the Panel finds on balance that the Respondent does not have rights or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the UDRP.
The Complainant, therefore, has established the second element of paragraph 4(a) of the UDRP.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”16 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the UDRP. More specifically, the Panel finds that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.”
Because the Respondent’s combined BARRISOL mark is a carbon copy of the earlier registered Complainant’s combined mark, it is likely that the Respondent knew about the Complainant’s mark and registered the <barrisol.md> Domain Name in bad faith. The Domain Name was registered two years after the Complainant registered its combined BARRISOL mark. Therefore, the Panel finds that the Respondent registered the Domain Name in bad faith.
A printout of the Respondent’s website shows that the Respondent does not use the BARRISOL mark on the website at all. It claims that the Respondent “in 2005, together with partners in France, opened a modern production of suspended ceilings from imported French material.” It is, therefore, likely that an Internet user looking for the BARRISOL ceilings would perceive the word “barrisol” combined with the ccTLD suffix “.md” and the reference to French partners, as an indication that the website used in connection with the Domain Name is affiliated with, or endorsed by, the Complainant. Therefore, the Panel finds bad faith use of the Domain Name in this case.
Accordingly, the Panel concludes that the Domain Name was registered and is being used in bad faith, and that the Complainant has therefore established the third element of paragraph 4(a) of the UDRP.
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 <barrisol.md> be transferred to the Complainant.
Dated: December 21, 2011
3 Paragraph 4(a) of the UDRP.
8 Paragraph 4(a)(ii) of the Policy.
13 See Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No.D2008-1379.