WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry Callebaut AG and Barry Callebaut Belgium NV v. Ali Davoodi

Case No. DIR2021-0012

1. The Parties

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

The Respondent is Ali Davoodi, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <barry-callebaut.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2021. On June 2, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On June 6, 2021, IRNIC 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 .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 the Respondent of the Complaint, and the proceedings commenced on June 11, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2021. On July 6, 2021, the Center notified the Respondent’s default.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 14, 2021. 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”), a leading manufacturer of high-quality chocolate and cocoa products, headquartered in Switzerland and a result of the merger of the French firm Cacao Barry and the Belgian firm Callebaut in 1996.

Since 1996 the Group has traded under the BARRY CALLEBAUT tradename and mark. The Complainants’ main website is available at <barry-callebaut.com> since approximately 1997.

The Complainant, Barry Callebaut AG, is the Group’s holding company and the owner, amongst others, of the International Trademark Registration No. 702211 for the word mark BARRY CALLEBAUT, registered on September 4, 1998, successively renewed, in classes 29 and 30 (Exhibit 6 to the Complaint).

The disputed domain name <barry-callebaut.ir> was registered on February 20, 2021, and presently is used in connection with a website providing information in Persian on the import of cocoa powder.

5. Parties’ Contentions

A. Complainants

The Complainants assert to be part of the Group that procures, processes, manufactures, and supplies cocoa-based ingredients and nut-based ingredients for decorations, counting with more than 12,000 employees operating in over 40 countries at over 60 production facilities and 23 chocolate academy centers worldwide including in China, Canada, Brazil, India, Japan, Côte d'Ivoire, Germany, and the Russian Federation, generating annual sales of approximately USD 7.1 billion in the year 2019/2020. The Complainants further affirm that their products are present in one out of four chocolate and cocoa products consumed around the world.

Under the Complainants’ view, the Respondent is using the disputed domain name in connection with a website providing information in Persian relating to chocolate and the importation of cocoa powder with an enquiry form in English, in what appears to be a clear attempt to impersonate the Complainants (Exhibits 12 and 13 to the Complaint).

Prior to submitting the Complaint, the Complainants’ solicitors sent a letter to the Registrar on February 24, 2021, asking to have the disputed domain name suspended. Thereafter, the registrant details on the WhoIs changed to those of the Respondent on April 29, 2021, in what appears to be a further bad faith registration and example of cyberflight. However, the disputed domain name website remains unchanged, which the Complainants argue demonstrates the disputed domain name is still controlled by the same person or entity (Exhibits 14-16 to the Complaint).

The disputed domain name is, according to the Complainants, identical to the Complainants’ BARRY CALLEBAUT trademark, disregarding the “.ir” country code Top-Level Domain (“ccTLD”), with only the addition of a hyphen between the words “BARRY” and “CALLEBAUT”.

As to the absence of rights or legitimate interests in the disputed domain name, the Complainants argue that:

(a) there is no association between the Complainants and the Respondent and the Complainants have never authorized or licensed the Respondent to use their trademark;

(b) the Respondent has been using the disputed domain name to impersonate the Complainants, most likely to attempt to somehow defraud the Complainants and/or their customers or suppliers or to otherwise illicitly create a likelihood of confusion with the Complainants; and

(c) the use made of the disputed domain name cannot characterize a bona fide offering of goods or services and cannot generate rights or legitimate interests.

According to the Complainants, it is clear that the Respondent had the Complainants’ trademark in mind when registering the disputed domain name, given that most likely the Respondent’s purpose was to use the disputed domain name to defraud the Complainants or their customers or suppliers, e.g., by means of phishing emails or the like. In particular, state the Complainants, the Respondent was plainly out to give the impression that its website was operated by or connected with the Complainants, or perhaps their official website for Iran.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the BARRY CALLEBAUT trademark.

The disputed domain name includes the Complainant’s trademark in its entirety and it remains clearly recognizable within the disputed domain name. The addition of a hyphen between the words “barry” and “callebaut” does not prevent a finding of confusing similarity. In this case, the “.ir” ccTLD is not to be taken into account as already established in case law under the Policy.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:

(i) before any notice of the dispute, the 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or

(iii) the 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 that sense, the Complainants state there is no association between them and the Respondent and that the Complainants have never authorized or licensed the Respondent to use their trademark.

Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of rights or legitimate interests.

The Respondent’s use of the disputed domain name in connection with a website providing information in Persian relating to chocolate and the importation of cocoa powder, the Complainants well-known field of activity, cannot characterize a bona fide or legitimate use of the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered or Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage which provides information in Persian relating to chocolate and the importation of cocoa powder, not only clearly indicating knowledge of the Complainant’s well-established trademark, but also an attempt of misleadingly diverting consumers for the Respondent’s own commercial gain.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.

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-callebaut.ir> be transferred to the Complainant, Barry Callebaut AG.

Wilson Pinheiro Jabur
Sole Panelist
Date: July 20, 2021