WIPO Arbitration And Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry Callebaut AG, Barry Callebaut Belgium NV v. VistaPrint Technologies Ltd

Case No. D2015-0819

1. The Parties

The Complainant is Barry Callebaut AG of Zurich, Switzerland and Barry Callebaut Belgium NV of Lebbeke-Wieze, Belgium, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <barry-calebaut.com>, <barry-callebauit.com>, <barrycallebaut.name>, <barry-callebeut.com>, <barry-calleebaut.com> and <barry-calllebaut.com> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2015. On May 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 12, 2015, the Registrar 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 May 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2015.

The Center appointed Anna Carabelli as the sole panelist in this matter on June 10, 2015. 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”) belong to the Barry Callebaut international Group, which is based in Switzerland. The Group is one of the world’s largest chocolate and cocoa producers, created in 1996 through the merging of the Belgian chocolate producer Callebaut and the French company Cacao Barry. It operates in over 30 countries, selling its products under the trademark BARRY CALLEBAUT.

The mark is protected as a registered trademark in many countries; annexed to the Complaint is a list of several national, international and Community Trade Mark registrations for BARRY CALLEBAUT, filed by the Complainant.

The Complainant also owns the domain name <barry-callebaut.com>, which was registered in 1997. The website “www.barry-callebaut.com” has hundreds of thousands users and approximatively 3 million views every year.

The Respondent’s domain names <barry-calebaut.com>, <barry-callebauit.com>, <barry-callebeut.com>, <barry-calleebaut.com>, <barry-calllebaut.com> and <barrycallebaut.name> were registered between October 2014 and February 2015 (respectively on October 7, 2014; February 25, 2015; November 18, 2014; December 16, 2014; October 7, 2014; December 15, 2014), as shown by the copies of the Registrar’s WHOIS database annexed to the Complaint.

The Respondent is located in Bermuda, Overseas Territory of the United Kingdom.

According to the evidence submitted by the Complainant, the disputed domain names are opening to promotional pages advertising the Respondent’s website development services, containing a link to the Respondent’s own website, i.e., “www.vistaprint.com/websites”.

It also appears that the disputed domain name <barry-callebeut.com> has been used for attempted fraud against the Complainant. On November 18, 2014, several emails were sent by an unknown person purportedly from the email address of one of the Complainant’s employees to one of the Complainant’s bankers, requesting facilitation of an international payment to Hong Kong. Those emails were copied to the email address “…@barry-callebeut.com” (with the name of a real employee of the Complainant as a user name) in order to enable the fraudster to receive a copy of the bank’s replies.

The Respondent has been found to have registered and used domain names in bad faith in several other UDRP cases.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The Complainant’s trademark enjoys international reputation and it is recognized by the public as distinctive of the Complainant’s business;

- The disputed domain names are confusingly similar to its registered trademark BARRY CALLEBAUT: In particular, the domain name <barrycallebaut.name> is identical to the Complainant’s trademark, except for the suffix “.name”, whereas the other disputed domain names differ from the Complainant’s trademark only by the addition of a hyphen and/or the removal, addition or substitution of a single letter, thus creating misspellings of the Complainant’s registered trademark;

- The Respondent has no rights or legitimate interests in the disputed domain names: The Complainant has no relationship with the Respondent and has never authorized or licensed it to use the BARRY CALLEBAUT mark. Furthermore, there is no evidence that the Respondent has been commonly known by this trademark. The Respondent is using the disputed domain names to attract, confuse and profit from Internet users seeking the Complainant;

- The disputed domain names have been registered and are being used in bad faith since: a) the Respondent is using the disputed domain names to create a likelihood of confusion as to an association between the Respondent and the Complainant and to attract, for commercial gain, Internet users to its own website; b) at least one of the disputed domain names has been used to attempt to perpetrate financial fraud against the Complainant. According to the Complainant, further evidence of bad faith lies in the fact that the Respondent has been found to have acted in bad faith in at least 19 other UDRP cases, many of them involving typo-squatting.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) The disputed domain names are identical or confusingly similar to the Complainant’s trademark or service mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The domain name <barrycallebaut.name> is identical to the Complainant’s trademark, except for the addition of the suffix “.name”.

It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.name”) are generally considered irrelevant in assessing confusing similarity between a trademark and a domain name (see Philip Morris USA Inc. v. Sakaria Mohamoud Mussafah, WIPO Case No. D2014-1667; AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-208; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Deborah Jordan / Domains By Proxy, LLC, WIPO Case No. D2012-2078).

The Panel is also aware that this issue is addressed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which contains the following statement: “The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration)”.

As regards the other disputed domain names, the only difference with the Complainant’s trademark is the addition of a hyphen and the removal, addition or substitution of a single letter.

It has become a common practice for respondents to register domain names with minor spelling variations, a phenomenon which is commonly known as “typo-squatting”.

The slight spelling variation does not prevent the disputed domain names from being confusingly similar to the Complainant’s mark (see, e.g., GoCompare.com Limited v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1693; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362).

On the other hand, the addition of the hyphen is not distinctive and confers nothing to distinguish the disputed domain names from the mark. According to previous UDRP panels, a hyphen does not create a new or different mark nor alters the likelihood of confusion with a complainant’s trademarks (see among others: Easy Gardener Products, Inc. v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc., WIPO Case No. D2010-1185; Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281).

In the assessment of whether a domain name and a trademark are confusingly similar, the distinctiveness of the trademark must be taken into account. Here, the distinctiveness of the Complainant’s trademark is not disputed and cannot be seriously questioned. As shown by the documents submitted to the Panel, the Complainant’s trademark has been registered all over the world and is commonly associated with the Complainant’s activity in the field of chocolate production.

Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorized, licensed or permitted the Respondent to use the trademark BARRY CALLEBAUT and there is no evidence that the Respondent has been or is commonly known by the disputed domain names or is using them in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the trademark.

In the light of the above, the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed by many UDRP panels, in such a case, the burden of production then shifts to the respondent to rebut the complainant’s prima facie case (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.

Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the international reputation of the BARRY CALLEBAUT mark, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s well-known BARRY CALLEBAUT trademark at the time it registered the disputed domain names.

The Respondent appears to have intentionally registered the disputed domain names as minor spelling variations of the Complainant’s mark, to take advantage of a typographical error that may be made by Internet users while attempting to enter the Complainant’s mark as its logical Internet address in their web browsers, or of the likely association of the disputed domain names with the Complainant’s trademark.

Therefore, the Panel finds that the Respondent has registered and has been using the disputed domain names in bad faith, to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the BARRY CALLEBAUT brand and mark.

In addition, as shown in the Complaint, at least one of the disputed domain names was used for an attempted fraud against the Complainant. According to several UDRP panel decisions, this is further evidence of bad faith (see e.g., Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017).

Finally, this Panel notes that numerous cases under the UDRP have been successfully brought against the Respondent, many of them involving typo-squatting. This reinforces the Panel’s finding that the Respondent has registered the disputed domain names in bad faith and for illegitimate purposes (for similar conclusions, see Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1650; Avid Dating Life Inc. v. Zhu Xumei, WIPO Case No. DCO2014-0006).

Accordingly, the Panel finds that the Complainant has established element 4(a)(iii) 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 names <barry-calebaut.com>, <barry-callebauit.com>, <barrycallebaut.name>, <barry-callebeut.com>, <barry-calleebaut.com> and <barry-calllebaut.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: June 22, 2015