WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry Callebaut AG and Barry Callebaut Belgium NV v. Contact Privacy Inc., Customer 124632466 / Joe Buczkowski

Case No. D2016-1332

1. The Parties

The Complainants are Barry Callebaut AG of Zurich, Switzerland and Barry Callebaut Belgium NV of Lebbeke-Wieze, Belgium, respectively, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Contact Privacy Inc., Customer 124632466 of Toronto, Ontario, Canada / Joe Buczkowski of Dallas, Texas, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2016. On June 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2016, 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 July 4, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 5, 2016. The Complainant filed an amendment to the Complaint on July 6, 2016.

The Center verified that the Complaint together with the amended Complaint and the amendment to 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 July 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2016.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 3, 2016. 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, which is one of the world’s leading manufacturers of chocolate and cocoa products. The Barry Callebaut Group was established in 1996 following a merger of the French firm Cacao Barry and the Belgian firm Callebaut.

Since 1996, the Group has traded under the brand “Barry Callebaut”.

The First Complainant is the Group’s holding company that owns an extensive international portfolio of registered trademarks for BARRY CALLEBAUT, including international trademark no. 70221, registered on September 4, 1998. The Second Complainant is the main trading company for chocolate within the Group. The First and Second Complainants are collectively referred as the “Complainant”.

The Complainant has operated its main website at “www.barry-callebaut.com” since 1997.

The disputed domain name was registered on June 9, 2016. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns an extensive international portfolio of registered trademarks for the term “Barry Callebaut” and, by virtue of its extensive trading and marketing activities, has acquired substantial reputation and goodwill in that name. The disputed domain name differs from the Complainant’s distinctive trademark only by the insertion of the letter “i” between the letters “a” and “u”, plus a hyphen, thus creating a misspelling of the Complainant’s trademark BARRY CALLEBAUT. This circumstance has the obvious potential to cause confusion with the Complainant’s trademark both visually and phonetically.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 disputed domain name at all. There is no evidence that the Respondent has been commonly known by the name comprised in the disputed domain name.

- The disputed domain name was registered and is being used in bad faith. The disputed domain name has not been used for an active website, characterizing passive holding. The Complainant has a well-known and highly distinctive trademark. It is inconceivable that the Respondent registered the disputed domain name independently of the Complainant’s trademark. The Respondent has concealed its identity through the 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 provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three 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 Panel has no doubt that “Barry Callebaut” is a term directly connected with the Complainant’s activities in the chocolate market.

Exhibit 6 to the Complaint show that the Complainant owns numerous trademark registrations in the term “Barry Callebaut” in many jurisdictions around the world, including, by way of example, an International trademark no. 702211 for BARRY CALLEBAUT dated of September 4, 1998.

The disputed domain name differs from the Complainant’s trademark by the addition of the hyphen after the element “barry” and by the inclusion of an “i” on the element “callebaut”, which became “callebaiut”.

In the test of confusing similarity under the Policy, which is confined to a comparison of the disputed domain name and the trademark, it is well established in prior decisions under the UDRP that (a) the mere addition of symbols such as the hyphen, and (b) the use of common misspellings of a trademark in which a complainant has rights are not sufficient to avoid a finding of confusing similarity. It is also well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

Furthermore, the present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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 its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent (in 2016), the trademark BARRY CALLEBAUT was already widely known and directly connected to the Complainant’s activities in the chocolate market.

The disputed domain name encompasses a misspelling of the trademark BARRY CALLEBAUT, in which the two terms that comprise the registered mark are separated by a hyphen. The term “Barry Callebaut” is also the characteristic element of the Complainant’s trade name.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark and trade name, as well as that the adoption of the expression “barry-callebaiut” could be a mere coincidence.

It is true that presently the disputed domain name does not resolve to any active webpage.

However, UDRP panels have frequently found that the apparent lack of so-called active use of a domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005. The passive and non-collaborative posture of the Respondent, (a) not presently using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the registration of a domain name containing a misspelling of a third-party trademark, certainly cannot plausibly amount to good faith use of the disputed domain name for the purposes of the Policy.

Such circumstances, including (d) the lack of any plausible reason for the adoption of the expression “barry callebaiut” in the disputed domain name by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied 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-callebaiut.com> be transferred to the First Complainant, Barry Callebaut AG.

Rodrigo Azevedo
Sole Panelist
Date: August 15, 2016