WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Knoll, Inc. v. Identity Protection Service / Jeroen Goddijn, Furniture24

Case No. D2019-3071

1. The Parties

The Complainant is Knoll, Inc., United States of America (“United States”), represented by The Belles Group, P.C., United States.

The Respondent is Identity Protection Service / Jeroen Goddijn, Furniture24, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <barcelonachairshop.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2019, 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 Respondent and contact information named in the Complaint. The Center sent an email communication to the Complainant on December 18, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 18, 2019

On December 23, 2019, the Respondent emailed the Center advising that the parties were already in contact with each other. In response, on December 26, 2019, the Center emailed the parties advising them that, if they wished to explore settlement options, the proceeding could be suspended at their joint request. Later that day, the parties requested suspension of the proceeding.

On January 20, 2020, the Center emailed the parties advising that the suspension period was about to expire. On January 27, 2020, the Complainant emailed stating it did not wish to extend the suspension. After further exchanges of emails between the parties and the Center, the Complainant requested a second period of suspension.

Whatever discussions took place between the parties did not result in a resolution and, on February 26, 2020, the Complainant requested that the proceedings be reinstituted.

The Center verified that the Complaint together with 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 February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. The Respondent filed the Response on March 19, 2020.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 1, 2020. 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 well-known designer, Mies van der Rohe designed a collection of furniture for the German Pavilion at the 1929 Barcelona International Exhibition. According to some reports, the design of the chair – which has become known as the Barcelona Chair – was used by the Spanish royalty at the opening ceremony.

The Complainant is the well-known manufacture of modern furniture. It and its predecessors have been continuously manufacturing, offering for sale and selling the Barcelona Chair (and the other components of the collection) since, it claims, January 1954.

Amongst other things, the Complainant is the owner of a number of registered trademarks for BARCELONA including:

(a) United States Registered Trademark No 772313 in respect of living room and bedroom furniture, occasional tables and chairs in International Class 20 and which was registered on June 30, 1964;

(b) Canadian Registered Trademark No TMA655215 in respect of furniture, mirrors, articles not included in other classes in International Class 20 and which was registered on December 16, 2005; and

(c) European Union Registered Trademark No 004467064 in respect of armchairs, chairs, couches, tables in International Class 20 and which was registered on July 3, 2006.

The Respondent registered the disputed domain name on August 15, 2011. It resolves to a website offering for sale replica Barcelona chairs and other components such as the Ottoman, Dining chairs, Daybeds, Sofas and accessories such as sheepskin rugs, and Eileen Grey Side Table and a Barcelona Coffee Table. The website is available in English, German, French, Swedish and Danish. It offers prices in EUROs, British pounds, Danish kroner and Swedish kroner.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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.

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks for BARCELONA identified in section 4 above.

The Respondent contends that the term “Barcelona” chair is (and was for 30 years before the Complainant registered its first trademark) a descriptive term for a chair made according to a particular design. The expression indicates the geographical origin (Barcelona) and the kind of furniture (chair). The Respondent points out that the name Barcelona can be associated with many other things or activities such as the second largest city in Spain and the famous football team from that city. According to the Respondent, there is no risk of confusing similarity as the public will recognise that “Barcelona” does not identify the trade source of the product. Instead, the public will recognise it as a reference to the design of a piece of furniture first displayed at the International Exhibition in Barcelona in 1929. The Respondent says the Complainant itself recognises this by including specific trademarks identifying it as the trade source of the products it makes including “StudioKnoll” and a facsimile of Mies van der Rohe’s signature.

The Respondent’s arguments, however, misunderstand the nature of the inquiry under this element of the Policy which is essentially a filter to establish the standing of the Complainant. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.

The disputed domain name differs from the Complainant’s trademark by the addition of the gTLD “.com” and the descriptive words “chair” and “shop”. The Complainant’s trademark therefore is wholly contained within the disputed domain name and is plainly recognisable. The addition of the descriptive words “chair” and “shop” does not avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Although it is unnecessary to go further, if anything, the inclusion of the word “chair” simply reinforces that the disputed domain name is related or directed to the very subject matter covered by the Complainant’s registered trademarks.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

It is not in dispute that the Complainant has not authorised the Respondent to register and use the disputed domain name or that there is no association between the two. The disputed domain name is not derived from the Respondent’s own name and is being used for a commercial undertaking. The disputed domain name was registered many years after the Complainant’s trademarks were registered.

The Complainant does contend that it has registered trade dress for the furniture. Apart from the registered trademarks referred to above which are for the word BARCELONA, however, it has not provided details of that registered trade dress and so it cannot be invoked in support of a claim that the sale of replica chairs is contrary to law.

The Respondent contends that it is perfectly legitimate for him to offer for sale and sell replica chairs to the Barcelona design. The Respondent contends that any registered design or copyright protection in many markets has long since expired. As noted above, the Respondent also contends that “Barcelona chair” in this context does not function as a trade mark, but is a descriptive term referencing a style or design.

The specific languages and currencies used on the website to which the disputed domain name resolves have been described above. It does not appear from the website, however, that the Respondent limits sales to specific countries in which the Respondent has established that copyright or, if applicable, industrial design or other laws have expired.

It is not necessary to engage in a detailed consideration of these matters. Assuming for present purposes that the sale of the replica chairs is legitimate, that does not necessarily assist the Respondent as the issue under the Policy is only whether the Respondent has rights or legitimate interests in the disputed domain name.

In that connection, the Panel notes that prior UDRP panels have frequently held that websites selling replica products by reference to the complainant’s trademark in the domain name are not legitimate. For example, Breitling SA v. Evans Malcolm, Malcolm Evans,WIPO Case No. D2019-2618 (<breitlingwatches.biz>) and TAG HEUER S.A. v. JBlumers Inc./Jerald BlumeWIPO Case No. D2004-0871 (<faketagheuer.com>, <replicatagheuer.com> and <tagheuerreplicas.com>).

As has already been noted, the disputed domain name encompasses the entirety of the Complainant’s trademark. The disputed domain name itself does not contain elements which clearly disassociate it from the Complainant and its products. Barcelona as a place is not known especially as a place for the production of furniture in the way, for example, that the Champagne region of France is associated with the production of a particular style of sparkling white wine. Rather, the expression “Barcelona chair” identifies a particular design by Mies van der Rohe which was first displayed at an international exhibition in Barcelona. The Complainant is the inheritor of that design and, more importantly for present purposes, the identification of that particular design by the sign “Barcelona” is a registered trademark which extends to many of the countries which appear to be targeted by the Respondent’s website. A putative member of the public encountering the disputed domain name would naturally expect the products being offered from the “shop” would be the chairs offered under the trademark.

The website to which the disputed domain name resolves does state that the products being offered for sale are replicas of the Barcelona chair. In context, that is ambiguous and does not clearly disassociate the Respondent and the Respondent’s products from the Complainant and its products.

Even in a context where a respondent is offering for sale genuine products of a trademark owner, not competitive products, it has been generally held under the Policy that the respondent’s site must accurately and prominently disclose the nature of the relationship with the trademark owner so that the risk of misrepresentation is minimised. See, e.g., WIPO Overview 3.0, section 2.8. That is not the case here.

Having regard to these matters, and irrespective of whether or not the sale of replica products is legitimate in any particular market, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

It appears to be the case that the Respondent was well aware of the Complainant’s trademark. The Respondent contends, however, that in registering and using the disputed domain name he was not seeking to take advantage of the trademark significance of the expression “Barcelona chair”, but was using it in accordance with the historically established, in normal language and using commonly accepted and solely descriptive indications of geographical origin (Barcelona) and kind (chair) which cannot be forbidden by any trademark. Therefore, according to the Respondent, use of the indication Barcelona chair in a domain name does not involve bad faith.

As discussed in section 5B above, however, the term “Barcelona chair” signifies the design originated by Mies van der Rohe which operates as a trademark designating the Complainant’s products as his successors.

In circumstances where the Respondent has been found not to have rights or legitimate interests in the particular disputed domain name in issue, therefore, the registration and use of that particular disputed domain name constitutes registration and use in bad faith under the Policy.

Accordingly, the Complainants have established all three requirements under the Policy.

6. 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, <barcelonachairshop.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: April 16, 2020