WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Normalu v. Ideh Sazane Pars Co.

Case No. DIR2012-0001

1. The Parties

The Complainant is Normalu of Kembs, France, represented by Fidal, France.

The Respondent is Ideh Sazane Pars Co. of Shiraz, Islamic Republic of Iran (“Iran”), internally represented.

2. The Domain Name and Registrar

The disputed domain name <barrisol.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2012. On September 21, 2012, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On September 26, 2012, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 1, 2012, the Center sent a notification that the Complaint was administratively deficient. In response to the notification, the Complainant sent two confirmation emails on October 4 and 10, 2012, respectively.

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 October 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2012. On October 26, 2012, the Respondent submitted a request for extension of the Response due date. On October 29, 2012, the Center acknowledged receipt and requested the Complainant to submit any comments it wished to make concerning the Respondent’s request by October 30, 2012. On October 31, 2012, the Center extended the Response due date to November 6, 2012. The Response was filed with the Center on November 6, 2012.

The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on November 15, 2012. 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 Complainant is Normalu S.A., a limited company registered under the laws of France under company No. 946750635. The Complainant was founded in 1967 and began manufacturing stretch ceilings a few years later. The Complainant received its first patent for stretch ceilings in 1975 and began to market these under the brand name and trademark BARRISOL. The Complainant expanded its exports of BARRISOL stretch ceilings into international markets such as Eastern Europe and Asia in the 1990s. The Complainant’s BARRISOL branded stretch ceiling products and techniques have been selected by famous architects and have won more than 30 professional prizes and awards for the Complainant. The Complainant has operated a web portal at “www.barrisol.com” and “www.barrisol.fr” for more than ten years. The Complainant has also registered various generic and country code domain names containing the BARRISOL brand, such as <barrisol.asia>, <barrisol.de>, <barrisol.co.uk> and <barrisol.net>.

The Complainant’s turnover in 2009 reached EUR 21 million and its BARRISOL network contains more than 1,200 approved installers in over 110 countries worldwide. The Complainant currently operates in Iran via an authorized dealer named Ohanian Trading Est. In recent months, the Complainant has launched a Persian language version of its website. The Complainant is the owner of multiple registered trademarks worldwide, including international trademark No. 1105869 registered on May 19, 2011 and designated under the Madrid Protocol for, inter alia, Iran.

The Respondent is a company based in Iran. Two of the Respondent’s personnel completed a training course in the Complainant’s methods and were awarded the Complainant’s qualification of “Specialised Stretch Ceiling Installer” on February 8, 2007. Subsequent to this training, the Complainant and the Respondent entered into a business relationship. By a Distributor Agreement between the Parties dated November 14, 2007, the Complainant granted the Respondent the non-exclusive right to sell and install the Complainant’s BARRISOL branded products within Iran - Shiraz area for a period of five years. In terms of the said Agreement, the Respondent accepted various quarterly minimum target sales which it would require to achieve throughout the duration of the Agreement. Clause 4(viii) of the said Agreement specified that websites which could be created by the Respondent would be the property of the Complainant if the name BARRISOL was used in the website name or if it was used as one of the components of an email address. Clause 10(b)(iii) of the said Agreement specified inter alia that upon termination of the said Agreement, the Respondent would remove all logos, names and inscriptions identifying the Complainant’s trademarks as identified in Clause 4 thereof.

On February 23, 2010, the Complainant wrote to the Respondent stating that in light of a significant drop in the Respondent’s sales figures in 2009 the Complainant had selected alternative partners to represent the Complainant in Iran and requesting that the Respondent cease all use of the BARRISOL name. The Complainant has requested the Respondent to transfer the disputed domain name consequent upon termination of the said Distributor Agreement however the Respondent has not done so.

The disputed domain name was created on August 18, 2010 and was registered in the Respondent’s name on August 25, 2010. The Respondent uses the disputed domain name for email and file transfer protocol (“ftp”) and has reproduced it on company stationery. The Respondent now supplies a product which is different from the Complainant’s BARRISOL product.

On August 16, 2012, the Complainant’s legal counsel wrote to the Respondent requesting a transfer of the disputed domain name. On September 30, 2012, the Respondent replied proposing that the Complainant “extends or revalidates” the Respondent’s previous agreement with the Complainant, in return for which the Respondent proposed to redirect “www.barrisol.ir” to the Complainant’s principal website at “www.barrisol.com” while the Respondent would continue to use the disputed domain name for ftp and email. The Respondent explained that in this way it would be able “to cover our huge loss of not using Barrisol products directly”.

5. Parties’ Contentions

A. Complainant

The Complainant contends (i) that it has rights in a trademark or trading name protected under Iranian law and that the domain name is identical or confusingly similar to the trademark or name in question; (ii) that the registrant of the disputed domain name has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and/or is being used in bad faith.

The Complainant notes that the panel in Normalu SA v. Privacyprotect.org, WIPO Case No. D2011­0444 considered the Complainant’s BARRISOL trademark as recognized “in the world and world leader in manufacturing stretch ceilings.” The Complainant points out that the disputed domain name consists of the Complainant’s trademark and the country code top level domain for Iran. The Complainant submits that the top level domain has no distinguishing effect and therefore contends that the disputed domain name is identical to the Complainant’s trademark.

The Complainant contends that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because the direct contractual business relationship between the Parties has been terminated. The Complainant submits that the relevant time for the assessment of rights and legitimate interests is the date of filing of the Complaint and notes that as at that date the Respondent was not related in any way to the Complainant’s business. The Complainant notes that its potential consent to the use of the disputed domain name by the Respondent would have been automatically withdrawn at the same time that the Respondent’s dealership was terminated.

The Complainant states that to the best of its knowledge, the Respondent is not currently and has never been known under the name “Barrisol” and that during the period when the Parties were contractually linked, the Respondent was only a distributor of BARRISOL products and was selling and installing these under its own trading name. The Complainant submits that no license or authorization or any other rights were granted by the Complainant to the Respondent to make any use, or apply for registration of the disputed domain name while the relationship was ongoing, nor since it has been terminated. The Complainant states that following numerous unsuccessful requests regarding the disputed domain name it accepted the registration and use tacitly while the dealership arrangement between the Parties was effective. The Complainant notes that the Respondent is now selling a competitor’s products and contends that the Respondent cannot thereby claim to be using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant contends that even if the Respondent is regarded as a distributor neither the first, nor the second view of paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) would be applicable in the present case. The Complainant notes that in terms of the tests laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Respondent is not offering the goods and services at issue and is trying to corner the market in domain names that reflect the trademark, given that it has registered the Complainant’s mark as a country code domain name in its own country. The Complainant also notes that the minority view of UDRP panelists indicates that without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name. The Complainant notes that it has never provided such permission to the Respondent in respect of the disputed domain name.

The Complainant cites Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 as authority for the proposition that where the Respondent might have had a legitimate interest in the disputed domain name as an authorized dealer of the Complainant, once it lost such authorization it lost the corresponding legitimate interest.

The Complainant asserts that as the Parties were in a business relationship when the Respondent registered the disputed domain name, the Respondent could not have been unaware of the Complainant’s trademark. The Complainant states that the Respondent could have been considered as having a legitimate interest in registering the disputed domain name when it was an authorized dealer and as such the Complainant notes that it does not submit that the disputed domain name was registered in bad faith. The Complainant notes however that the Policy only requires the Complainant to prove either bad faith registration or use and the Complainant contends that the Respondent’s use of the disputed domain name constitutes a use in bad faith.

The Complainant notes that in terms of the Distributor Agreement between the Parties the Respondent should have returned the disputed domain name to the Complainant on termination of its authorized status. The Complainant submits that even if the disputed domain name pointed to the Complainant’s official website, the Complainant would be concerned that the Respondent might use the disputed domain name in the future to confuse and divert Internet users to its own commercial website which the Complainant says is still using logos and materials relative to the Complainant’s BARRISOL trademark without authorization. The Complainant asserts that the Respondent is using the disputed domain name primarily for the purpose of pointing it to the Respondent’s own corporate website which has the effect of disrupting the Complainant and its authorized distributors’ activities, particularly in Iran. The Complainant notes that the Respondent’s telephone number is still displayed in the footer of the website associated with the disputed domain name and submits that this demonstrates that the Respondent may use the disputed domain name to attract Internet users.

The Complainant contends that the facts of the present case are analogous to those in the case of Normalu v. Shanghai Pinpoint Network-Tech Co., Ltd / Honchie, WIPO Case No. D2012-0864 in which the panel noted that the respondent’s website was being used to pass off the respondent’s business as one which was licensed by the complainant, which the panel found to constitute both registration and use in bad faith.

B. Respondent

The Respondent notes that its contract with the Complainant was terminated unexpectedly on February 23, 2010. The Respondent states that prior to such termination it had implemented vast advertisement activities regarding the Complainant’s BARRISOL brand and had invested in obtaining the Complainant’s training qualifications. The Respondent states that in light of its efforts, many of its customers have associated the name of BARRISOL with the Respondent’s company. The Respondent notes that it had invented a new way and materials to install stretch ceilings which was cheap and flexible to implement and would impress many customers. The Respondent states that it is a rule in Iran that people know a product by its brand name, quoting the examples of Knauf for drywalls and Alubond for composite panels. The Respondent contends that stretch ceilings, regardless of their actual brand, are known as Barrisol in Iran and that the Respondent has a considerable market share therein.

The Respondent refers to its personnel’s qualifications of “Specialised Stretch Ceiling Installer” which the Respondent states shows the Respondent’s competence in installation and marketing of such ceilings. The Respondent states that this competence is an asset of the Respondent which was not terminated along with the termination of the Parties’ Distributor Agreement. The Respondent contends that having retained such competence, it has the right to market this via the best media, namely the Internet, and notes that it employed an Iranian country code domain name to do this.

The Respondent explains that it sought to choose a clear name for its website and selected the disputed domain name because the Complainant had already chosen to use, for example, “fa.barrisol.com”. The Respondent states that its use of the website associated with the disputed domain name was limited however that it had engaged in considerable use for email and ftp and on all of its company stationery. The Respondent states that after two years’ use of the disputed domain name it is now impossible for the Respondent not to use the disputed domain name for email and ftp.

The Respondent notes that its product is constructed differently from the Complainant’s product and that the Respondent’s product may be installed four times faster. The Respondent notes that the Complainant has no similar product. The Respondent concludes its submissions by stating that the Respondent’s activities in Iran do not damage but rather support the Complainant’s BARRISOL brand. The Respondent says that it was unaware that the Complainant was designing a website in Farsi and therefore that the Respondent translated some information from the Complainant’s website and provided a link thereto, in order to allow people to become familiar with the BARRISOL brand. The Respondent states that now that it is aware that the Complainant has designed its website in Farsi the Respondent will redesign its own website and it looks to the Complainant for comments to avoid any misunderstandings.

6. Discussion and Findings

The Panel notes from the wording of several of the Complainant’s contentions that at the time of filing the Complaint, the Complainant may have been of the belief that the Respondent had registered the disputed domain name during the term of the Distributor Agreement between the Parties. Judging by the copy of the WhoIs output for the disputed domain name produced by the Complainant, this belief may have resulted from the fact that IRNIC’s public WhoIs does not contain the date of creation of the disputed domain name. The Panel, however, has before it the registrar verification response provided to the Center by IRNIC which specifies the date of creation and date of registration as noted in the Factual Background section above. The significance for the present case is that the Respondent registered the disputed domain name some months after the termination of the Distributor Agreement and not during its term.

In the present case, the Panel will disregard the relatively few submissions of the Complainant which rely exclusively on its mistaken view as to the date of registration of the disputed domain name as this does not affect the substance or general thrust of the bulk of the Complainant’s case. However, had it appeared to the Panel that either of the Parties’ cases might have been prejudiced by their ignorance of the date of creation and registration of the disputed domain name, the Panel would have made such dates known to the Parties and invited their comments via a procedural order. In the opinion of the Panel this latter approach is not necessary in the present case.

To succeed, the Complainant must demonstrate that all of the elements provided in paragraph 4(a) of the Policy have been satisfied, namely that:

(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 or is being used in bad faith.

The Panel notes that this last requirement is disjunctive in the Policy for .ir domain name disputes, unlike the conjunctive requirement under the Uniform Domain Name Dispute Resolution Policy (UDRP), which requires a complainant to establish bad faith in the registration and use of a disputed domain name.

A. Identical or Confusingly Similar

It is clear to the Panel that the Complainant holds multiple registered trademarks in the word “Barrisol”, including one designated for Iran as specified in the Factual Background section above. This latter trademark post-dates the registration of the disputed domain name however that is of no significance for the first element of the Policy which is essentially a standing requirement. On a comparison between the disputed domain name and the Complainant’s trademark, the country code top level domain “.ir” is disregarded as is customary in cases under the Policy, it being required for technical reasons only and being of a wholly generic nature, leaving the identical alphabetic string in both cases.

In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

1. before any notice to you of the dispute, your 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

2. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

3. you are 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”.

This wording is identical to the wording of the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and it is the consensus of previous decisions under the UDRP that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the domain name at issue. Once such prima facie case is made, the respondent carries the burden of demonstrating such rights or legitimate interests. In light of the identical wording, this approach has equally been adopted by panels in respect of the irDRP (see, for example, Dr. Ing. h.c. F. Porsche AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0002).

In the present dispute, the Complainant submits that the Parties’ business relationship has terminated and that any rights or legitimate interests which the Respondent might have had in connection with the disputed domain name have ceased. The Complainant notes that it did not consent to the Respondent’s registration of the disputed domain name, that the Respondent has never been known under the name “Barrisol” and that the Complainant has granted no license to the Respondent to apply for, register or use the disputed domain name. The Panel is satisfied that on the basis of these averments the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production accordingly shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name.

The Respondent’s case is first that it has made a significant investment in promoting the Complainant’s products, secondly that its personnel have obtained the Complainant’s training qualifications and retain competence in BARRISOL installations, thirdly that according to a rule in Iran, BARRISOL has become the generic name for stretch ceilings in that country and fourthly that the Respondent is now selling a differently constructed and improved product, which is different from that of the Complainant. On the first point, the Panel accepts that it is relatively typical in a trademark owner/distributor relationship that the distributor will take on a marketing role within its territory and will in that context make an investment in promoting the Complainant’s product. The Panel has no reason to believe that the Respondent did not make a substantial investment in that context during the term of the Distributor Agreement, although no supporting evidence on this matter has been produced by the Respondent. In any event, the Panel considers that the making of such an investment would not on its own entitle the Respondent to adopt the Complainant’s trademark in a domain name, particularly in the present case where the Distributor Agreement had already been terminated before the disputed domain name was registered. Even if the Distributor Agreement had still been in force at the date when the disputed domain name was registered, the provisions therein regarding “website names”, which the Panel takes to include domain names, would have been operative and would thus have reserved all rights in the disputed domain name to the Complainant.

On the second point, the Panel accepts that the Respondent may well have retained the competence to fit the Complainant’s BARRISOL stretch ceilings. However, in the Panel’s view, neither the Respondent’s personnel’s training qualifications nor the fact that the Respondent may have retained any competence in connection with the Complainant’s product entitle the Respondent to give the impression that it is the Complainant, which in the Panel’s mind is what the disputed domain name conveys. Accordingly, this does not confer a right or legitimate interest in the disputed domain name upon the Respondent.

On the third point, the Panel notes that the Respondent has merely made a bald assertion that the name BARRISOL has become genericized, that is, synonymous with the general class of stretch ceiling products in Iran. The Panel cannot accept such an assertion in the absence of any supporting evidence. Furthermore, the Panel considers that it is extremely unlikely to be the case in Iran or elsewhere, bearing in mind the fame of the Complainant’s trademarks, the awards which its product has received, the fact that the product is selected by famous architects and the steps which the Complainant has taken to protect the distinctiveness of the BARRISOL mark, as set out in the Complaint.

In addition to its various submissions as noted above, the Panel notes that the Respondent openly admits in the Response that it is using the disputed domain name to sell its own stretch ceiling products, which it says are an improvement upon those of the Complainant. The use of the Complainant’s trademark in the disputed domain name to sell a competitive product could not in the Panel’s view be described as a bona fide offering of goods or services and this is a further indication that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally the Panel considers that the Respondent’s position as a former distributor of the Complainant’s product cannot confer rights or legitimate interests in the disputed domain name upon it. As the Complainant notes, typically UDRP panels will consider the question of a reseller/distributor of trademarked goods or services in the context of the tests laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. However, the Respondent in the present case is not a reseller or distributor of the Complainant’s product, its rights under the Distributor Agreement having ceased prior to the registration of the disputed domain name and it having turned to the sale of a competitive product to that of the Complainant. In these circumstances, the Respondent is not a reseller/distributor of the trademarked goods and no analysis need be performed in terms of Oki Data, supra.

In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“i. circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

ii. you have 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 you have engaged in a pattern of such conduct; or

iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

As noted above, the irDRP requires a complainant to prove either registration or use in bad faith as opposed to the conjunctive requirement of the UDRP. The Complainant’s submissions focus on use rather than registration in bad faith. That said, the Panel is satisfied in the circumstances of the present case that the Respondent has both registered and used the disputed domain name in bad faith for the following reasons.

It is clear to the Panel that the Respondent had actual notice of the Complainant’s trademarks when it registered the disputed domain name, given that the Complainant’s intellectual property rights had been specifically drawn to the Respondent’s attention in the Distributor Agreement. Furthermore, the Respondent knew when it registered the disputed domain name that it was no longer entitled to use the Complainant’s BARRISOL trademark in connection with its business, in consequence of the termination of the Distributor Agreement. In addition, the Respondent knew that it could not use the disputed domain name in connection with its own competitive product, as it planned to do, without likely infringing the Complainant’s rights and/or those of the Complainant’s authorized distributors in Iran. In the Panel’s view each of these is a factor indicating registration in bad faith.

Furthermore, an indication of the Respondent’s motivation in registering the disputed domain name can be gleaned from its letter to the Complainant’s legal counsel of September 30, 2012, in which the Respondent suggests that the Complainant should reinstate the Distributor Agreement in return for the Respondent redirecting the disputed domain name to the Complainant’s principal website. This suggests to the Panel that the Respondent may have registered the disputed domain name in order to provide it with some leverage in negotiations with the Complainant regarding the restoration of its former status as the Complainant’s distributor. The Panel considers that this is an additional factor pointing in the direction of registration in bad faith.

As noted in the preceding section, the Respondent has admitted that it is using the disputed domain name in connection with the sale of a product which competes with that of the Complainant. The Respondent continues to use the Complainant’s BARRISOL name and trademark both in the disputed domain name and in the associated website content. The Panel is satisfied that the Respondent’s admission demonstrates that it has used the disputed domain name 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 or endorsement of a product or service on the Respondent’s website. Consequently the Respondent has used the disputed domain name in bad faith.

Accordingly, the Panel finds that the Respondent both registered and used the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

For all 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 <barrisol.ir> be transferred to the Complainant.

Andrew D.S. Lothian
Sole Panelist
Dated: November 29, 2012