DECISION

 

Barry Callebaut AG and Barry Callebaut Belgium NV v. Aniket Bansode

Claim Number: FA2502002139776

 

PARTIES

Complainant is Barry Callebaut AG and Barry Callebaut Belgium NV ("Complainant"), represented by Adam Taylor of Adlex Solicitors, United Kingdom. Respondent is Aniket Bansode ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <callebaut.us>, registered with Spaceship, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 12, 2025; Forum received payment on February 12, 2025.

 

On February 13, 2025, Spaceship, Inc. confirmed by e-mail to Forum that the <callebaut.us> domain name is registered with Spaceship, Inc. and that Respondent is the current registrant of the name. Spaceship, Inc. has verified that Respondent is bound by the Spaceship, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On February 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@callebaut.us. Also on February 13, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 6, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, there are two named Complainants. The relevant rules governing multiple complainants are Rule 3(a) and Forum's Supplemental Rule 1(e). Rule 3(a) states, "Any person or entity may initiate an administrative proceeding by submitting a complaint." Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

The two named Complainants in this matter are Barry Callebaut AG and Barry Callebaut Belgium NV and the Complaint states that both are part of the Barry Callebaut International group of companies which was established in 1996. The first Complainant is a trademark holding company and the second is the main trading company for chocolate within the group. In support, it submits a section from the group's 2023-24 Annual Report titled "Group Entities" and the Panel has confirmed that both Complainants are named therein.

 

Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

See also Sub-Zero, Inc. and Wolf Appliance, Inc. v. Tanya Marsicano, FA 2103685 (Forum July 20, 2024) (consolidation of two complainants found to be equitable and procedurally efficient where "the named complainants are related sister companies, 'both wholy owned subsidiaries of Sub-Zero Group, Inc.'").

 

In the present case, the Panel interprets the stated relationship between the two named Complainants as sister entities with a larger business group. Respondent has provided no response or other submission in this case and so it has not contested this relationship. Under the circumstances the Panel finds that the there is a link between the two named Complainants and that they have a specific common grievance against the Respondent who has engaged in a common action that has affected the Complainants in a similar fashion.

 

For the sake of simplicity, Barry Callebaut AG and Barry Callebaut Belgium NV will hereafter be referred to in this decision as "Complainant" unless otherwise noted.

 

PARTIES' CONTENTIONS

A. Complainant

Established in 1996 following a merger of the French firm Cacao Barry and the Belgian firm Callebaut, Complainant is one of the world's leading manufacturers of high-quality chocolate and cocoa products. It procures, processes, manufactures and supplies cocoa-based ingredients, e.g., cocoa powder, cocoa butter and chocolate, (as well as nut-based ingredients and decorations) to food manufacturers and it also supplies cocoa, nut and fruit-based food ingredients and decorations to food service businesses, including hotels, bakery chains, restaurants and airlines. Since the formation of the group, of which both the named Complainants are members, they have traded under the brand name BARRY CALLEBAUT and have operated a website at www.barry-callebaut.com. This brand name is the subject of a number of trademark registrations including Swiss Trade Mark Nos. 453449 and 561861 (issued on July 28, 1998 and September 6, 2007 respectively). Further, the brand name CALLEBAUT per se is used for the group's premium Belgium chocolate brand and has a dedicated website at www.callebaut.com and this brand name is the subject of US Trademark Nos. 1357042, 5134976, and 5477949 (issued on August 27, 1985, February 7, 2017, and May 29, 2018 respectively).

 

The <callebaut.us> domain name, registered on January 15, 2025, is identical or confusingly similar to the BARRY CALLEBAUT and CALLEBAUT marks as its second level consists entirely of the word "Callebaut" and it adds only the ".us" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name where it owns no relevant trademark rights, is not commonly known by the domain name, and where it has offered to sell the domain name to Complainant and it resolves the domain name to a pay-per-click page with links to other sites that compete with Complainant.

 

The disputed domain name was registered and is used in bad faith based on the above-mentioned activities of Respondent as well as its history of adverse UDRP decisions.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       The two Complainants are consolidated into the present proceedings as they are related entities under a larger business group;

-       Complainant owns trademark rights to the BARRY CALLEBAUT and CALLEBAUT marks and the domain name is identical or confusingly similar to such marks;

-       Respondent does not have rights or legitimate interests in the disputed domain name where it owns no relevant trademark rights, is not commonly known by the domain name, and it hosts a website that displays pay-per-click links to third-party services that compete with Complainant; and

-       The disputed domain name was registered and is used in bad faith where Respondent solicited Complainant to purchase the domain name, has resolved it to a website that hosts pay-per-click links for commercial gain, based on a likelihood of confusion with Complainant's marks, and it has engaged in a pattern of conduct involving domain names that copy the trademarks of others.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a 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."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts rights in its BARRY CALLEBAUT and CALLEBAUT marks through its registrations with the trademark offices of Switzerland and the United States of America. Registration of a mark with the United States Patent and Trademark Office (USPTO) is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Here, Complainant provides screenshots from the Swiss Trademark Office and USPTO websites evidencing its registrations. Therefore, the Panel finds that Complainant has rights in the BARRY CALLEBAUT and CALLEBAUT marks under Policy ¶ 4(a)(i).¹

 

Next, Complainant argues that Respondent's <callebaut.us> domain name is confusingly similar to its mark because the disputed domain name incorporates the CALLEBAUT mark in its entirety and a significant portion of the BARRY CALLEBAUT mark and only adds the ".us" TLD. The use of an entire trademark and the addition only of a TLD is not sufficient to distinguish a disputed domain name from an asserted mark. Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000) ("There can be no question that Respondent's domain name <ROLLERBLADE.NET> is identical to Complainant's trademark 'Rollerblade', and this Panel so finds. It is already well established that the specific top level of the domain name such as 'net' or 'com' does not affect the domain name for the purpose of determining whether it is identical or confusingly similar."). The Panel thus finds that the disputed domain name is identical or confusingly similar to Complainant's marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

With relevance to usDRP ¶ 4(c)(i), Complainant asserts that "[t]here is no evidence that the Respondent owns a trade mark that is identical to the Domain". Such lack of trademark ownership provides no shelter to a Respondent under this section of the Policy. See Pepsico, Inc. v. Becky, FA 117014 (Forum Sep. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Although Complainant does not submit any evidence in support of its assertion, Respondent has defaulted in this case and there is no other evidence of record relevant to Policy ¶ 4(c)(i). As such, the Panel cannot conclude that Respondent has any rights or legitimate interests in the disputed domain name under this clause.

 

Next, Complainant contends that Respondent lacks rights or legitimate interests in the <callebaut.us> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the BARRY CALLEBAUT or CALLEBAUT marks. WHOIS information is often referenced when considering whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per [UDRP] Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name lists the registrant as "Aniket Bansode" and there is no evidence that Respondent is known otherwise. Further, Complainant specifically states that it "has no association with the Respondent and has never authorised or licensed the Respondent to use its trade marks." Respondent has not participated in these proceedings and so it does not claim otherwise. In light of the above, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii).

 

Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or in a manner that is a legitimate noncommercial or fair use as it has resolved to a pay-per-click website with links to competing services. Where the Respondent uses a domain to display a pay-per-click page with links to third-party products or services that are competitive to a complainant, Panels often find that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).") Also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business). Complainant provides screenshots of the website to which the disputed domain name resolves and these display pay-per-click links titled "Chocolate Gifts", "Gourmet Chocolates", and "Chocolates – The Candy Co", which are related to and competitive with Complainant's products. The Panel finds that, although Complainant's marks are made up of surnames, there is no descriptive or generic use of them in the present situation. Thus, the pay-per-click links on Respondent's website are derived from the marks rather than from any meaning of the individual words themselves.

 

As the Complainant has set out a prima facie claim which has not been adequately rebutted by the Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does he make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(ii) and (iv).

 

Registration or Use in Bad Faith

Complainant argues that Respondent had actual knowledge of Complainant's rights in the BARRY CALLEBAUT and CALLEBAUT marks at the time of registering the <callebaut.us> domain name. A respondent's actual knowledge of a complainant's rights in an asserted mark prior to registering a disputed domain name can form a foundation upon which to base an argument for bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."). Also see AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field."). Complainant asserts that its marks are famous and, in support, it provides current and archived screenshots and traffic statistics from its www.barry-callebaut.com and www.callebaut.com websites, dating back to 2007, showing promotion of its brands, mentioning the company's sales volume and global scope of business; print and online advertisements dating back to 2015; programs from industry trade shows at which Complainant has exhibited (dating back to 2013); and examples of industry awards it has received, dating back to 2011. The Panel finds that this evidence adequately supports Complainant's claim of a strong and broad trademark reputation. Further, Complainant submits an email solicitation that it received from Respondent, on the same day that the <callebaut.us> domain name was registered, offering to sell the domain name stating that it "perfectly aligns with your brand's identity and market presence in the United States." All of this leads the Panel to conclude with certainty that Respondent did have actual knowledge of Complainant's rights in its marks at the time that it registered the disputed domain name.

 

The first line of argument for bad faith use of the <callebaut.us> domain name is Complainant's assertion that Respondent initiated a direct offer to Complainant for the sale of the domain name for an amount in excess of its out-of-pocket registration costs. Offering a confusingly similar domain name for sale can indicate bad faith registration and use. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) ("A respondent's general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i)."). Here, Complainant provides a copy of an email from Respondent, dated the same day as that on which the <callebaut.us> domain name was acquired, in which it offers to sell domain name to Complainant as it "perfectly aligns with your brand's identity and market presence in the United States." Further correspondence ensues in which Complainant's counsel disputes Respondent's ownership of the domain name but offers to pay USD $100 to cover registration costs. Respondent replies claiming "I had no knowledge of your client having a trademark on the keyword 'callebaut'" but stating "I am ready to give you this domain immediately at 500 USD. $100 is not a reasonable price." Complainant restates its $100 offer and Respondent then reduces its price to $300 at which point correspondence is terminated. Finally, Respondent's pay-per-click website contains a notice saying "Buy this domain. The owner of callebaut.us is offering it for sale for an asking price of 3000 EUR!" As no evidence is presented showing Respondent's acquisition cost for the domain name, the Panel can only assume that even its $300 asking price exceed Respondent's likely out-of-pocket registration costs. As Respondent has not participated in these proceedings, the Panel finds that its offering of the domain name for sale, both directly to Complainant and to the general public, supports the claim that the domain name was registered and used to target Complainant's marks in bad faith under Policy ¶ 4(b)(i).

 

Complainant next argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii) because Respondent has engaged in a pattern of registering other domain names and then immediately contacting the owner of the corresponding trade mark with a view to selling it at a profit. It cites four prior adverse cases against Respondent including the decision in Koninklijke Douwe Egberts B.V. v. Aniket Bansode, Vanmala, D2021-1692 (WIPO July 26, 2021), wherein the Panel noted that "Complainant exhibits an email from the Respondent, sent on the same day it registered the disputed domain name, offering to sell the disputed domain name to the Complainant. The Complainant also exhibits a screenshot from Sedo.com indicating a price of USD 6,111 for the disputed domain name." Similarly, in Hunter Douglas Industries B.V. v. Aniket Bansode, DNL2022-0037 (WIPO Oct. 26, 2022), the Panel found that "[t]he timeline of the Respondent's offer for sale of the Disputed Domain Name, merely hours after the registration of the Disputed Domain Name, clearly shows the Respondent's intent to illegitimately benefit from the Complainant's Trademarks." In the present case, the Panel finds that, despite any protestations about lack of trademark knowledge, Respondent is clearly a serial cybersquatter and has engaged in a pattern of targeting brand owners in bad faith to prevent Complainant from reflecting its mark in a ".us" domain name.

 

Finally, bad faith is asserted based on the resolution of the <callebaut.us> domain name to a pay-per-click website with links to other websites offering products that compete with those manufactured and sold by Complainant. Use of a disputed domain name to redirect consumers to third-party goods or services has been upheld as evidence of bad faith disruption of a complainant's business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) ("Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another."). Complainant provides screenshots of the disputed domain name's resolving pay-per-click page with links titled "Chocolate Gifts", "Gourmet Chocolates", and "Chocolates – The Candy Co", all of which are directly related and competitive with Complainant. The Panel finds that this demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) and (iv), especially when viewed against the other facts of this case.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <callebaut.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: March 10, 2025