Barnes Europe Consulting Kft., Heidi Barnes-Watson v Lorraine Jolicoeur

WIPO Case No. D2025-3508

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Barnes Europe Consulting Kft., Heidi Barnes-Watson v. Lorraine Jolicoeur

Case No. D2025-3508

1. The Parties

The Complainant is Barnes Europe Consulting Kft., Hungary (the “First Complainant”) and Heidi Barnes-

Watson, United States of America (the “Second Complainant”), represented by MIIP MADE IN IP, France.

The Respondent is Lorraine Jolicoeur, Canada.

2. The Domain Name and Registrar

The disputed domain name <barnes-internatoinal.com> is registered with Wild West Domains, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2025.
On August 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On September 2, 2025, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on September 3,
2025, 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

September 4, 2025.

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 September 8, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2025.

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The Center appointed Torsten Bettinger as the sole panelist in this matter on October 2, 2025. 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 described itself as well-known real estate agents doing business in respect of high end agencies and offices.
properties in a number of regions, including Europe and the United States of America. They own the domain
<barnes-international.com> (registered July 25, 2007), which redirects to BARNES’s official website. The

The Complainant has established joined ownership of several marks that they use in connection with the real estate business, including

- French trademark registration BARNES No. 3861673, registered on September 26, 2011;

- International trademark registration BARNES No. 1114909, registered on March 13, 2012;

- United Kingdom trademark registration BARNES No. UK00801114909, registered on March 26, 2013.

According to the WhoIs information, the disputed domain name was registered on May 29, 2025. The evidence the Complainant submitted shows the disputed domain name is not being used with an active website but instead resolved to an “error” page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name, and so requests transfer to the First Complainant.

With regard to the requirement of “identity or confusing similarity between the trademark and the domain name” pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that:

- the disputed domain name <barnes-internatoinal.com> wholly incorporates the Complainant’s mark

BARNES in leading position and appends a hyphen plus a typographical error of “international”
(“internatoinal”),

- the addition of descriptive/misspelled terms does not prevent a finding of confusing similarity where the mark remains recognizable.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the
Complainant submitted that the:

- searches show the Respondent holds no trademark rights in “BARNES-INTERNATOINAL” and a Google search returns results tied to the Complainant, not the Respondent,

- the Complainant has not licensed or permitted any use of their marks,

- the disputed domain name does not resolve to an active site,

- the composition—BARNES + misspelled “international”—suggests sponsorship or endorsement and cannot constitute fair use in these circumstances,

- given the mark’s reputation, any plausible use would free-ride on the Complainant’s goodwill and mislead consumers.

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Finally, with regard to the disputed domain name having been registered and being used in bad faith, the
Complainant argues that:

- BARNES is a widely known luxury real-estate brand with a global footprint, extensive online presence, and prior UDRP findings recognizing its notoriety;

- given this reputation and the disputed domain name’s composition, the Respondent knew or should have known of the Complainant’s rights when registering the name;

- the fact that the disputed domain does not resolve to an active site (passive holding), does not

preclude a finding of bad faith;

- the fact that MX records are active, enabling deceptive email (e.g., [...]@barnes-internatoinal.com) is a supports a finding of bad-faith use.

B. Respondent

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

6. Discussion and Findings

A. Consolidation of Multiple Complainants

The First Complainant and the Second Complainant seek consolidation. Under section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), panels consider whether (i) the complainants share a specific common grievance against the respondent or have been affected by the respondent’s common course of conduct in a similar manner, and (ii) consolidation would be fair and procedurally efficient.

Having reviewed the record, the Panel places particular weight on the evidence that the Complainants jointly own the trademarks invoked. On this basis, the Panel finds that the Respondent’s conduct targets both the Complainants and gives rise to common grievances concerning the use of the BARNES trademarks in the disputed domain name. The Panel further determines that consolidation would be equitable to all parties and would promote procedural economy.

Accordingly, the Panel grants the Complainants’ request for consolidation.

B. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name wholly incorporates the Complainant’s mark BARNES in leading and undistorted position. The additional element “internatoinal” is an obvious misspelling of the descriptive term “international” and, together with the hyphen, does not prevent a finding of confusing similarity where the relevant mark remains clearly recognizable.

Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

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C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The record shows that the Complainant’s trademark registrations predate the Respondent’s registration of
the disputed domain name. The Complainant has not licensed, approved, or otherwise consented to the
Respondent’s registration or use of its mark in the disputed domain name.

On this basis, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests.

The disputed domain name does not resolve to an active website. There is no evidence that, prior to notice of the dispute, the Respondent used or prepared to use the domain name in connection with a bona fide offering of goods or services.

Although afforded the opportunity, the Respondent has not come forward with any circumstances under paragraph 4(c) of the Policy (or otherwise) to demonstrate rights or legitimate interests.

The Respondent has provided no evidence that it owns any relevant trademark, is commonly known by the disputed domain name, or intends to make a legitimate noncommercial or fair use of the domain name without intent for commercial gain or to misleadingly divert consumers.

In the absence of any evidence rebutting the Complainant’s prima facie case, the Panel finds that the paragraph 4(a)(ii) of the Policy is therefore satisfied.

D. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

1. Bad faith registration

The Complainant owns multiple BARNES trademark registrations that long predate the registration of the disputed domain name. The mark is distinctive in the real-estate sector.

The disputed domain name reproduces the BARNES mark in its entirety and appends a misspelled version of “international” (“internatoinal”), closely evoking the Complainant’s “BARNES International” branding and domain name.

Panels consistently find that such compositions—incorporating a complainant’s mark plus a descriptive term
employing a misspelling—target the trademark owner and render coincidence implausible. See
WIPO Overview 3.0, section 3.2.1.

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Furthermore, the disputed domain name is configured with MX records, a setup panels routinely associate with potential impersonation or phishing schemes, particularly where the domain name targets a well-known brand and a complainant’s domain name. This supports an inference of the Respondent’s knowledge of the Complainant and intent to exploit the mark.

The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.

2. Bad faith Use

It is well established that passive holding can, in appropriate circumstances, constitute bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483;

WIPO Overview 3.0, section 3.3. Relevant factors present here include:

- the distinctiveness and reputation of the Complainant’s BARNES mark;

- the Respondent’s failure to submit a response or adduce any evidence of actual or contemplated good-faith use; and

- the implausibility of any good-faith use of a domain name that combines the BARNES mark with a misspelled reference to the Complainant’s international brand and domain name.

The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.

As noted above, based on the record in this proceeding, the Panel is satisfied that the Complainant’s
BARNES mark is distinctive and widely-known.

Furthermore, the Respondent has not replied to the Complaint nor provided any evidence of actual or contemplated good faith use of the disputed domain name.

The totality of circumstances—including the targeted composition with misspelled additional term, the email-
enablement, the lack of any credible good-faith use, and the passive holding—establishes that the Domain

Name was registered and is being used in bad faith within the meaning of paragraph 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 name <barnes-internatoinal.com> be transferred to the First Complainant, Barnes Europe Consulting Kft.

/Torsten Bettinger/
Torsten Bettinger
Sole Panelist
Date October 15, 2025