Tarkett GDL S.A. v Asad Ali, Diamond Furniture

WIPO Case No. DAE2025-0003

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tarkett GDL S.A. v. Asad Ali, Diamond Furniture

Case No. DAE2025-0003

1. The Parties

The Complainant is Tarkett GDL S.A., Luxembourg, represented by AtlantIP, France.

The Respondent is Asad Ali, Diamond Furniture, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <tarkettpvcflooring.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, the Respondent is listed as the registrant and providing the contact details
2025. On February 10, 2025, the Center transmitted by email to AE Domain Administration (.aeDA) a

request for registrant verification in connection with the disputed domain name. On February 13, 2025, AE

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute
Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name
Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name

Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the paragraph 5(a), the due date for Response was March 4, 2025. The Respondent did not submit any Response. The Respondent sent an email communication on February 19, 2025. Accordingly, the Center notified the Respondent’s Commencement of Panel Appointment on March 10, 2025.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on March 14, 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.

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4. Factual Background

The Complainant is a multinational specialized in flooring and owns trademark registrations for TARKETT worldwide, such as:

1.        European Union Trademark Registration No. 018652400, registered on June 17, 2022;

2.        United Kingdom Trademark Registration No. 709314, registered on July 29, 1952;

3.        International Trademark Registration No. 1737630, registered on April 21, 2023.

The disputed domain name was registered on December 6, 2023. The disputed domain name used to resolve to a website purporting to offer flooring services and currently resolves to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the
Complainant has rights. The disputed domain name incorporates the Complainant’s trademark in its entirety.
The addition of the term “pvcflooring” can be disregarded. The country code Top-Level Domain (“ccTLD”)

“.ae” can be disregarded.

name. The Respondent is not granted, assigned, licensed, sold or transferred any rights in the Complainant’s trademark. The Respondent does not hold any rights consisting of the denomination TARKETT and/or TARKETTPVCFLOORING and is not commonly known by the disputed domain name.	The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain with flooring services. The disputed domain name currently resolves to a parking page.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. name was used in connection with flooring services. The disputed domain name currently resolves to a parking page.
B. Respondent
In its email of February 19, 2025, the Respondent replied that it has taken down the website and that it has filed a request to take down and cancel the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established its ownership of the trademark TARKETT as the trademark is registered in the Complainant’s name.
The disputed domain name incorporates the Complainant’s trademark TARKETT in its entirety. It is established by prior UDRP[1] panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other terms are added as part of the disputed domain name. The addition of the term “pvcflooring” does not alter the fact that the disputed domain name is confusingly similar to the

[1] In light of the substantive and procedural similarities between the .aeDRP and the Uniform Domain Name Dispute Resolution Policy

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Complainant’s trademark. The disputed domain name remains confusingly similar to the Complainant’s
trademark. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”).

The ccTLD “.ae” should typically be ignored when assessing confusing similarity, as established by prior

UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the

Complainant and that the Complainant has satisfied paragraph 6(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 6(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant

asserts that the Respondent is not authorized by the Complainant to use its trademark and contends that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name is registered and being used in bad faith. The Complainant has established a prima facie case and the
burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed
domain name.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 6(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In fact, in their email, the Respondent accepted that it will no longer use the website and that it has requested cancelation of the disputed domain name.

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing
that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 6(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

The Respondent must have been aware of the Complainant and its trademark when it registered the
disputed domain name as the Complainant’s trademark has been registered for several decades prior to the
creation of the disputed domain name. Additionally, the nature of the disputed domain name suggests
affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The use of the word
“flooring” reinforces the impression that the disputed domain name is associated with the Complainant as the
Complainant operates in the field of flooring.

The website to which the disputed domain name resolves is a parking page. This may be a case of passive holding. The Panel notes also that the Complainant has provided evidence that the domain name was resolving to a website in connection with flooring services which was evidence of bad faith use as per paragraph 6(b)(iv) of the Policy.

Based on the submissions in the present proceeding and in the absence of any claims or evidence from the could be made by the Respondent.

Furthermore, the Respondent accepted that it will no longer use the website and that it has requested cancelation of the disputed domain name.

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Such conduct falls squarely within the concept of registration or use in bad faith of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 6(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tarkettpvcflooring.ae> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Panelist
Date: March 20, 2025

(“UDRP”), the Panel has cited decisions under the UDRP and the WIPO Overview 3.0, where appropriate.