This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers ( “ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.
A. LANGUAGE OF PROCEEDINGS REQUEST:
The Panel has carefully considered the Complainant's request that the language of the proceeding should be English. The Complainant has made out a strong case in support of that request. Accordingly the Panel in the exercise of its discretion finds that the language of the proceeding should be English.
B. ADMINISTRATIVE DEFICIENCY
By notification dated April 3, 2017 and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that:
The Complainant was required to add the Respondent's fax number in to the Complaint (see Registrar Verification submitted in Nonstandard Communication form dated 2017-04-03 13:13:41)
On April 3, 2017, the Complainant filed an Amended Complaint and the CAC determined that in view of the amendments so made, the Complaint should be admitted to proceed further in the Administrative Proceeding.
The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiency has been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.
C. SUBSTANTIVE MATTERS
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the onus is on the Complainant to make out its case and past UDRP panels have consistently said that the Complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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 and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Complainant has adduced evidence that the Panel accepts that it is the registered owner of the ARLA trademarks referred to above and that as such it has rights in those marks.
The Panel finds that the Disputed domain name <arla.site> is confusingly similar to the ARLA trademark for the following reasons.
The Disputed domain name consists of the entirety of the ARLA trademark to which the Respondent has added the new gTLD suffix “.site” to create its domain name. In this regard it has long been held by UDRP panels, as the Complainant submits, that the addition of a top level gTLD does not eliminate identity or confusing similarity that is otherwise present, as it is in the present case, and that it need not be taken into account; see Credit Industriel et Commercial SA v. XUBO, WIPO Case D2006-1268. That principle clearly applies to the present case as it involves a new gTLD. However, even if the top level gTLD were regarded as part of the Disputed domain name and that it should be taken into account in determining identity or confusing simialrity, it would make no difference to the result, as the objective bystander would assume that the Disputed domain name related to the website of the Complainant and its ARLA products.
Accordingly, the Disputed domain name is confusingly similar to the Complainant’s trademark and the Complainant has thus shown the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to the Respondent to establish its rights or legitimate interests in a Disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] 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
(ii) you [respondent] (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
(iii) you [respondent] 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the Disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will fail. It is also well-established that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests and that when such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed domain name. If the Respondent cannot do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed domain name.
That prima facie case is made out from the following considerations.
First, the Respondent chose for the Disputed domain name, without the Complainant’s authorization, the Complainant’s well-known ARLA trademark which it has had registered since 2000 and used in its business internationally for many years. By creating that Disputed domain name using the new gTLD “.site”, the Respondent falsely gave the impression to potential users of the internet that the Disputed domain name was an official domain name of the Complainant dealing with its website.
Secondly, the evidence shows that the Respondent is not associated with a business enterprise or a trademark in the name ARLA; the Respondent is not in any way related to the Complainant’s business, is not one of its agents and does not carry out any activity for or have any business with it. Moreover, the Complainant has never given any authorization to the Respondent or any other entity to make any use, nor apply for the registration of the Disputed domain name in issue. The Respondent is also not commonly known by the Disputed domain name. The WHOIS information “nashan” is the only evidence in the WHOIS record, which relates the Respondent to the Disputed domain name.
Moreover, the Panel agrees with and adopts the submissions of the Complainant that the Respondent has not used the Disputed domain name in connection with a bona fide offering of goods or services. As the Complainant submits, there is no evidence that the Respondent has a history of using, or is preparing to use, the Disputed domain name in connection with a bona fide offering of goods and services. The Panel agrees that the intention of the Respondent was to take advantage of an apparent association with the Complainant’s business which does not exist.
At the time of the filing of this Complaint, the Disputed domain name does not resolve to an active website, as is demonstrated by the Complainant’s evidence at Annex 5. The Respondent has made no claims to either having any relevant prior rights of its own, or to having become commonly known by the Disputed domain name. Clearly, the Respondent is not known by the Disputed domain name, nor does the Respondent claim to have made legitimate, non-commercial use of the Disputed domain name.
These facts give rise to the prima facie case made out by the Complainant.
The Respondent has not filed a Response or made any other answer to the claims of the Complainant and is in default.
Accordingly, the prima facie case has not been rebutted and the Complainant has made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the Respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that the Complainant has shown that the Respondent registered and used the Disputed domain name in bad faith, both having regard to the above specific criteria and also having regard to the notion of bad faith generally.
That is so for the following reasons.
First, it is hard to imagine how or why the Respondent would have conceived of a legitimate reason for registering the Disputed domain name, based as it is on the well-known ARLA trademark with which it has no valid connection. The Respondent’s motivation must therefore have been to do some harm to the Complainant, its trademark and the goods and services it provided under that trademark, in other words to register and use it in bad faith. The Respondent has not replied to the Complaint or provided a good explanation as to why the Panel should take a more charitable view of what is clearly a deliberate attempt to use the good name of the Complainant for the financial benefit of the Respondent.
Secondly, the Panel entirely agrees with the submission of the Complainant that, as the Complainant tried to contact the Respondent on February 27, 2017 through a cease and desist letter and as the Respondent then asked for $800 to transfer the domain, this itself amounts to bad faith registration and use within the express provisions of paragraph 4(b) (i) of the Policy. That view is supported by the decision in Facebook, Inc. vs. Domain Admin. Privacy Protection Service Inc. d/b/a Privacy Protection.org/ Ông Trần Huỳnh Lâm, WIPO Case No. D2016-0771.
Thirdly, this is clearly a case of passive holding of a domain name within the concept of Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. What has happened in the present case, in the view of the Panel, is that the Respondent has registered the Disputed domain name with a bad faith intention of adopting the Complainant’s widely known mark in violation of its rights and then to use it, not by creating a website, but by passively waiting until it could sell the Disputed domain name to the Complainant or a competitor, which it then attempted to do. That also brings the case squarely within paragraph 4 (b)(i) of the Policy.
Fourthly, although the Respondent has engaged in passive holding, the fact is that if the Disputed domain name is not transferred to the Complainant, the Respondent could activate the Disputed domain name and operate a website under the guise of its being a genuine Arla website, which brings the case within the provisions of paragraph4(b)(iv) of the Policy. That is so because the Respondent would be taking advantage of the ARLA trademark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or a product or service on the Respondent’s website or location.
Fifthly, the bad faith conduct of the Respondent is underlined by the fact that, as the Complainant has shown, the Respondent has registered many domain names based around prominent trademarks to which the Respondent could not have any rights. This conduct also indicates that the Respondent had actual knowledge of the ARLA trademark when it registered the Disputed domain name, as was noted in Arla Foods amba v Ye Li ( supra).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent’s registration of the Disputed domain name using the ARLA mark and in view of the conduct that Respondent has engaged in since it registered the Disputed domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
The Complainant has thus made out the third of the three elements that it must establish.
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