Paragraph 4 (a) of the Policy requires the Complainant to prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name.
(iii) The disputed domain name has been registered and used in bad faith.
A. Identical or confusingly similar
The Complainant submits that in previous decisions, ARLA and ARLA FOODS have been considered well-known trade marks, for example WIPO Case no: DAU2016-0001 concerning <arlafoods.com.au>; WIPO Case no: DME2015-0010 concerning <arlafoods.me>; and CAC Case no. 101058 concerning <arlafoods.com>.
It is well established that the generic top level suffix.com may be disregarded when considering whether a disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
The Panel is satisfied that the Complainant is the owner of the registered trade marks ARLA and ARLA FOODS, which predate the registration of the disputed domain name. The disputed domain name incorporates entirely the Complainant’s the well-known trade mark ARLA FOODS. The addition of the geographic identifier “UK” does not prevent the disputed domain name being confusingly similar to the Complainant's trade mark ARLA FOODS.
The Panel finds that the disputed domain name is confusingly similar the Complainant's trade mark ARLA FOODS, and that the requirements of paragraph 4(a)(i) of the Policy have been met.
B. No rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name and states that:
(i) The Respondent is not commonly known by the disputed domain name.
(ii) The Respondent has not shown, either by the content of the website or its use of the disputed domain name, that the disputed domain name has or will be used in connection with a bona fide offering of goods or services.
(iii) The terms ARLA and ARLA FOODS have become a distinctive identifiers associated with the Complainant and that the Respondent's intention in registering the disputed domain name is to take advantage of an association with the Complainant’s business.
(iv) The disputed domain name is pointing to pay-per-click (PPC) websites where Internet visitors find related links to the Complainant’s products and trade marks.
(v) As stated in WIPO case No. D2016-0394 Facebook, Inc. WhatsApp, Inc. vs. Domain Manager, NA: “… it is by now well established that PPC parking pages built around a trade mark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii)”.
The Complainant has established a prima facie case that the Respondent has not rights or legitimate interests in the disputed domain name. The burden of proof now shifts to the Respondent. The Respondent has not filed a Response nor disputed any of the Complainant's submissions. The Respondent has made no claims to neither having any relevant prior rights of its own, or to having become commonly known by the disputed domain name. There is no evidence that the Respondent has used or has been preparing to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use, without intent for commercial gain.
The Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been met.
C. Registered and used in bad faith
The Complainant’s well-known trade marks, ARLA and ARLA FOODS, predate the Respondent's registration of the disputed domain name. The Panel finds that it is highly unlikely that the Respondent was unaware of the Complainant's rights when it the registered the disputed domain name.
The Panels agrees with the Complainant that registering the disputed domain name, which combines “UK” with the Complainant's trade mark ARLA FOODS, appears to be a calculated attempt by the Respondent to improperly benefit from the Complainant’s rights.
On 21 November 2017, in response to the Complainant's cease and desist letter, the Respondent replied as follows: “Hi I no longer own this domain. Apologies for the confusion”. On 27 November 2017, the Whois record was changed replacing the Registrant Name, Admin Name and Tech Name as well as the phone and e-mail details with "*" characters, rather than legitimate contact information. The Panel finds that effectively removing the contact information within the Whois database, by replacing it "*" characters, is further evidence of bad faith on the part of the Respondent.
The website using the disputed domain name includes a link "Arla Food Jobs", which points to a website with a jobs notice board that appears to be a pay-per-click website. The Panel finds the Respondent to be taking advantage of the ARLA FOOD trade mark by intentionally attempting to attract visitors to the its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website (see paragraph 4(b)(iv) of the Policy).
The Panel finds that these cumulative factors clearly demonstrate that the Respondent has registered and has used the disputed domain name in bad faith and that requirements of paragraph 4(a)(iii) of the Policy have been met.
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