Case number | CAC-UDRP-101486 |
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Time of filing | 2017-03-30 13:50:20 |
Domain names | arla.site |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
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Complainant
Organization | Arla Foods Amba |
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Complainant representative
Organization | BrandIT GmbH |
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Respondent
Name | nashan |
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Other Legal Proceedings
None of which the Panel is aware.
Factual Background
The Complainant is a Danish company which is a global dairy company and co-operative with operations worldwide.
It is owned by 12,650 dairy farmers in seven countries. The company has operations worldwide, including throughout the Asia Pacific region and specifically in China, where it has an office in Beijing. The company has over 19,000 employees worldwide and reached global revenue of EUR 10.3 billion in 2015.
The Complainant is the owner of a series of registered trademark for ARLA in numerous of countries around the world.
For example, the International Trademark Registration Number IR 0731917 for ARLA which was issued by the World Intellectual Property Organisation on March 20, 2000, applies internationally including in China where the Respondent is apparently domiciled ( "the ARLA trademark").
The Complainant also relies on the Danish local trademark registration VR2000 01185 for ARLA FOODS, registered in 2000).
These trademark registrations predate the registration of the Disputed domain name.
The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term “Arla” and “Arla Foods” see for example <arla.com.cn> (created on 2002-12-16) <arlafoods.com> (created on 1999-10-01), < arla.com> (created on 1996-07-15), <arlafoods.co.uk> (created on 1999-10-01) and <arlafoods.net> (created on 2000-02-21).
The Complainant uses the domain names to connect to a website through which it informs potential customers about its trademarks and its products and services.
The Disputed domain name was registered by the Respondent on January 29, 2017. It does not presently resolve to an active website.
It is owned by 12,650 dairy farmers in seven countries. The company has operations worldwide, including throughout the Asia Pacific region and specifically in China, where it has an office in Beijing. The company has over 19,000 employees worldwide and reached global revenue of EUR 10.3 billion in 2015.
The Complainant is the owner of a series of registered trademark for ARLA in numerous of countries around the world.
For example, the International Trademark Registration Number IR 0731917 for ARLA which was issued by the World Intellectual Property Organisation on March 20, 2000, applies internationally including in China where the Respondent is apparently domiciled ( "the ARLA trademark").
The Complainant also relies on the Danish local trademark registration VR2000 01185 for ARLA FOODS, registered in 2000).
These trademark registrations predate the registration of the Disputed domain name.
The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term “Arla” and “Arla Foods” see for example <arla.com.cn> (created on 2002-12-16) <arlafoods.com> (created on 1999-10-01), < arla.com> (created on 1996-07-15), <arlafoods.co.uk> (created on 1999-10-01) and <arlafoods.net> (created on 2000-02-21).
The Complainant uses the domain names to connect to a website through which it informs potential customers about its trademarks and its products and services.
The Disputed domain name was registered by the Respondent on January 29, 2017. It does not presently resolve to an active website.
Parties Contentions
CONTENTIONS OF THE PARTIES
A. THE COMPLAINANT
LANGUAGE OF PROCEEDINGS REQUEST
The Complainant request that the language of the proceeding should be English based on the following facts:
a) The disputed domain name includes the Complainant’s mark ARLA. Complainant is a Danish company whose business language is English;
b) considering that the Respondent has registered many domains with words in English, it is unlikely that the Respondent is not familiar with the English language.
c) the Disputed domain name is in Latin script rather than Chinese script.
In addition, the Respondent has chosen to register the Disputed domain name under the Top Level domain “.site” which is a commercial TLD and an English term meaning “website”, applicable to a broader audience than merely China.
If the Chinese language were made the language of the proceeding there would be trouble and delay and no discernible benefit to the parties.
ABOUT COMPLAINANT AND THE BRAND ARLA (“Arla”)
Arla is a global dairy company and co-operative owned by 12,650 dairy farmers in seven countries, with operations worldwide, including in China and over 19,000 employees worldwide.
Overview of the Complainant’s trademark registrations.
The Complainant is the owner of the registered trademark ARLA as a word mark and device in numerous of countries all over the world, including in China where the Respondent resides as well as the word mark ARLA FOODS.
See as an example the International Trademark Registration Number IR 0731917 (registered in 2000), and the Danish local trademark registration VR2000 01185 (registered in 2000).
The registrations are more particularly described in
(a) Trademark Registration no. Class Date of Registration Type of Registration
ARLA (word mark) IR 0731917 01, 05, 29, 30, 31, 32 20/03/2000 International registration (incl China).
(b) ARLA FOODS VR2000 01185 01,05,29,30,31 y 32 06/03/2000 Local registration in Denmark.
The Complainant’s trademark registrations predate the registration of the Disputed domain name by the Respondent.
Due to extensive use, advertising and revenue associated with its trademarks worldwide, Complainant enjoys a high degree of renown around the world, including in China where the Respondent is located.
The Complainant’s trademark rights have previously been recognised in several UDRP decisions, namely WIPO Case no: D2016-1205, Arla Foods Amba v Frederik enghall concerning the domain name <arla.one>; WIPO Case no: DMX2016-0012, Arla Foods Amba v Zhao Ke concerning the domain name <arlafoods.mx>; WIPO Case no: DAU2016-0001, Arla Foods Amba v. Graytech Hosting Pty Ltd. ABN 49106229476, Elizabeth Rose concerning the domain name <arlafoods.com.au>; WIPO Case no: DME2015-0010 Arla Foods amba v. Ye Li concerning the domain name <arlafoods.me>; and Case no. 101058 Arla Foods amba v. VistaPrint Technologies Ltd concerning the domain name <Arlaf00ds.com>.
The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term “Arla” and “Arla Foods”; see for example, <arla.com.cn> (created on 2002-12-16) <arlafoods.com> (created on 1999-10-01), < arla.com> (created on 1996-07-15), <arlafoods.co.uk> (created on 1999-10-01) and <arlafoods.net> (created on 2000-02-21).
The Complainant is using the domain names to connect to a website through which it informs potential customers about its trademarks and its products and services.
LEGAL GROUNDS:
i) THE DOMAIN NAME IS CONFUSINGLY SIMILAR TO A TRADEMARK IN WHICH THE COMPLAINANT HAS RIGHTS
The Disputed domain name <arla.site> was registered on January 29, 2017.
It directly and entirely incorporates Complainant’s well-known, registered trademark ARLA. The addition of the generic Top-Level Domains (gTLD) “.site”, meaning “website”, does not add any distinctiveness to the Domain Name. The Disputed domain name incorporates the ARLA trademark coupled with the word “.site”. That term is therefore closely connected to the Complainant’s marketing efforts online and gives the impression that the Respondent is somehow affiliated with the Complainant, and that the Respondent is somehow doing business using Complainant`s trademark. See, WIPO Overview on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2., as well as the decision in International Business Machines Corporation v. Sledge, Inc. / Frank Sledge WIPO Case No. D2014-0581 where the Panel stated the following “In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test”.
This reasoning should apply here and the Disputed domain name should be considered as being identical to the registered trademark ARLA.
ii) THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DOMAIN NAME
The Respondent is not commonly known by the Disputed domain name. The WHOIS information giving “nashan” as the registrant is the only evidence in the WHOIS record, which relates the Respondent to the Disputed domain name.
The Respondent has not used the Disputed domain name in connection with a bona fide offering of goods or services.
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 intention of the Respondent is 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, with a print screen on the Disputed domain name from March 28, 2017. 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. Moreover, the Complainant had never authorized the Respondent to use its trademark in any form.
The Respondent has been granted several opportunities to present any compelling arguments that it has rights in the Disputed domain name but has failed to do so.
iii) THE DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH
THE DOMAIN NAME WAS REGISTERED IN BAD FAITH
The Complainant’s registered trademarks predate the registration of the Disputed domain name and the Respondent has never been authorized by the Complainant to register the Disputed domain name. It is inconceivable that the unique combination of “arla” and “site” in the Disputed domain name is not a deliberate and calculated attempt to benefit improperly from the Complainant’s rights in the ARLA mark.
THE DOMAIN NAME IS BEING USED IN BAD FAITH
The Complainant tried to contact the Respondent on February 27, 2017 through a cease and desist letter. A reply was received asking for $800 to transfer the domain name. This conduct has been considered in previous cases as additional evidence of bad faith due to the Respondent´s intention to profit unduly from the Complainant´s rights; see WIPO Case No. D2016-0771 Facebook, Inc. vs. Domain Admin. Privacy Protection Service Inc. d/b/a Privacy Protection.org/ Ông Trần Huỳnh Lâm.
Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.
THE WEBSITE
As noted previously, the Disputed domain name currently does not resolve to an active website which the Complainant submits is a form of passive holding, showing bad faith.
Some Panels have found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name. See, Telstra Corporation Limited v. Nuclear Marshmellows WIPO Case No. D2000-0003. The Respondent has registered the Disputed domain name in bad faith by intentionally adopting Complainant’s widely known mark in violation of the Complainant’s rights.
Further, the inaction in relation to a Disputed domain name registration can also constitute a Disputed domain name being used in bad faith and any attempt to use the Disputed domain name actively would lead to confusion as to the source, sponsorship of the Respondent´s web site among internet users who might believe that the web site is owned or in somehow associated with the Complainant.
Finally, the Complainant’s International and Chinese trademark registrations predate the Respondent’s Disputed domain name registration and the cease and desist letter was answered with a price for the transfer in excess of reasonable out of pocket expenses.
PATTERN OF CONDUCT
The Respondent has engaged in a pattern of conduct showing bad faith. A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks.
The Respondent using its official email address 6360665@qq.com, as indicated in WHOIS Lookup record, has registered aprox. 612 domain names including well-known brands such as e.g. <alfaromeo.news>, <balenciaga.news>, <biotherm.news> and <calvinklein.site>.
Such pattern of abusive conduct constitutes evidence of bad faith according to Paragraph (6) (ii) of the Policy and this behaviour was declared as bad faith registration in WIPO case No. D2015-1932 Bayer AG of Leverkusen v. huang cheng of Shanghai and WIPO Case No DME2015-0010, Arla Foods amba v Ye Li, involving the domain <arlafoods.me>, the Panel stated, on facts similar to those in the present case. Further, the Panel considers it likely that the Respondent was aware of the Complainant's well-known and distinctive trademarks ARLA and ARLA FOODS at the time of registration of the Disputed domain name. The Complainant's trademark ARLA is registered in China, which is the Respondent's place of residence, and the Complainant was conducting business in China under the trademarks when the Respondent registered the Disputed domain name. The Panel therefore finds that the Respondent’s registration of the Disputed domain name was in bad faith.
Moreover, the Respondent took 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.
The Complainant submits that the Respondent intentionally chose the Disputed domain name based on a registered and well-known trademark solely to use it for non-legitimate purposes. The conduct of the Respondent in registering domains incorporating other well-known trademarks demonstrates systematic bad faith behaviour.
To summarize, the trademark ARLA is a well-known mark worldwide, including in China where the Respondent is located. The Respondent bears no relationship to the trademarks and the Disputed domain name has no other meaning except for referring to the Complainant's name and trademark. There is no way in which the Disputed domain name could be used legitimately by the Respondent. Inference of bad faith registration and use of the Disputed domain name is also given by the fact that the Respondent replied to the Complainant’s cease and desist letter requesting an unreasonably high price for the Disputed domain name, namely $800.
Further, the Disputed domain name is being passively held, an additional element of bad faith in accordance with the applicable cases described in this Complaint.
Finally, the Respondent has shown a bad faith pattern of conduct through the registration of hundreds of domain names containing other well-known marks.
Consequently, the Respondent should be considered to have registered and to be using the Disputed domain name in bad faith.
B. RESPONDENT
THE RESPONDENT DID NOT FILE A RESPONSE IN THIS PROCEEDING
The Panel notes the observations in the recent decision in similar circumstances in Case No 100053, Enterprise Rent-a-Car Company v. Blupea c/o Janepanas, Sirinarin and will therefore decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules. It is also noted in that decision that it was said in Enterprise Rent-A-Car Company v. Marco Costa, NAF case No. 908572, that “the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory”. The Panel will therefore proceed along those lines.
A. THE COMPLAINANT
LANGUAGE OF PROCEEDINGS REQUEST
The Complainant request that the language of the proceeding should be English based on the following facts:
a) The disputed domain name includes the Complainant’s mark ARLA. Complainant is a Danish company whose business language is English;
b) considering that the Respondent has registered many domains with words in English, it is unlikely that the Respondent is not familiar with the English language.
c) the Disputed domain name is in Latin script rather than Chinese script.
In addition, the Respondent has chosen to register the Disputed domain name under the Top Level domain “.site” which is a commercial TLD and an English term meaning “website”, applicable to a broader audience than merely China.
If the Chinese language were made the language of the proceeding there would be trouble and delay and no discernible benefit to the parties.
ABOUT COMPLAINANT AND THE BRAND ARLA (“Arla”)
Arla is a global dairy company and co-operative owned by 12,650 dairy farmers in seven countries, with operations worldwide, including in China and over 19,000 employees worldwide.
Overview of the Complainant’s trademark registrations.
The Complainant is the owner of the registered trademark ARLA as a word mark and device in numerous of countries all over the world, including in China where the Respondent resides as well as the word mark ARLA FOODS.
See as an example the International Trademark Registration Number IR 0731917 (registered in 2000), and the Danish local trademark registration VR2000 01185 (registered in 2000).
The registrations are more particularly described in
(a) Trademark Registration no. Class Date of Registration Type of Registration
ARLA (word mark) IR 0731917 01, 05, 29, 30, 31, 32 20/03/2000 International registration (incl China).
(b) ARLA FOODS VR2000 01185 01,05,29,30,31 y 32 06/03/2000 Local registration in Denmark.
The Complainant’s trademark registrations predate the registration of the Disputed domain name by the Respondent.
Due to extensive use, advertising and revenue associated with its trademarks worldwide, Complainant enjoys a high degree of renown around the world, including in China where the Respondent is located.
The Complainant’s trademark rights have previously been recognised in several UDRP decisions, namely WIPO Case no: D2016-1205, Arla Foods Amba v Frederik enghall concerning the domain name <arla.one>; WIPO Case no: DMX2016-0012, Arla Foods Amba v Zhao Ke concerning the domain name <arlafoods.mx>; WIPO Case no: DAU2016-0001, Arla Foods Amba v. Graytech Hosting Pty Ltd. ABN 49106229476, Elizabeth Rose concerning the domain name <arlafoods.com.au>; WIPO Case no: DME2015-0010 Arla Foods amba v. Ye Li concerning the domain name <arlafoods.me>; and Case no. 101058 Arla Foods amba v. VistaPrint Technologies Ltd concerning the domain name <Arlaf00ds.com>.
The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term “Arla” and “Arla Foods”; see for example, <arla.com.cn> (created on 2002-12-16) <arlafoods.com> (created on 1999-10-01), < arla.com> (created on 1996-07-15), <arlafoods.co.uk> (created on 1999-10-01) and <arlafoods.net> (created on 2000-02-21).
The Complainant is using the domain names to connect to a website through which it informs potential customers about its trademarks and its products and services.
LEGAL GROUNDS:
i) THE DOMAIN NAME IS CONFUSINGLY SIMILAR TO A TRADEMARK IN WHICH THE COMPLAINANT HAS RIGHTS
The Disputed domain name <arla.site> was registered on January 29, 2017.
It directly and entirely incorporates Complainant’s well-known, registered trademark ARLA. The addition of the generic Top-Level Domains (gTLD) “.site”, meaning “website”, does not add any distinctiveness to the Domain Name. The Disputed domain name incorporates the ARLA trademark coupled with the word “.site”. That term is therefore closely connected to the Complainant’s marketing efforts online and gives the impression that the Respondent is somehow affiliated with the Complainant, and that the Respondent is somehow doing business using Complainant`s trademark. See, WIPO Overview on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2., as well as the decision in International Business Machines Corporation v. Sledge, Inc. / Frank Sledge WIPO Case No. D2014-0581 where the Panel stated the following “In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test”.
This reasoning should apply here and the Disputed domain name should be considered as being identical to the registered trademark ARLA.
ii) THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DOMAIN NAME
The Respondent is not commonly known by the Disputed domain name. The WHOIS information giving “nashan” as the registrant is the only evidence in the WHOIS record, which relates the Respondent to the Disputed domain name.
The Respondent has not used the Disputed domain name in connection with a bona fide offering of goods or services.
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 intention of the Respondent is 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, with a print screen on the Disputed domain name from March 28, 2017. 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. Moreover, the Complainant had never authorized the Respondent to use its trademark in any form.
The Respondent has been granted several opportunities to present any compelling arguments that it has rights in the Disputed domain name but has failed to do so.
iii) THE DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH
THE DOMAIN NAME WAS REGISTERED IN BAD FAITH
The Complainant’s registered trademarks predate the registration of the Disputed domain name and the Respondent has never been authorized by the Complainant to register the Disputed domain name. It is inconceivable that the unique combination of “arla” and “site” in the Disputed domain name is not a deliberate and calculated attempt to benefit improperly from the Complainant’s rights in the ARLA mark.
THE DOMAIN NAME IS BEING USED IN BAD FAITH
The Complainant tried to contact the Respondent on February 27, 2017 through a cease and desist letter. A reply was received asking for $800 to transfer the domain name. This conduct has been considered in previous cases as additional evidence of bad faith due to the Respondent´s intention to profit unduly from the Complainant´s rights; see WIPO Case No. D2016-0771 Facebook, Inc. vs. Domain Admin. Privacy Protection Service Inc. d/b/a Privacy Protection.org/ Ông Trần Huỳnh Lâm.
Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.
THE WEBSITE
As noted previously, the Disputed domain name currently does not resolve to an active website which the Complainant submits is a form of passive holding, showing bad faith.
Some Panels have found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name. See, Telstra Corporation Limited v. Nuclear Marshmellows WIPO Case No. D2000-0003. The Respondent has registered the Disputed domain name in bad faith by intentionally adopting Complainant’s widely known mark in violation of the Complainant’s rights.
Further, the inaction in relation to a Disputed domain name registration can also constitute a Disputed domain name being used in bad faith and any attempt to use the Disputed domain name actively would lead to confusion as to the source, sponsorship of the Respondent´s web site among internet users who might believe that the web site is owned or in somehow associated with the Complainant.
Finally, the Complainant’s International and Chinese trademark registrations predate the Respondent’s Disputed domain name registration and the cease and desist letter was answered with a price for the transfer in excess of reasonable out of pocket expenses.
PATTERN OF CONDUCT
The Respondent has engaged in a pattern of conduct showing bad faith. A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks.
The Respondent using its official email address 6360665@qq.com, as indicated in WHOIS Lookup record, has registered aprox. 612 domain names including well-known brands such as e.g. <alfaromeo.news>, <balenciaga.news>, <biotherm.news> and <calvinklein.site>.
Such pattern of abusive conduct constitutes evidence of bad faith according to Paragraph (6) (ii) of the Policy and this behaviour was declared as bad faith registration in WIPO case No. D2015-1932 Bayer AG of Leverkusen v. huang cheng of Shanghai and WIPO Case No DME2015-0010, Arla Foods amba v Ye Li, involving the domain <arlafoods.me>, the Panel stated, on facts similar to those in the present case. Further, the Panel considers it likely that the Respondent was aware of the Complainant's well-known and distinctive trademarks ARLA and ARLA FOODS at the time of registration of the Disputed domain name. The Complainant's trademark ARLA is registered in China, which is the Respondent's place of residence, and the Complainant was conducting business in China under the trademarks when the Respondent registered the Disputed domain name. The Panel therefore finds that the Respondent’s registration of the Disputed domain name was in bad faith.
Moreover, the Respondent took 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.
The Complainant submits that the Respondent intentionally chose the Disputed domain name based on a registered and well-known trademark solely to use it for non-legitimate purposes. The conduct of the Respondent in registering domains incorporating other well-known trademarks demonstrates systematic bad faith behaviour.
To summarize, the trademark ARLA is a well-known mark worldwide, including in China where the Respondent is located. The Respondent bears no relationship to the trademarks and the Disputed domain name has no other meaning except for referring to the Complainant's name and trademark. There is no way in which the Disputed domain name could be used legitimately by the Respondent. Inference of bad faith registration and use of the Disputed domain name is also given by the fact that the Respondent replied to the Complainant’s cease and desist letter requesting an unreasonably high price for the Disputed domain name, namely $800.
Further, the Disputed domain name is being passively held, an additional element of bad faith in accordance with the applicable cases described in this Complaint.
Finally, the Respondent has shown a bad faith pattern of conduct through the registration of hundreds of domain names containing other well-known marks.
Consequently, the Respondent should be considered to have registered and to be using the Disputed domain name in bad faith.
B. RESPONDENT
THE RESPONDENT DID NOT FILE A RESPONSE IN THIS PROCEEDING
The Panel notes the observations in the recent decision in similar circumstances in Case No 100053, Enterprise Rent-a-Car Company v. Blupea c/o Janepanas, Sirinarin and will therefore decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules. It is also noted in that decision that it was said in Enterprise Rent-A-Car Company v. Marco Costa, NAF case No. 908572, that “the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory”. The Panel will therefore proceed along those lines.
Rights
The Complainant has, to the satisfaction of the Panel, shown the Disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
No Rights or Legitimate Interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).
Bad Faith
The Complainant has, to the satisfaction of the Panel, shown the Disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
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.
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.
For all the reasons stated above, the Complaint is
Accepted
and the disputed domain name(s) is (are) to be
- ARLA.SITE: Transferred
PANELLISTS
Name | The Hon. Neil Brown, QC |
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Date of Panel Decision
2017-05-02
Publish the Decision