Decision for dispute CAC-UDRP-107838

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant has provided evidence of its ownership of registered trademark rights in the trademark ARLA in classes 1, 5, 29, 30, 31 and 32 in multiple jurisdictions, including the United States, the European Union and other countries. Such registrations include the following:

• US Trademark registration No. 3325019, registered on October 30, 2007;
• EU Trademark registration No. 001520899, registered on May 7, 2001;
• International trademark registration No. 731917, registered on March 20, 2000.

The registration dates of the trademarks predate the registration dates of the disputed domain names, <arlabio.com>, registered on September 20, 2024, <arlabio.net>, registered on September 20, 2024 and <arlabio.org>, registered on September 21, 2024.

The Complainant is also the owner of the domain names <arla.com>, registered on July 14, 1996, <arla.ph>, registered on August 31, 2001 and <arla.eu>, registered on June 1, 2006.

A. Complainant's Factual Allegations

The Complainant is the fifth-largest dairy company in the world and a cooperative owned by more than 12,500 dairy farmers. It was constituted in 2000, when the largest Danish dairy cooperative MD Foods merged with its Swedish counterpart Arla ekonomisk Förening. It employs around 21,895 full time employees and reached a global revenue of EUR 13.8 billion for the year 2024.

B. Respondent's Factual Allegations

The Respondent has defaulted in this UDRP administrative proceeding and has consequently made no factual allegations. The Respondent is Michael Olia, based at the address of 32932 Pacific Coast Hwy 14-151, Dana Point, California POSTAL CODE 92629 United States. The disputed domain names were registered by the Respondent, as confirmed by the Registrar. <arlabio.com> was registered on September 20, 2024, <arlabio.net> was registered on September 20, 2024 and <arlabio.org> was registered on September 21, 2024. At the time of filing of the Complaint, the disputed domain names resolved to inactive pages.

A. COMPLAINANT

The Complainant requests that the language of proceedings be English, as the language of the Registration Agreement is English, in accordance with Paragraph 11 of the UDRP Rules.

The Complainant's contentions can be summarized as follows:

I. The disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights

The Complainant contends that it is the owner of the registered trademark ARLA in numerous jurisdictions all over the world and the disputed domain names are identical or confusingly similar to its trademark ARLA. They exactly contain the Complainant's trade mark ARLA in its entirety with the addition of the term “bio”.

II. The Respondent has no rights or legitimate interests in respect of the disputed domain names

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names on the grounds: i) the disputed domain names were registered many years after the first registration of the Complainant’s trademarks; ii) the Complainant has not licensed or authorized the Respondent to register or use the disputed domain names nor is the Respondent affiliated to the Complainant in any form or has endorsed or sponsored the Respondent; iii) the Respondent is not commonly known by the disputed domain names and the terms “arla bio”; iv) the Respondent does not own any registered trademark including the disputed domain name terms “arla bio”; v) the Respondent has been granted an opportunity to present some compelling arguments that it has rights or legitimate interests in the disputed domain names, but has failed to do so.

III. The Respondent registered and is using the disputed domain names in bad faith

The Complainant contends that the Respondent registered the disputed domain names in bad faith on the grounds: i) the trademark ARLA is widely known and was registered in many countries, including in the United States, where the Respondent is located; ii) the Respondent knew the Complainant, as a search on a popular search engine for the terms “arla bio” would have inevitably led to the discovery of the Complainant.

The Complainant contends that the Respondent is using the disputed domain names in bad faith on the grounds: i) the disputed domain names incorporating the Complainant’s well-known trademark ARLA in its entirety with the addition of the term “bio” reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with the Complainant and its trademark ARLA; ii) the disputed domain names resolved to inactive pages with sponsored pay per click links; iii) the Complainant contacted the Respondent by a Cease and Desist Letter for transferring the domain names, but did not receive its reply; iv) the Respondent is trying to conceal its identity.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

B. RESPONDENT

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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).

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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

As the language of the registration agreement is English, the Complainant requests that the language of the proceedings be English. The Respondent did not respond to the issue of the language of the proceedings and did not reject the Complainant’s request. 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.

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Based on the above regulations under the Policy, what the Panel needs to do is to find out whether each and all one of the above-mentioned elements are established. If all the three elements are established, the Panel will make a decision in favor of the Complainant. If the three elements are not established, the claims by the Complainant shall be rejected. The Respondent did not submit the Response containing any argument against what the Complainant claimed and to show his intention to retain the disputed domain names as required by the Policy and the Rules. If the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. In view of the situation, the Panel cannot but make the decision based primarily upon the contentions and the accompanying exhibits by the Complainant, except where there is an exhibit proving to the contrary.

I. Identity or Confusing Similarity

Pursuant to Paragraph 4(a) (i) of the Policy, a Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A. Complainant has rights in a trademark or service mark

The Complainant has provided evidence of its ownership of registered trademark rights in the trademark ARLA in classes 1, 5, 29, 30, 31 and 32 in multiple jurisdictions, including the United States, the European Union and other countries. Such registrations include the following:

• US Trademark registration No. 3325019, registered on October 30, 2007;
• EU Trademark registration No. 001520899, registered on May 7, 2001;
• International Trademark registration No. 731917, registered on March 20, 2000.

The trademarks are still valid and their registration dates predate the registration date of the disputed domain names, i.e. September 20, 2024 and September 21, 2024. The Complainant therefore has rights in the trademark ARLA.

B. The disputed domain names should be identical or confusingly similar to the trademark or service mark

The disputed domain names contain the Complainant's trademark ARLA in its entirety with the addition of the term “bio”. WIPO Overview 3.0 paragraph 1.8 states that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on the assessment of the second and third elements”.

Previous panels have found that the addition of other terms would not prevent a finding of confusing similarity under the first element. This Panel cites a similar case involving the Complainant. In the case of <arlalogistics.org >, the Panel found that the addition of the generic term "logistics” is not sufficient to alter the overall impression of the designations as being connected with the Complainant's trademark and does not prevent a likelihood of confusion between the disputed domain name and the Complainant, its trademark and associated domain names.

In this case of <arlabio.com>, <arlabio.net> and <arlabio.org>, the “bio” is a term relevant to the Complainant as the Complainant has developed its own line of biological/organic products which uses the denomination ”ARLA BIO” on the corresponding packaging. This reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with the Complainant and its trademark.

As to the generic Top Level Domain “.com”, “net” and “org”, they are viewed as a standard registration requirement and as such can be disregarded for the purpose of assessing identity or confusing similarity. See WIPO Jurisprudential Overview 3.0, paragraph 1.11.1.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a) (i) of the Policy. Accordingly, the Complainant has proven that the first element required by paragraph 4(a) of the Policy is established.

II. Rights or Legitimate Interests of the Respondent

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names on the grounds: i) the disputed domain names were registered many years after the first registration of the Complainant’s trademarks; ii) the Complainant has not licensed or authorized the Respondent to register or use the disputed domain names nor is the Respondent affiliated to the Complainant in any form or has endorsed or sponsored the Respondent; iii) the Respondent is not commonly known by the disputed domain names and the terms “arla bio”; iv) the Respondent does not own any registered trademark including the disputed domain name terms “arla bio”; v) the Respondent has been granted an opportunity to present some compelling arguments that it has rights or legitimate interests in the disputed domain names, but has failed to do so.

Once the 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 disputed domain names. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. See WIPO Jurisprudential Overview 3.0 paragraph 2.1. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, the Respondent has failed to meet that burden. The Respondent did not submit any evidence to demonstrate any of the above circumstances. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven that the second element required by paragraph 4(a) of the Policy is established.

III. Bad Faith

Paragraph 4(a) (iii) of the Policy provides that the disputed domain name has been registered and is being used in bad faith.

A, The disputed domain names have been registered in bad faith

The Panel finds that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain names, considering the following circumstances:

• WIPO Jurisprudential Overview 3.0 mentions that noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. The Panel believes that before the registration of the disputed domain names, the Respondent had made searches for the wording ARLA and knew it was the trademark of the Complainant;
• The Complainant's evidences prove that the trademark ARLA is widely known and was registered in many countries, including in the United States, where the Respondent is located;
• The Complainant also enjoys a strong online presence and is very active on Social Media platforms (Facebook and Twitter) to promote its trademark, products and services;
• The Complainant has developed its own line of biological/organic products which uses the denomination “ARLA BIO” on the corresponding packaging. The disputed domain names incorporating the Complainant’s trademark ARLA with “bio” reflects the Respondent’s intention to create an association and likelihood of confusion with the Complainant and its trademark.

In view of the above circumstances, the Panel holds that the Respondent had knowledge of the Complainant’s trademark ARLA at the time of registration of the disputed domain names. As the disputed domain names would cause confusion to internet users as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, it should have avoided the registration, which is considered as good faith, rather it registering the disputed domain names. The Respondent deliberately sought to cause such confusion. Accordingly, the Panel finds that the disputed domain names have been registered in bad faith.

B. The disputed domain names are being used in bad faith

The disputed domain names resolved to an inactive page. WIPO Jurisprudential Overview 3.0 paragraph 3.3 mentions that from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

 See WIPO Case No. D2017-0246, <docmartens.xyz>, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc. See WIPO Case No. D2000-0003, <telstra.org>, Telstra Corporation Limited v. Nuclear Marshmallows.

 In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the disputed domain names is in bad faith. Such circumstances include all four circumstances mentioned in the Complainant's contention to support its argument that the disputed domain names are being used in bad faith.

Regarding the Complainant’s contention on bad faith, the Respondent should rebut it, but it did not make any response, which strengthened the Panel’s findings on its bad faith.

In view of all the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith according to paragraph 4(a) (iii) of the Policy. Therefore, the Complainant has proven that the third element required by paragraph 4(a) of the Policy is established.

Decision

For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain names, <arlabio.com>, <arlabio.net> and <arlabio.org> be transferred to the Complainant.