Decision for dispute CAC-UDRP-108040

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

The Complaint, carrying out business under the company or trade name Arla Foods, is owner of the following trademarks:

• the International trademark ARLA (word) No. 731917, registered since 20 March 2000 in classes 1, 5, 29, 30, 31 and 32, designating, among the others, the United States;
• the International trademark ARLA (device) No. 990596, registered since 8 September 2008 in classes 1, 5, 29, 30, 31 and 32, designating, among the others, the United States;
• the EU trademark registration ARLA (word) No. 018031231, registered since 6 September 2019 in classes 1, 5, 9, 16, 29, 30, 32, 35, 39, 41, 42, 43, 44 and 45.

The Complainant also owns multiple domain names incorporating its ARLA mark, including <arla.com>, registered on 15 July 1996, and <arlausa.com>, registered on 2 August 2006. Both domain names resolve to the Complainant’s official website.

The Complainant's above-mentioned rights are hereinafter collectively referred to as the ARLA Trademark.

The Complainant is the fifth-largest dairy company in the world and a cooperative owned by more than 12,500 dairy farmers. It was established in 2000 through the merger of the Danish dairy cooperative MD Foods and the Swedish cooperative Arla ekonomisk Förening. The Complainant employs approximately 21,895 full-time employees and reported global revenues of EUR 13.8 billion in 2024.

The Complainant’s products are recognized by consumers worldwide as a result of substantial and continuous investments in marketing, brand development, and product quality. The Complainant commercializes a wide range of dairy products under several well-known trademarks, including ARLA, LURPAK, CASTELLO and APETINA, among others. Through extensive use, advertising, and commercial success, these marks have acquired a high degree of renown globally.

The Complainant also maintains a strong online presence through its official website and social media channels. It furthermore has a significant business footprint in the United States, where it operates through Arla Foods Inc., USA, and Arla Foods Hollandtown Dairy.

The Respondent is an individual residing in the United States.

The disputed domain name was registered on 15 April 2024 and does not resolve to any active website.

The Complainant sent a cease and desist letter to the Respondent without obtaining response.

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

No administratively compliant Response has been filed.

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).

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).

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).

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.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

I. THE COMPLAINANT'S RIGHTS AND THE CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK

The Complainant has demonstrated rights in the ARLA Trademark.

The disputed domain name incorporates the element "arla" in its entirety, followed by the generic term "redo" (meaning "ready" in Swedish), and ending with the ".com" top-level domain (TLD). The ARLA Trademark is therefore clearly recognizable within the disputed domain name.

Under the Policy, the test for identity or confusing similarity is a straightforward comparison between the disputed domain name and the relevant trademark. Where a domain name contains a complainant's mark in its entirety, or where the mark constitutes a dominant and recognizable element of the domain name, confusing similarity is generally established for the purposes of paragraph 4(a)(i) of the Policy. The addition of generic, descriptive, or otherwise non-distinctive terms—such as "redo"—does not prevent a finding of confusing similarity. Likewise, the TLD, in this case ".com", is disregarded as a standard technical requirement of registration.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's ARLA Trademark. The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy.

II. THE RESPONDENT'S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once a prima facie case is established, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests.

The Complainant asserts that it has no relationship whatsoever with the Respondent. The Respondent has never been authorised, expressly or impliedly, by the Complainant to use the ARLA Trademark or to register or use the disputed domain name.

The Respondent has been identified by the Registrar as Neal Ryan, residing in the US. There is no evidence that the Respondent, whether as an individual, business, or other organisation, has been commonly known by the disputed domain name or has acquired any rights in a trademark or trade name corresponding to it. 

The disputed domain name, registered on 15 April 2024, incorporate the ARLA Trademark in its entirety together with a generic term, and is thus confusingly similar to the Complainant's mark.

UDRP panels have consistently held that domain names identical or confusingly similar to a complainant's trademark carry a high risk of implied affiliation. The mere addition of descriptive, geographic, pejorative, or otherwise non-distinctive terms does not avoid a finding of confusing similarity or establish rights or legitimate interests. Such a composition does not normally constitute fair use.

Moreover, the Complainant has submitted evidence that the disputed domain name does not resolve to an active website.

The Panel finds no indication that, prior to notice of the dispute, the Respondent used or prepared to use the disputed domain name, or any corresponding name, in connection with a bona fide offering of goods or services. Nor is there any evidence that the Respondent is making legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the ARLA Trademark.

While the Complainant has established its prima facie case, the Respondent has not submitted a Response to the Complaint and, thus, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel concludes that the Complainant has met the second requirement under paragraph 4(a) of the Policy, and finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

III. THE REGISTRATION AND THE USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

The Complainant has sufficiently demonstrated that it holds rights in the ARLA Trademark, which predate the registration of the disputed domain name and remain valid and enforceable in the jurisdiction where the Respondent is located. The Complainant's mark is well known, as recognized in previous UDRP decisions, including Arla Foods Amba v. Fredrik Enghall, WIPO Case No. D2016-1205 and Arla Foods Amba v. Nashan, CAC Case No. 101486.

The disputed domain name is confusingly similar to the ARLA Trademark, as it incorporates the mark in its entirety. The addition of the generic term "redo" and the ".com" TLD (being a mere technical requirement for domain name registration) does not prevent a finding of confusing similarity. UDRP panels have consistently found that the mere registration of a domain name identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity may, by itself, give rise to a presumption of bad faith.

Given the distinctiveness of the ARLA Trademark and its prior use, it is implausible that the Respondent registered the disputed domain name by coincidence or without knowledge of the Complainant and its rights. Rather, it was clearly registered with full awareness of the ARLA Trademark and an intent to exploit its reputation.

Moreover, the disputed domain name has not resolved to any active website since registration. As recognized under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0, and in particular Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), the non-use of a domain name does not prevent a finding of bad faith where the circumstances indicate that any potential use would likely be abusive.

In this case, the Panel considered the following factors when applying the passive holding doctrine:

1. the degree of distinctiveness and reputation of the ARLA Trademark;
2. the Respondent’s failure to submit a Response or provide any evidence of actual or contemplated good faith use;
3. the implausibility of any good faith use to which the disputed domain name could be put.

Taking into account all the circumstances, the Panel concludes that it is impossible to conceive of any plausible actual or contemplated use of the disputed domain name that would not be illegitimate, such as trademark infringement, passing off, or violation of consumer protection laws.

Accordingly, the Panel finds that the Respondent, by registering and using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its online location by creating a likelihood of confusion with the ARLA Trademark as to the source, sponsorship, affiliation, or endorsement of its website or other online location (paragraph 4(b)(iv) of the Policy).

The Complainant has therefore met its burden under paragraph 4(a)(iii) of the Policy to show that the disputed domain name has been registered and is being used in bad faith.