Decision for dispute CAC-UDRP-108492

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

The Complainant is the owner of several LACTALIS trademark registrations, among which are the following:

- LACTALIS (word mark), European Union registration No. 1529833, filed on 28 February 2000 and registered on 7 November 2002, covering goods in classes 1, 29, 30 and 32;

- LACTALIS (word mark), US registration No. 6824877, filed on 23 July 2021 and registered on 23 August 2022, covering goods and services in classes 1, 5, 10, 13, 16, 31, 33, 34, 40, 42.

The Complainant is also the owner of a large portfolio of domain names including the trademark LACTALIS, such as <lactalis.com>, registered on 9 January 1999. 

The Complainant is a French multinational company founded in 1933 and operating in the food industry, in particular in the dairy sector. The Complainant has operated under the name "Lactalis" since 1999. The Complainant is the largest dairy products group in the world, with over 85,500 employees, and operating 266 production sites. The Complainant has a presence in 266 countries worldwide.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's mark. More specifically, the Complainant asserts that the delection of the letter "i" from the term "lactalis" and the addition of the prefix "fr", which is the abbreviation for "France", do not change the overall impression of the disputed domain name as being connected with the Complainant 's mark. Such changes do not prevent a finding of likelihood of confusion between the disputed domain name and the Complainant and its trademark LACTALIS. Moreover, the addition of the prefix "fr" may increase the risk of confusion as it directly refers to the Complainant and to the e-mail address format used by its employees, i.e., "...@fr.lactalis.com".

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has no affiliation with the Complainant, nor has it ever been authorized by the Complainant to use the LACTALIS mark, or to apply for the registration of the disputed domain name. The Respondent is not a licensee of the Complaint, does not carry out any activities on behalf of the Complainant, and has no business relationship with the Respondent.

According to the Complainant the Respondent is not commonly known by the disputed domain name.

The disputed domain name resolves to a parking page and has been used in connection with a phishing scheme. The impersonation of a complainant by using its trademark in a disputed domain name, coupled with attempts to defraud or confuse Internet users, indicates a lack of rights or legitimate interest in a disputed domain name.

Finally, the Complainant contends that the Respondent has registered and has been using the disputed domain name in bad faith. The trademark LACTALIS is a well-known trademark and had been registered various years before the registration of the disputed domain name. The disputed domain name is confusingly similar to the LACTALIS mark, and the addition of the prefix "fr" further increases the likelihood of confusion, as it directly refers to the Complainant and to the e-mail addresses used by its employees. Therefore, the Respondent registered the disputed domain name with full knowledge of the Complainant's LACTALIS mark.

The disputed domain name resolves to a parking page and has been used as an e-mail address in an attempt to impersonate an employee of the Complainant, with the aim of disrupting the Complainant's business and obtaining financial gain. The use of a domain name to pass off as an employee of a complainant through email communications constitutes evidence of bad faith.

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.

I. Confusing Similarity

The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark. The disputed domain name consists of a misspelling of the trademark LACTALIS preceded by the prefix "fr", which is an abbreviation for "France" and refers to the country of origin of the Complainant. A domain name which consists of a variation of a trademark (typically a common, obvious, or intentional misspelling, referred to as typosquatting) is considered by panels to be confusingly similar to the relevant mark for purposes of the first element (section 1.9 of the WIPO Overview 3.1). The addition of a geographic abbreviation does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's mark, as the Complainant's mark remains clearly recognizable within the disputed domain name. Where a relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not preclude a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.1).

Accordingly, the Panel is satisfied that the first requirement of the Policy has been met.

II. Lack of Rights or Legitimate Interests

As also confirmed by section 2.1 of the WIPO Overview 3.0, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Based on the available evidence, the Respondent does not appear to be commonly known by the disputed domain name. The Respondent is neither an affiliate nor a licensee of the Complainant, nor does it have any other kind of relationship with the Complainant. The Respondent has not been authorised by the Complainant to make use the LACTALIS mark (or any confusingly similar mark) in any manner, including as part of the disputed domain name.  

At the time of the registration of the disputed domain name, it resolved to a parking page provided by the Registrar. However, the disputed domain name has been used to send fraudulent e-mails to at least one of the Complainant's customers, falsely notifying a change in bank account details and requesting that payment of two outstanding invoices be made to a different bank account. In doing so, the Respondent has used the disputed domain name to impersonate an employee of the Complainant and to mislead the Complainant's customer for the Respondent's economic advantage. Panels have categorically held that the use of a domain name for illegal activity (e.g., phishing/identity theft) can never confer rights or legitimate interests on a respondent (see section 2.13.1 of the WIPO Overview 3.1).

Accordingly, the Panel finds that the Complainant has successfully proved the second requirement under the Policy. 

III. Bad Faith

The Panel agrees with the Complainant that the LACTALIS trademark is distinctive and enjoys reputation in connection with dairy products. The reputation of the LACTALIS mark has already been recognized by other UDRP panelists.

The Panel also agrees with the Complainant that the Respondent was aware of the Complainant’s mark at the time of registration of the disputed domain name. This is evident from the composition of the disputed domain name, which incorporates a misspelling of the Complainant’s mark, preceded by the country‑code abbreviation “fr”, as well as from the Respondent’s use of the disputed domain name to send fraudulent e-mails to at least one customer of the Complainant. The disputed domain name was clearly deliberately conceived by the Respondent, who intended to register a domain name capable of being used as an email address closely resembling the e-mail address format used by the Complainant’s employees, in order to create a misleading and deceptive impression and to facilitate confusion among recipients as to the source or legitimacy of such communications.

The registration of a disputed domain name confusingly similar to a third party's well-known trademark, without rights or legitimate interests and for a fraudulent purpose, amounts to registration in bad faith.

As far as use in bad faith is concerned, through the disputed domain name the Respondent has attempted to deceive at least one customer of the Complainant and to induce such customer to pay two outstanding invoices to a bank account likely associated with the Respondent. The use of a domain name for illegitimate activity, such as phishing, is manifestly considered evidence of bad faith (sections 3.1.4 and 3.4 of the WIPO Overview 3.1).

In light of the foregoing, the Panel is satisfied that the third and last requirement under the Policy has also been met.