Decision for dispute CAC-UDRP-108560

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, inter alia, the owner of the following trademarks containing the word element “LACTALIS”:

(i) LACTALIS (word), European Union trademark registration no. 1529833, application date 28 February 2000, registration date 7 November 2002, registered in International Classes 29, 30 and 32;

(ii) LACTALIS (word), International trademark registration no. 900154, registration date 27 July 2006, registered in International Classes 29, 30, 32 and 35;

(iii) LACTALIS (word), International trademark registration no. 1135514, registration date 20 September 2012, registered in International Classes 5, 29, 30, 32 and 35;

(iv) LACTALIS (word), European Union trademark registration no. 017959526, application date 16 July 2018, registration date 22 May 2019, registered in International Classes 5, 29, 30, 32 and 35;

(v) LACTALIS (word), United States trademark registration no. 6824877, registration date 23 August 2022, registered in International Classes 29 and 30;

(vi) LACTALIS (word), Canadian trademark registration no. TMA920257, registration date 16 November 2015, registered notably in International Classes 29, 30 and 32

(referred to as "Complainant's trademark").

The Complainant also owns a substantial portfolio of domain names incorporating the term “LACTALIS”, including <lactalis.com>, registered on 9 January 1999.

The Complainant in this administrative proceeding is Lactalis, a French multinational company operating in the dairy and food industry.

Founded in 1933, the Complainant has operated under the name “Lactalis” since 1999 and is currently the world’s largest dairy products group, employing more than 85,500 people and operating 266 production sites across 51 countries.

The Complainant also operates extensively in Canada through Lactalis Canada.

The disputed domain name <lactalis-ca.com> was registered on 23 March 2026 and is held by the Respondent.

The disputed domain name website (i.e. website available under internet address containing the disputed domain name) is currently inactive.

However, the Complainant has demonstrated that, at least for some time before the filing of the Complaint, the disputed domain name resolved to the Complainant’s official Canadian website available at <lactalis.ca>. The Complainant has further demonstrated that MX records are configured in connection with the disputed domain name.

The Complainant seeks the transfer of the disputed domain name to the Complainant.

COMPLAINANT:

A) CONFUSING SIMILARITY

The Complainant states that:

• The disputed domain name <lactalis-ca.com> is confusingly similar to the Complainant’s Trademark, as the mark LACTALIS is incorporated in its entirety;
• The addition of the geographical abbreviation “CA”, referring to Canada, does not prevent a finding of confusing similarity. On the contrary, it reinforces the association with the Complainant, which operates in Canada through Lactalis Canada;
• The addition of the TLD “.com” is irrelevant for the purpose of assessing confusing similarity;
• The Complainant further contends that previous UDRP panels have already recognized the well-known character of the LACTALIS Trademark and found domain names incorporating the mark to be confusingly similar.

B) NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant states that:

• Respondent has no authorization from the Complainant to use the Complainant’s Trademark in any way, including in any domain name.
• The Respondent is not affiliated with the Complainant and is not commonly known by the disputed domain name.
• The disputed domain name redirects Internet users to the Complainant’s official Canadian website. Such use does not constitute a bona fide offering of goods or services, nor a legitimate non-commercial or fair use.
• The Respondent registered a domain name which falsely suggests affiliation with the Complainant and its Canadian operations.
• The disputed domain name has also been configured with MX records, indicating potential use for email communications.
• Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent to demonstrate otherwise. The Respondent has provided no evidence to rebut the Complainant’s assertions.
• The Respondent therefore has no rights or legitimate interests in the disputed domain name

BAD FAITH REGISTRATION AND USE

The Complainant states that:

• The Complainant’s Trademark is distinctive and well known internationally.
• The Respondent registered the disputed domain name with full knowledge of the Complainant and its trademark rights.
• The addition of the term “CA” directly references the Complainant’s Canadian operations and increases the likelihood that Internet users will believe the disputed domain name is officially associated with the Complainant.
• The disputed domain name redirects to the Complainant’s official Canadian website, which demonstrates that the Respondent was fully aware of the Complainant and intentionally targeted the Complainant’s business.
• The disputed domain name has been configured with MX records, suggesting possible use for deceptive email communications.
• By using a domain name that falsely suggests affiliation with the Complainant and its Canadian subsidiary, the Respondent intentionally creates a likelihood of confusion as to source, sponsorship, affiliation, or endorsement.
• Accordingly, the Complainant concludes that the domain name was registered and is being used in bad faith.

RESPONDENT:

The Respondent has not provided any response to the Complaint.

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.

A) RIGHTS

The first UDRP element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the trademark is recognizable within the disputed domain name.

In cases where a disputed domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in such domain name, the disputed domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing.

In such case, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

Applying the principles described above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Trademark.

The disputed domain name incorporates the Complainant’s Trademark LACTALIS in its entirety. The addition of the geographical abbreviation “CA” does not prevent a finding of confusing similarity. On the contrary, given the Complainant’s established operations in Canada through Lactalis Canada, the addition of “CA” may increase the likelihood of confusion by suggesting that the disputed domain name is officially connected to the Complainant’s Canadian operations.

For the sake of completeness, the Panel notes that the top-level suffix in the disputed domain name (i.e. “.com”) must be disregarded under the identity and confusing similarity tests, as it is a necessary technical requirement of registration.

Consequently, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

B) NO RIGHTS OR LEGITIMATE INTERESTS

According to established UDRP precedent, once the Complainant makes a prima facie case that the Respondent lacks such rights or legitimate interests, the burden shifts to the Respondent to show otherwise.

In this case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not identified in the WHOIS record by the disputed domain name and there is no evidence that the Respondent is commonly known by it. The Complainant has further stated that it has no relationship with the Respondent and has not licensed, authorized, or otherwise permitted the Respondent to use the Complainant’s Trademark or to register any domain name incorporating it.

The disputed domain name redirects Internet users to the Complainant’s official Canadian website. Such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use under paragraph 4(c) of the Policy.

The Panel notes that the disputed domain name falsely suggests an official affiliation with the Complainant and its Canadian operations. Internet users encountering the disputed domain name are likely to believe that it is an official domain name of the Complainant or of Lactalis Canada (WIPO Overview 3.0, Section 2.5.1.

The fact that the disputed domain name redirects to the Complainant’s genuine website does not confer any rights or legitimate interests upon the Respondent. On the contrary, such use demonstrates that the Respondent was fully aware of the Complainant and intentionally selected the disputed domain name because of its association with the Complainant and its Trademark.

The Panel further notes that MX records have been configured in connection with the disputed domain name. In the circumstances of this case, where the disputed domain name impersonates the Complainant’s Canadian business identity, the configuration of email servers further supports the conclusion that the disputed domain name is not being used for any legitimate purpose.

The Respondent has not come forward with any evidence to rebut the Complainant’s prima facie case or to demonstrate any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C) BAD FAITH

The Complainant’s Trademark has been registered and widely used for many years prior to the registration of the disputed domain name.

The Panel notes that the term “LACTALIS” is distinctive and closely associated with the Complainant. The Panel further notes the international reputation of the Complainant and its extensive operations worldwide, including in Canada.

In these circumstances, it is not credible that the Respondent registered the disputed domain name without knowledge of the Complainant and its Trademark rights.

The composition of the disputed domain name further supports this conclusion. The addition of the geographical abbreviation “CA” directly corresponds to Canada, where the Complainant operates through Lactalis Canada. The disputed domain name therefore creates the false impression that it is an official domain name associated with the Complainant’s Canadian business operations.

The disputed domain name redirects Internet users to the Complainant’s official Canadian website. The Panel considers that such use demonstrates the Respondent’s actual knowledge of the Complainant and intentional targeting of the Complainant’s business and Trademark.

The Panel further notes that the disputed domain name has been configured with MX records. In the circumstances of this case, the configuration of email servers in connection with a domain name falsely suggesting affiliation with the Complainant raises a significant risk of deceptive or fraudulent email use.

The Panel notes the following specific bad faith conduct by the Respondent:

Impersonation: The Respondent registered a domain name that falsely suggests an official connection with the Complainant and its Canadian subsidiary.

False Affiliation: By combining the Complainant’s Trademark with the geographical abbreviation “CA”, the Respondent created the impression that the disputed domain name belongs to the Complainant’s Canadian operations.

Confusion for Improper Purposes: By redirecting the disputed domain name to the Complainant’s official website while simultaneously configuring MX records, the Respondent created a technical setup capable of misleading Internet users into believing that communications originating from the disputed domain name are legitimate communications from the Complainant.

The Panel therefore finds that the Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

This constitutes evidence of bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.

Thus, the Panel has taken a view that 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).