WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods amba v. Triple B Holding
Case No. D2010-2135
1. The Parties
The Complainant is Arla Foods amba of Viby J, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is Triple B Holding of Teteringen, Netherlands, self represented.
2. The Domain Names and Registrar
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 10, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On December 10, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2011. The Response was filed with the Center on December 20, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 11, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
According to the Complainant, it is a co-operative owned by approximately 8,000 farmers in Denmark and Sweden. The Arla Foods Group is one of Europe's largest dairy companies.
The Complainant has registered the trademark ARLA in a number of countries in connection with certain foodstuffs. Trademark registrations owned by the Complainant or related entities include:
WIPO ROMARIN International Trademark Information Database:
ARLA with figurative elements, registered Denmark June 26, 2008, registration number 990596, classes 1, 5, 29, 30, 31, 32;
ARLA with figurative elements, registered Denmark January 4, 2002, registration number 786155, classes 5, 29, 30, 32;
ARLA with figurative elements, registered Denmark March 18, 2002, registration number 786151, classes 5, 29, 30, 32;
ARLA, registered Denmark March 20, 2000, registration number 731917, classes 1, 5, 29, 30, 31, 32;
Intellectual Property Office (United Kingdom):
DISCOVER.., registered March 16, 2001, registration number 2247493, class 29;
DISCOVER.. MEZZE TO GO, with design elements including the colours blue, purple, turquoise, black and white, registered February 27, 2004, registration number 2344800, class 29;
The Complainant is the holder of several domain names incorporating "arla" including <arla.com>, and domain names incorporating "discover", including <discovercheese.co.uk>, <discover-cheese.co.uk>, <discovercheese.com>, <become-a-discover-lover.com> and <discover-lover.co.uk>.
According to the Respondent it is a private company, with an address in The Netherlands, and is the director of the company BB Pumps & Parts B.V., which has a daughter company BB Pumps & Parts, Inc. with offices in New York (hereafter, collectively BB Pumps & Parts). BB Pumps & Parts is a supplier of specific dispensing systems for AdBlue, a vehicle fuel additive alternatively called DEF (Diesel Exhaust Fluid) in the United States of America (the “USA”) and ARLA32 (Automotive Liquid Reduction Agent) in Brazil. For this reason the Respondent has registered the disputed domain names containing the acronym “arla”.
The disputed domain names were registered on October 26, 2010.
5. Parties’ Contentions
The Complainant has produced documentation in support of its claim to have rights in the trademarks ARLA, DISCOVER.. and DISCOVER.. MEZZE TO GO, listed in section 4 above. The documentation comprises prints of on-line records from the WIPO ROMARIN International Trademark Information Database and copies of registration records obtained on-line from the U.K. Intellectual Property Office.
The Complainant contends that the disputed domain names are identical or confusingly similar to trademarks in which it has rights. The disputed domain names contain two of the Complainant's trademarks, namely ARLA, which is its housemark, and DISCOVER.., which it has registered and uses in connection with soft cheese. Annexed is an on-line advertisement for a cheese labeled on the package “DISCOVER. FRUIT & RUM HALO”. The disputed domain names <discoverarla.com> and <discover-arla.com> combine the Complainant's trademarks DISCOVER.. and ARLA. Furthermore the trademark ARLA is a fanciful name with a high degree of distinctiveness and reputation, and the Respondent must have known about it.
The Complainant further contends that the Respondent has no known rights or legitimate interests in the disputed domain names. The Respondent has not been authorized to use the Complainant’s ARLA and DISCOVER trademarks. The Complainant says there is no evidence of the Respondent's use or demonstrable preparations for use of the disputed domain names or any corresponding name in connection with a bona fide offering of goods or services. Screenprints show that the websites to which the disputed domain names resolve only state that the sites have been registered on behalf of a client. There is no evidence that the Respondent has made any legitimate use of the name “discover arla” as a trademark or any evidence that the Respondent is commonly known as “discover arla” or “discoverarla”.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith. The Complainant is one of Europe's largest dairy companies and its trademark ARLA is used worldwide. It is most likely that the Respondent was aware of the Complainant and its trademarks when it registered the disputed domain names. The use by the Respondent of the combination of the Complainant's trademarks ARLA and DISCOVER.. in the disputed domain names is likely to create confusion amongst Internet users as to whether the corresponding websites are endorsed by or affiliated to the Complainant.
The Complainant requests the transfer to it of the disputed domain names.
The Respondent denies the Complaint.
The Response is submitted on the standard form, dated December 20, 2010, with a brief statement under the heading “Response to Statements and Allegations Made in Complaint”, but with no responses under the headings relating specifically to paragraphs 4(a)(i), 4(a)(ii) and 4(a)(iii) of the Policy. An appendix contains copies of exchanges of correspondence directly between the Parties, which the Panel accepts as setting out some of the contentions of the Respondent.
The Respondent in its brief statement says that it has registered the disputed domain names because BB Pumps & Parts wants to extend its business for the Brazilian region by making use of those domain names for web shop purposes and for the company website. The Respondent registered the disputed domain names because (a) they were available and (b) the name ARLA and/or ARLA32 has been in use for many years in the relevant market segment.
In a letter to the Complainant’s representative dated December 10, 2010 (the date of the Complaint), the Respondent expresses a desire for settlement of the dispute.
In the letter, the Respondent sets out its contentions to the effect that, in summary, the vehicle industry is adopting technology known as SCR (which the Panel believes may mean selective catalytic reduction) for the reduction of pollutant emissions of oxides of nitrogen. A chemical, that is in fact essentially a preparation of urea, is used as a fuel additive. This chemical is marketed under various names including AdBlue, for which the trademark was once owned by one of the Respondent’s companies (GreenChem Holding) and is now held by the German Association of the Automobile Industry. In the USA similar SCR technology is used and the same additive is known as DEF, Diesel Exhaust Fluid.
The Respondent says that Brazil has adopted SCR technology for many years and the fluid is called ARLA32, meaning Automotive Liquid Reduction Agent.
Thus it is contended that the name “arla” has been in use for many years for a different product in a different industry from that of the Complainant, and the Respondent has no connection with the Complainant. The Respondent has registered the disputed domain names with a view to extending its business into the Brazilian market for its product and to provide a web shop. Preparations and investments have been made in order to do this.
The Respondent contends that it had no intention to harm the Complainant; that it never knew of the existence of Arla foods; that it is operating in a different business segment; that the name ARLA32 has been in use for many years in the Brazilian automotive industry; and that the word “discover” is not a unique word. Furthermore the names “discoverarla” and “discover-arla”, corresponding to the disputed domain names, had not been in use or registered as trademarks.
The Respondent expresses the view that the Complainant never thought to register the names (but it is not clear whether this means as trademarks or as domain names).
The Respondent says that it offered to transfer the disputed domain names to the Complainant in order to achieve a settlement, subject to certain conditions, including:
1. agreement that the Respondent could use the domain names <discoverarla32.com> and/or <discover-arla32.com> (which it has registered);
2. that the Respondent can use “discoverarla32” and/or “discover-arla32” as trademarks;
3. that the Complainant covers the costs for registration, preparations, the (marketing) value of both domain names, lost of valuable time and investments.
The Respondent extended a wish for further negotiations and provided telephone details.
In a further letter to the Complainant dated December 15, 2010, in reply to a letter from the Complainant of the same date doubting aspects of the Respondent’s explanation, the Respondent clarified that it is not involved in selling ARLA32 but is strongly related to the business, and that its own business would be launched very soon in Brazil. The Respondent proposed to call the Complainant in 30 minutes to discuss the matter further.
6.Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant is required to prove that it has rights in the claimed trademarks. The trademark ARLA is registered internationally, with certain restrictions. The trademarks DISCOVER.. , in class 29 (cheese), and DISCOVER.. MEZZE TO GO, in class 29 for a variety of foods, are registered in the name of the Complainant’s U.K. company Arla Foods Plc. The Panel is satisfied that the Complainant has rights in the trademarks in the registered classes within the meaning of the Policy.
The Complainant is required to prove that the disputed domain names are each identical or confusingly similar to a trademark in which it has rights. The disputed domain names are <discover-arla.com> and <discoverarla.com>, of which the gTLD component “.com” may be disregarded for the determination of confusing similarity under the Policy. Since the component “discover” is an easily recongisable word, the presence or absence of the hyphen, which is the only distinction between the two disputed domain names, is found to be of no consequence. Each disputed domain name consists of the words “discover” and “arla”, the latter word being a non-dictionary word. Each disputed domain name is found to be confusingly similar to the Complainant’s registered trademarks, and accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In order to consider both the question of rights or legitimate interests in the disputed domain names (paragraph 4(a)(ii) of the Policy) and the question of bad faith (paragraph 4(a)(iii) of the Policy), the Panel has strived to marshal the available facts as to what the Respondent is actually doing.
Scant information is provided by either the Respondent or the Complainant in this respect, and largely comprises the contents of letters annexed to and thereby forming part of the Response. The Respondent has outlined a convincing history of involvement in a specialised technological industry concerned with the reduction of the pollutant nitrogen oxide emissions of diesel engines by means of a chemically reducing fuel additive. The liquid, a preparation of urea, is known by different names in different countries, such as AdBlue or Diesel Exhaust Fluid, and in Brazil has been known for some years as “arla” (Automotive Liquid Reduction Agent; the transposition of initial letters in the acronym is assumed to be either linguistic or colloquial).
The Respondent writes with some technical knowledge of diesel emissions regulations internationally. Its stated commitment to the fuel additive industry is claimed to include the supply of dispensing systems for the additive fluid through its associated company BB Pumps & Parts in New York. A third-party website page cited in one of the Respondent’s letters, “www.discoverdef.com/news/2010/11/23/bb-pumps-and-parts-prepares-to-launch-tote-and-drum-systems.aspx”, contains an authentic-looking news item about an initiative of BB Pumps & Parts, and names its president, who is the signatory of the Response. The Panel can find no evidence upon which to doubt that the Respondent’s business is bona fide. That does not automatically grant rights or legitimate interests in the disputed domain names.
It is for the Complainant to prove that the Respondent does not have rights or legitimate interests in the disputed domain names. Since the Respondent may be privy to information unavailable to the Complainant, it is conventional for the Complainant to make out a prima facie case under paragraph 4(a)(ii) of the Policy on the basis of its enquiries. In this instance the Complainant has asserted that it has not authorised the Respondent to use its trademarks. Furthermore, according to its enquiries and in the terms of paragraph 4(c) of the Policy, the Complainant states that the Respondent is not making a bona fide use of the disputed domain names for the supply of goods or services, is not commonly known by the disputed domain names or a similar name, and is not making a fair or noncommercial use of them.
The Respondent may refute the Complainant’s prima facie case and seek to establish, either in the terms of paragraph 4(c) of the Policy or through any other argument that satisfies the Panel, that it does have the relevant rights or legitimate interests.
The Respondent’s largely informal Response does not seek to establish fair or noncommercial use such as might satisfy paragraph 4(c)(iii) of the Policy, or that the Respondent is known as “discover arla” within the meaning of paragraph 4(c)(ii) of the Policy. By implication the Respondent’s claim to rights or legitimate interests may lie under paragraph 4(c)(i) of the Policy, which is worded as follows:
“before any notice to you 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;”
The Respondent’s stated determination to be involved in the market for an equivalent product in Brazil, where it is known as “arla”, appears plausible. A separate matter, however, is the Respondent’s claim to be making preparations to use the expression “discover arla”, embodied in the disputed domain names, in connection with a bona fide offering of goods or services. Mere registration of the disputed domain names is insufficient and the critical question is the degree to which the Respondent’s preparations are “demonstrable” within the intention of paragraph 4(c)(i) of the Policy. The Policy does not necessarily require demonstrable preparations for the use of a disputed domain name itself, but of a corresponding name, “in connection with” a bona fide offering of goods or services.
“Demonstrable” is a key word that implies the production of sufficient evidence. In a letter to the Respondent dated December 15, 2010, the Complainant expressed skepticism that a Dutch company would be selling ARLA32 to Brazil and said among other things: “Could you send me some sort of documentation/evidence that can show that your company is actually doing business in this field?” (emphasis original). On the same date the Respondent replied, saying among other things: “Our company is not involved in selling ARLA32 but is strongly related to the ARLA32 business...” and later, “...we don’t feel the need to prove or to give your client more evidence to show our business and/or what we are doing.”
The Respondent has declined to provide evidence, formally or otherwise, that may have tipped the balance one way or the other, and may have reasons for its reticence. On the other hand, notwithstanding the provisions of paragraph 4(c) of the Policy, the onus remains upon the Complainant to prove that the Respondent does not have rights or legitimate interests in the disputed domain names (paragraph 4(a) of the Policy). The Panel considers it undesirable in the present case to make a decision under paragraph 4(a)(ii) of the Policy in the absence of full information, and it is not pivotal to do so in view of the decision in respect of bad faith that follows.
C. Registered and Used in Bad Faith
The Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.”
The analysis of the Respondent’s activities set out in section 6B above leads the Panel to the preliminary view that the Respondent is genuinely engaged in the fuel additive business. The Respondent has registered four domain names having some plausible connection with its activities, namely <discover-arla.com> and <discoverarla.com> that are the subject of this Complaint, and <discover-arla32.com> and <discoverarla32.com> that are not. Nothing in the evidence leads the Panel to presuppose that the Respondent may have registered the disputed domain names for a nefarious purpose, and it appears they have not yet been used.
Specifically in the terms of paragraph 4(b)(i) of the Policy, the Complainant does not suggest that the Respondent has offered the disputed domain names to the Complainant for profit. In fact, however, in its letter of December 10, 2010, the Respondent did offer the disputed domain names to the Complainant in the following proposed terms and conditions:
“1. The Respondent “Triple B Holding” and/or his affiliated companies can use the following registered domain names www.discoverarla32.com and/or www.discover-arla32.com without any (juridical) objections
2. The Respondent “Triple B Holding” and/or his affiliated companies can use discoverarla32 and/or discover-arla32 as trademark names without any (juridical) objections
3. The Complainant covers the costs for registration, preparations, the (marketing) value of both domain names, lost of valuable time and investments.”
Panels have in some previous disputes under the Policy had reason to conclude that a reference by a Respondent to value and investment in a disputed domain name, coupled with other evidence indicative of bad faith, may be a veiled precursor to a demand for an exorbitant payment in exchange for a transfer. Having regard to the totality of the evidence in the present case the Panel accepts on balance that the Respondent in forwarding its offer package was genuinely attempting to reach a negotiated settlement and did not intend to commit bad faith in the terms of paragraph 4(b)(i) of the Policy.
There is no evidence that the Respondent has registered or had any reason to register the disputed domain names as a blocking maneuver (paragraph 4(b)(ii) of the Policy).
There is no evidence that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy), notwithstanding the wide definition that may be given to a competitor under the Policy (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279)
The Complainant claims bad faith by the Respondent principally in the terms of paragraph 4(b)(iv) of the Policy, positing that the Respondent has registered the disputed domain names incorporating the Complainant’s well-known trademarks, of which it must reasonably have been aware, in order to attract Internet users by confusion. The disputed domain names contain the words “discover” and “arla” to construct two variants of the phrase “discover arla”. The Complainant holds registered trademarks for DISCOVER.. (with two dots) and DISCOVER.. MEZZE TO GO, and its position is that the disputed domain names, by combining two of its trademarks, are likely to create a confusing impression that the Respondent’s websites are endorsed by the Complainant.
In evaluating this aspect of the Complaint, the Panel has focused first on the trademark ARLA. Within its power to undertake limited factual research into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions; “www.wipo.int/amc/en/domains/search/overview”), the Panel has conducted a Google search for “arla”. Contrary to the Complainant’s assertion that “...ARLA is a fanciful name with a high degree of distinctiveness...”, the source “www.thinkbabynames.com” expresses the view that Arla is a girl’s name, a variant of Arlene, and is “a somewhat common first name for women ([ranking] #2625 out of 4276)”. Arla is a Swedish word (the Complainant is owned by Danish and Swedish farmers) meaning “early in the morning” (“www.freedict.com/onldict/onldict.php”).
“Arla” was found to refer also to the Association of Residential Letting Agents, U.K., formed in 1981 (“www.arla.co.uk”); the Academy of Rail Labor Attorneys, U.S.A. (“www.arla.org”); the American Racing League of America (evidently known by that name since 1973); ARLA Maschinentechnik GmbH, Germany, known by that name since 1984, derived from the senior founder’s name Arnold Laschet (“www.arla-online.com”); Arla Corporation, Hong Kong, founded in 1976 (“www.arlacorp.com”); L’Agence de Réglementation de la Lutte Antiparasitaire (Pest Management Regulatory Agency, Canada (“www.hc-sc.gc.ca”); and a computer program (“www.stacken.kth.se/project/arla”).
Thus, whilst the Complainant has rights in its registered trademark ARLA in certain classes, its rights are not exclusive of non-conflicting usage for other purposes, some examples of which appear to have stood for at least 30 years. The word “discover”, irrespective of its status (with two dots) in registered trademarks of the Complainant, is also clearly a generic and ubiquitous word widely capable of innocent usage. Partly because of its rights in the trademarks DISCOVER.. and DISCOVER.. MEZZE TO GO, relating to certain foods, the Complainant claims there is likely to be confusion with the disputed domain names, which would be within the terms of paragraph 4(b)(iv) of the Policy.
The Complainant has not offered evidence of having used the combined words “discover” and “arla” in a trademark sense. The sole soft cheese package pictured in the Complainant’s evidence is prominently labeled “DISCOVER.. FRUIT & RUM HALO” but if the trademark ARLA is anywhere present, it is not visible to the Panel. The Complainant states that it possesses domain names including <discovercheese.co.uk>, <discover-cheese.co.uk>, <discovercheese.com>, <become-a-discover-lover.com> and <discover-lover.co.uk>, however there is no evidence that these are trademarks as required by paragraph 4(b)(iv) of the Policy.
The Complainant states that it is evident that the Respondent had the Complainant’s trademarks in mind when it registered the disputed domain names. The Respondent counters that it never knew of the existence of Arla foods. The onus of proof is on the Complainant. The Panel is not persuaded that the Respondent is a cybersquatter, has made an abusive or bad faith registration, has any interest whatsoever in the Complainant, or has registered the disputed domain names for other than bona fide business reasons as a participant in the business of fuel additives including Automotive Liquid Reduction Agent (ARLA or ARLA32).
Bad faith registration or use of the disputed domain names by the Respondent is not found by the Panel to have been proven on the balance of probabilities. The Policy is intended to deal with complaints of abusive registration and use, and not with trademark disputes per se. Should the Complainant consider at any time that its trademark has been infringed, that is a matter for another forum.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: January 25, 2011