WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org
Case No. D2012-0875
1. The Parties
The Complainant is Arla Foods amba of Viby J, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is Bel Arbor / Domain Admin, PrivacyProtect.org of Delhi, India and Nobby Beach, Queensland, Australia, respectively.
2. The Domain Name and Registrar
The disputed domain name <arla-foods.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On the same date, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 25, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 7, 2012.
The Center verified that the Complaint together with the amended 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), on May 8, 2012 the Center sent the Complaint and its Annexes to Respondent via email, and also a Written Notice of the Complaint via courier and facsimile, setting May 28, 2012 as the deadline by which Respondent could file a Response to the Complaint. However, delivery to Respondent via courier failed and Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 29, 2012.
The Center appointed Fernando Triana, Esq. as the sole panelist in this matter on June 6, 2012. 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.
The Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in paragraphs 2(a)(i) and (ii) of the Rules. Therefore, absent any exceptional circumstances, the Panel may issue its Decision based on the documents submitted by Complainant and in accordance with the Policy, the Rules, the Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
4. Factual Background
Complainant is a cooperative owned by approximately 8.000 milk producers in Denmark and Sweden and is one of Europe’s largest dairy companies.
Complainant’s trademark ARLA is registered in connection with “foodstuffs” in a multitude of jurisdictions worldwide, including the European Community, Switzerland, Cuba, Czech Republic, Iceland, Turkey, Romania, Antigua and Barbuda, etc. Annex 3 to the Complaint comprises a printout of the ROMARIN database referring to the International Trademark Registration No. 731917.
In Complainant’s opinion, the trademark ARLA is well-known in connection with dairy products. Yet, Complainant failed to submit evidence to prove this contention.
The Panel wishes to highlight that a trademark’s alleged well-known character must be proven by the interested party and cannot simply be taken for granted. The famous or well-known character of a mark must be analyzed within a specific time and territory.
However, the Panel conducted quick searches on the search engine Google about Complainant and its trademark ARLA. The search results show that the trademark ARLA has indeed a high level of recognition around the world, also confirmed by the UDRP cases handled by the Center involving domain names confusingly similar to it and included as Annexes 9 and 10 to the Complaint. Thus the Panel concludes that the trademark ARLA is recognized by global Internet users.
5. Parties’ Contentions
1. The trademark ARLA is registered in a number of countries and used worldwide.
2. Complainant owns several domain names incorporating the trademark ARLA and the generic term “foods” i.e., <arlafoods.org>, <arlafoods.com> and <arla-foods.com>, as shown in Annexes 4-6 to the Complaint.
3. In addition, Complainant’s name is “ARLA FOODS AMBA” as shown in Annex 7 to the Complaint, and ARLA FOODS is its service mark.
4. Complainant’s marks ARLA and ARLA FOODS are well-known in connection with dairy products.
5. The disputed domain name <arla-foods.org> comprises Complainant’s trademark ARLA and the generic term “foods”. The trademark ARLA is the distinctive element of the domain name <arla-foods.org>; thus the addition of the generic term “foods” is not sufficient to differentiate it from Complainant’s trademark.
6. Respondent has no rights or legitimate interests in respect to the disputed domain name <arla-foods.org>: i) there is no evidence of Respondent’s use, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; ii) the website to which the disputed domain name reverts is a typical pay-per-click website as shown in Annex 8 to the Complaint; and iii) Complainant has not authorized Respondent to use the marks ARLA or ARLA FOODS.
7. At the time of the disputed domain name’s registration (March 1, 2012), Respondent was most likely aware of the marks ARLA and ARLA FOODS due to their well-known character. Respondent probably detected the traffic to Complainant’s website “www.arlafoods.org” (Annex 4 to the Complaint) and attempted to profit from it by registering the quasi-identical domain name <arla-foods.org>.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. The Panel wants to make special emphasis to the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.
In addition, the Panel will analyze Respondent’s default within this Administrative Proceeding in accordance with paragraph 14 of the Rules, which states as follows:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. (Italic added).
Hence, the Panel will deem Respondent’s failure to respond to the Complaint as a presumption against it, and will accept as sufficient the evidence filed by Complainant (and confirmed ex officio) to prove its claims, since it has not been contested by Respondent.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First (see Section A, below), the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly (see Section B, below), the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly (see Section C, below), the Panel will establish whether or not the disputed domain name have been registered and are being used in bad faith by Respondent.
Section A. Identical or Confusingly Similar
Complainant contends to be the owner of the trademark ARLA in a multitude of jurisdictions since 2000.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of a trademark or a service mark, the rights to which may be acquired by registration before a competent office in a number of jurisdictions of the world.
The worldwide-accepted definition of a trademark involves the concept of distinctiveness as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
In this case, Complainant proved its rights in the trademark ARLA. Annex 3 to the Complaint includes a printout of the ROMARIN database referring to the International Trademark Registration No. 731917 of the trademark ARLA in international classes 11, 52, 293, 304, 315 and 326.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the trademark ARLA and the exclusive right to use it in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive7.
Complainant also contends to be the owner of the service mark ARLA FOODS; however no evidence of such ownership was submitted with the Complaint. The Panel looked for a registration of the mark ARLA FOODS on the ROMARIN and the OHIM databases, but did not find any. Therefore, the Panel will not refer from this point to Complainant’s alleged rights on the service mark ARLA FOODS.
Thus, Complainant established its rights in the trademark ARLA.
Therefore, the Panel concludes that Complainant has demonstrated registered rights in the trademark ARLA for purposes of paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name <arla-foods.org> incorporates the trademark ARLA and the generic term “foods”, which makes it similar to the trademark ARLA.
Before establishing whether or not the disputed domain name <arla-foods.org> is confusingly similar to Complainant’s trademark ARLA, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.net”, “.com”, “.biz”, “.edu”, and “.org”, cannot be considered when determining if the domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., “.co”, “.de”, “.cr”, “.es”, nor the insertion of a gTLD have a distinctive function.
UDRP panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, the panel stated that “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.” This conclusion applies also to the “.org” gTLD.
In addition, the Panel agrees with Complainant on the conclusion that including the generic term “foods” at the end of the second-level domain name is not sufficient to make it different for purposes of the UDRP from the trademark ARLA. The term “foods” simply indicates the kind of products that Complainant produces and commercializes with the trademark ARLA. Therefore, the Panel concurs with the decision rendered in the Arla Foods amba v. Ho Nim, WIPO Case No. D2010-0157, (submitted as Annex 9 to the Complaint): “Given that the Complainant is in the business of producing various dairy products and ingredients and the mark ARLA is associated therewith, it is plain that the disputed domain name meets the first element”8.
As per this reasoning, the Panel finds that the disputed domain name <arla-foods.org> is confusingly similar to Complainant’s trademark ARLA, International Registration No. 731917 dated March 20, 2000, and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
Section B: Rights or Legitimate Interests
a) Prima Facie Case
Regarding this second element of paragraph 4(a) of the Policy, UDRP panels have unanimously consented that requiring Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of Respondent.
In Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, a Complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in respect to the disputed domain name <arla-foods.org> because: i) there is no evidence of Respondent’s use, or preparations to use, the domain name in connection with a bona fide offering of goods or services; ii) Respondent’s website, to which the disputed domain name reverts, is a typical pay-per-click website as shown in Annex 8 to the Complaint; and iii) Complainant has not authorized Respondent to use nor granted a license to Respondent to use the trademark ARLA.
The Panel accepts this assertion as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s Rights or Legitimate Interests in the Disputed Domain Name
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Despite of the Center’s efforts, Respondent did not file a Response to the Complaint.
However, the Panel believes that even if Respondent did reply to the Complaint, Respondent would likely not have proven any rights or legitimate interests in the disputed domain name: The trademark ARLA is worldly associated with its owner, that is, with Complainant. Respondent is not commonly known by the words “Arla Foods”. In addition, Annex 8 to the Complaint shows that Respondent is indeed profiting from the ARLA trademark’s recognition and reputation, which is the opposite to a bona fide offering of goods.
This Panel finds on the record that Respondent lacks rights or legitimate interests in the disputed domain name <arla-foods.org>. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with.
Section C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name <arla-foods.org> in bad faith since he was likely to have knowledge of the trademark ARLA on March 1, 2012.
The Panel confirmed ex officio the trademark ARLA’s high level of recognition, and therefore agrees with Complainant: Respondent must have known the trademark ARLA at the time the disputed domain name was registered. Evidence of such knowledge is the disputed domain name itself: ARLA is not a word in the English language, which is the language of the links posted on the Respondent’s website. In addition, English is a language widely spoken in Australia and India, the locations of Respondent’s contact information. Thus, the Panel finds Respondent deliberately took someone else’s trademark, combined with the generic term “foods” to register a domain name and to create a business around it. The Panel deems that the mere fact of knowingly using and modifying a third-party’s trademark in a domain name is registration in bad faith. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
The Panel must highlight that Respondent also must have been aware of Complainant’s website “www.arlafoods.org”, since the disputed domain name <arla-foods.org> is identical to it, except for the hyphen in between the words “arla” and “food”. Thus, the disputed domain name <arla-foods.org> is simply a misspelling of Complainant’s domain name <arlafoods.org> and this fact is also evidence of Respondent’s bad faith.
Additionally, Complainant argues that Respondent has used the disputed domain name to revert to a website in which sponsored links are posted. Annex 8 to the Complaint includes a printout of Respondent’s website. Complainant believes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the trademark ARLA as to the source, sponsorship, affiliation or endorsement of such website.
The Panel concurs. This intention explains the selection of words with which Respondent made his domain name up. Respondent knew that it would attract Internet users to a website from which he expected to make money: they would reach it while looking for information about ARLA branded goods or while trying to visit the website “www.arlafoods.org”. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s trademark. And the more diverted Internet users he could attract the more profit he would make.
As in Microsoft Corporation v. Abdullah Ali, NAF Claim No. 1423605, this Panel believes that “pay-per-click advertisement is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith. However, this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv)”.
Finally, the Panel considers that providing fake contact information when registering a domain name is also indicative of bad faith. Domain name registrants are required to provide accurate and updated contact information. However, this was not the case with Respondent in this case. As shown in the case’s file, Respondent was unable to be notified and contacted via courier, due to the fact that the listed addresses were false and incomplete to say the least.
The Panel finds the three elements of the Policy, paragraph 4(a) are satisfied in the present case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <arla-foods.org> be transferred to Complainant.
Fernando Triana, Esq.
Dated: June 7, 2012
1 The listing of products in international class 1 include: “Chemicals used in industry as well as in agriculture, horticulture and forestry; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; cultures of micro organisms other than for medical and veterinary use; emulsifiers, proteins for industrial purposes, casein and caseinates for industrial purposes”.
2 The listing of products in international class 5 include: “Dietetic substances adapted for medical use, food for babies; cultures of micro-organisms for medical and veterinary purposes; substitutes for mother's milk; dietary supplements in form of vitamins and minerals, dietetic substances and beverages for medical purposes; lactose”.
3 The listing of products in international class 29 include: “Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; proteins for human consumption, casein and caseinates for human consumption; rennet, cheese powder, substitutes for milk and cream, milk and cream in powder form; milk based dessert mousses, egg based soufflés”.
4 The listing of products in international class 30 include: “Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice, salad dressings; meat pies and meat pâtés (not included in other classes), pizzas, puddings, rice pudding and edible ices, powders and preparations for making cappuccino, cocoa, chocolate, coffee and tea beverages; beverages based on chocolate, cocoa and coffee”.
5 The listing of products in international class 31 include: “Agricultural, horticultural and forestry products and grains not included in other classes; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt”.
6 The listing of products in international class 32 include: “Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”.
8 This decision dates back to March 22, 2010, and the disputed domain name was <arlafoodingredients.com>.