WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Friesland Brands B.V. v. shiraz iqba / Whois Privacy Protection Service, Inc.
Case No. D2013-1163
1. The Parties
The Complainant is Friesland Brands B.V. of Le Amersfoort, Netherlands, represented by Chiever B.V., Netherlands.
The Respondent is shiraz iqba of London, United Kingdom of Great Britain and Northern Ireland / Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <frieslandcampinauk.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2013. On June 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2013 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 amendment to the Complaint on July 9, 2013.
The Center verified that the Complaint together with the amendment to the Complaint (hereafter 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 July 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 15, 2013. 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
The Complainant is part of the Friesland group of companies (“Friesland”). Friesland is one of the world’s leading suppliers of milk and other dairy related products. In 2008 FrieslandCampina was formed as the result of a merger between Royal Friesland Foods and Campina, joining and combining the two companies as “FrieslandCampina”.
The Complainant owns the intellectual property rights for Friesland. The Complainant has held trade marks for the word mark FRIESLANDCAMPINA (the “FRIESLANDCAMPINA Mark”) since at least 2009. It currently holds registrations for the FRIESLANDCAMPINA Mark in the Benelux, and registrations of a mark consisting of the word “Frieslandcampina” and a graphical symbol, in jurisdictions throughout the world, including the European Union and the United States.
The Domain Name <frieslandcampinauk.com> was created on June 5, 2013. It is inactive; however it has been used as an email address from an individual or entity using the name “Amanda […]”. The email from Amanda […] was to a client of Friesland and purported to pass itself off as Friesland UK. The email (“Respondent’s email”) consisted of the following:
Kindly forward your packaging order request directly to the factory Gines Coll S.A. who are our preferred vendor and request them to process your order immediately.
Packaging Manager - Infant Diary
Freisland Campina UK”.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s FRIESLANDCAMPINA Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the FRIESLANDCAMPINA Mark. It owns trade marks for the FRIESLANDCAMPINA Mark in Benelux and owns trade marks featuring the FRIESLANDCAMPINA Mark in the United States, Europe and other countries around the world.
The Domain Name consists of the FRIESLANDCAMPINA Mark in its entirety with the addition of the abbreviation “uk”. The abbreviation “uk” is commonly used to signify the United Kingdom. The Domain Name contains the FRIESLANDCAMPINA Mark in its entirety and the mere addition of a geographic term does not distinguish the Domain Name from the FRIESLANDCAMPINA Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant or Friesland to register the Domain Name. “FrieslandCampina” is a unique name and not a name which is commonly used, descriptive or could be invented easily.
The Domain Name was registered and is being used in bad faith. The Domain Name has been used as part of a false email from an individual or entity that is trying to pass itself off as the Complainant or Friesland. The Respondent is trying to give the impression that it is one of the international outlets of Friesland. This conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the FRIESLANDCAMPINA Mark having registrations for the FRIESLANDCAMPINA Mark in Benelux.
The Domain Name consists of the FRIESLANDCAMPINA Mark and the abbreviation “uk”. The abbreviation “uk” is a common abbreviation for the United Kingdom of Great Britain and Northern Ireland. The addition of a geographical term to a trade mark is generally not sufficient to provide any distinctiveness to a domain name, see Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493). Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a website run by the Complainant, offering its products to the UK market. The Panel finds that the Domain Name is confusingly similar to the Complainant’s FRIESLANDCAMPINA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant or Friesland in any way. It has not been authorized by the Complainant or Friesland to register or use the Domain Name or to seek the registration of any domain name incorporating the FRIESLANDCAMPINA Mark or a mark similar to the FRIESLANDCAMPINA Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent was using the Domain Name for the purpose of passing itself off as being related in some way to the Complainant or Friesland. Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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:
(i) circumstances indicating that the 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant/Friesland and its reputation in the FRIESLANDCAMPINA Mark at the time the Domain Name was registered, considering, inter alia, that the Respondent’s email referred to “Freisland Campina UK” and the fact that Friesland operates in the dairy industry. The registration of the Domain Name in awareness of the FRIESLANDCAMPINA Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
Other than an email address, the Domain Name is currently inactive. It is not clear if the Respondent has ever taken any actual step in setting up a website. It is, in essence, being passively held by the Respondent. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.
A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:
a) The Respondent was aware of Friesland at the time it registered the Domain Name;
b) The Respondent has used the Domain Name for the purpose of sending an email to a client of Friesland, in which the Respondent passes itself off as Friesland. This email appears to have a commercial purpose in that the Respondent, or a related entity to the Respondent, could benefit if the client of Friesland was fooled by the email.
c) The Respondent has failed to respond to this proceeding in any significant manner including providing any bona fide reason for registering the Domain Name.
On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <frieslandcampinauk.com> be transferred to the Complainant.
Date: August 19, 2013