WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods amba v. James Harper/Identity Protection Service, Identity Protect Limited
Case No. D2015-0973
1. The Parties
The Complainant is Arla Foods amba of Viby J, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is James Harper of Surbiton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); Identity Protection Service, Identity Protect Limited of Godalming, United Kingdom, self-represented.
2. The Domain Name and Registrar
The disputed domain name <arla.agency> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2015, the Registrar 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 June 12, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On June 17, 2015, the Complainant requested to extend the due date to reply to the Center’s email communication dated June 12, 2015. The Complainant filed an amended Complaint on June 23, 2015.
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), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2015. The Response was filed with the Center on July 15, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 22, 2015. 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 a Danish dairy cooperative company.
The Complainant’s International trademark ARLA with registration No. 731917, registered on March 20, 2000 (the “Trademark”) is registered in connection with “foodstuffs” in a multitude of jurisdictions worldwide, including the European Community.
The Respondent is a private person, located in the United Kingdom. The Respondent has registered the disputed domain name on October 23, 2014.
At the time of the Decision, the disputed domain name linked to a website hosted by the Registrar, containing advertisements.
5. Parties’ Contentions
The Complainant made the following submissions. The Complainant is a cooperative owned by approximately 12,300 farmers in Denmark, Sweden, the United Kingdom, Germany, Belgium and Luxembourg, and is one of the largest companies in the field worldwide. The Complainant also operates subsidiaries in a further 31 countries.
The disputed domain name is confusingly similar or identical to the Trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or names corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has not authorized or licensed the Respondent’s use of the Trademark. There is thus no evidence that the Respondent has made any legitimate use of the term “arla” as a trademark or service mark, nor is there any evidence that the Respondent is commonly known as “arla”.
The disputed domain name has been registered and used in bad faith. The Complainant contends that the Trademark is well known and that the Respondent must have had the Complainant in mind when he registered the disputed domain name. The fact that the disputed domain name contains the Trademark mark reveals the Respondent’s bad faith.
The Respondent contends that he owns a residential property sales and lettings firm in the United Kingdom, and is a licensed ARLA agent. “ARLA” stands for the Association of Residential Lettings Agents, which is the United Kingdom’s foremost professional body for letting agents. ARLA was founded in the United Kingdom in 1981.
The Respondent contends that he has registered the disputed domain name in order to create a website with professional advice specific to the lettings sector, to complement his company website. The disputed domain name ties the Respondent’s professional credentials with the practices of his business.
The Complainant is a food company and not an agency. The disputed domain name has no connection to food but is wholly appropriate for an agency which is a member of ARLA. The Complainant should have checked the pre-existence of ARLA prior to its foundation in 2000.
As a property professional and member of ARLA, the Respondent is accredited to utilize the indication ARLA, and has legitimate reason to make use of the name ARLA as a service. The Respondent denies that he has registered the disputed domain name in bad faith.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established that the generic Top-Level Domain (“gTLD”) may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD “.agency”.
In the present case the Complainant has sufficiently demonstrated that it has rights in the Trademark. The Panel finds that the disputed domain name is identical to the Trademark as the Respondent has taken the Complainant’s trademark ARLA in its entirety, so that the disputed domain name <arla.agency> is identical to the Trademark in which the Complainant has rights.
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (see e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In the present case, the Panel finds that the Complainant has made such prima facie case. The burden of proof has therefore shifted to the Respondent. The Respondent has contended that he intends to use the disputed domain name for the bona fide offering of goods and services. However, until now the disputed domain name has only been used by the Respondent to post a registrar parking page, which in itself cannot be considered as a bona fide offering of goods and services (cf. paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”). Further, the Respondent has failed to provide any evidence that he has made any preparations for the bona fide offering of goods and services. The Panel therefore considers the Respondent has failed to demonstrate that it has any rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the requirement under paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain names in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark the Complainant is relying on as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location or of a product or service offered on the Respondent’s website or location.
The Complainant contends that it is most likely that the Respondent was aware of the Complainant and the Trademark at the time of registration, and has attempted to take advantage of the reputation of the Trademark by registering the disputed domain name.
Even though the apparent lack of so-called active use of a domain name by the Respondent for other than a registrar sponsored pay-per-click page, without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (WIPO Overview 2.0, paragraph 3.2), the Panel finds that Complainant has insufficiently demonstrated that the Respondent has acted in bad faith when he registered the disputed domain name. In this respect, the Panel takes into account the fact that the Complainant has not submitted any further motivation or evidence to support its contentions, and the Panel also considers that – given the circumstances of this matter – it is more likely that the Respondent did not have the Complainant and the Trademark, but rather the Association of Residential Lettings Agents and their abbreviation ARLA, in mind when he registered the disputed domain name. This finding is further supported by the fact that the Respondent is currently an accredited ARLA member. The Panel notes however that even (given the potential uses for a “.agency” domain name) if the Complainant had tried to ascertain whether the Respondent may have registered the disputed domain name for legitimate purposes, it would not have been able to do so given that the disputed domain name was registered using a privacy service.
Without prejudice to any rights of the Association of Residential Lettings Agents with respect to the disputed domain name (of which the Respondent seems to be merely a member, and not a representative particularly as far as ARLA’s possible trademark rights may be concerned), the Panel therefore finds that the Complainant has not sufficiently demonstrated that the Respondent has registered the disputed domain name in bad faith. The question as to whether the ARLA group would condone the Respondent’s registration of the disputed domain name is not before the Panel; the Panel notes that the ARLA website is silent as to this issue, and merely addresses use of their logo. This decision should not, in that light, be seen as an endorsement of any rights of the Respondent in the disputed domain name, but simply as the Complainant not meeting the Policy criteria.
As it is required to demonstrate both registration and use in bad faith in order to satisfy paragraph 4(a)(iii) of the Policy, there is no need to address whether the Respondent has used the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: August 5, 2015