WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods Amba v. Joan P Evans
Case No. D2016-0473
1. The Parties
The Complainant is Arla Foods Amba of Viby J, Denmark, represented by BrandIT Legal AB, Sweden.
The Respondent is Joan P Evans of Tennessee, United States of America.
2. The Domain Name and Registrar
The disputed domain name <arlefoods.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2016. On March 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2016.
The Center appointed Anna Carabelli as the sole panelist in this matter on April 7, 2016. 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 an international cooperative based in Denmark; it is the largest producer of dairy products in Scandinavia and one of the largest in the world (Annex 6 to the Complaint).
It operates in several countries, including the United States, selling its products under the trademarks ARLA and ARLA FOODS.
These trademarks are registered in many countries, including the United States: annexed to the Complaint is a list of several US trademark registrations filed by the Complainant in 2000, 2007 and 2009, including Complainant’s International trademark ARLA with registration No. 731917, registered on March 20, 2000 (Annex 7 to the Complaint).
The Complainant also owns the domain names <arlafoodsusa.com>, <arlafoods.us>, <arla.us> and <arla.com>, which were registered, respectively, in 2005, 2002, 2002 and 1996 (Annex 8 to the Complaint).
The Respondent’s domain name <arlefoods.com> was registered on January 26, 2016, as shown by the copy of the WhoIs database annexed to the Complaint (Annex 3 to the Complaint).
According to the evidence submitted by the Complainant, the disputed domain name does not resolve to an active website (Annex 9 to the Complaint).
The disputed domain name has been used to fraudulently acquire financial information from the Complainant (Annex 10 to the Complaint). On January 27, 2016 the Respondent, impersonating Complainant’s CEO, sent an email to Complainant’s newly appointed CFO asking for assistance with an urgent international wire transfer.
5. Parties’ Contentions
The Complainant contends that:
- the Complainant’s trademarks are well-known trademarks in the dairy industry worldwide;
- the disputed domain name is confusingly similar to the Complainant’s registered trademarks ARLA and ARLA FOODS, since it entirely reproduces the trademarks, with the mere replacement of the letter “a” with the letter “e”; moreover, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name;
- the Respondent has no rights or legitimate interests in the disputed domain name: the Respondent does not own the trademarks incorporated in the disputed domain name, nor it is known by these trademarks. Moreover, the name “Arla” is not a descriptive term, which can be used to indicate specific characteristics of any goods or services;
- the disputed domain name has been registered and it is being used in bad faith since: a) the Respondent has not contested any of the allegations made by the Complainant nor it has provided any evidence of good faith use of the disputed domain name; b) the disputed domain name has been used to attempt to perpetrate a financial fraud on the Complainant and to steal sensitive information (Annex 10 to the Compliant); c) the Respondent cannot have ignored the Complainant’s rights on the trademarks ARLA and ARLA FOODS, given the strong notoriety of the trademarks in the dairy industry.
Moreover, according to the Complainant, a passive holding of a domain name does not preclude a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the marks ARLA and ARLA FOODS in several countries, including the United States.
The only distinction between the disputed domain name <arlefoods.com> and the Complainant’s trademark ARLA FOODS is given by the use of the letter “e” instead of the letter “a”.
It has become a common practice for potential infringers to register domain names with minor spelling variations, a phenomenon which is commonly known as “typo-squatting”.
The slight spelling variation does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark (see, e.g., Clarins v. “-“, Unknown Registrant” / Registration Private, Domains By Proxy, LLC, WIPO Case No. D2015-0451; GoCompare.com Limited v. Pluto Domain Services Private Limited, WIPO Case No. D2008-1693; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362).
In the assessment of whether a domain name and a trademark are confusingly similar, the distinctiveness of the trademark must be taken into account. Here, the distinctiveness of the Complainant’s trademark is not disputed and cannot be seriously questioned. As shown by the Complainant, the trademarks ARLA and ARLA FOODS have been registered all over the world (as indicated in the Complaint and Annex 7 to the Complaint) and are commonly associated with the Complainant’s activity in the field of dairy production (Annex 6 to the Complaint).
Moreover, it is well-established in decisions under the UDRP that gTLD indicators (e.g., “.com”, “.info”, “.net”, “.name”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name (see Philip Morris USA Inc. v. Sakaria Mohamoud Mussafah, WIPO Case No. D2014-1667; AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-208; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Deborah Jordan / Domains By Proxy, LLC, WIPO Case No. D2012-2078).
The Panel is also aware that this issue is addressed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which contains the following statement: “The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration)”.
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademarks ARLA and/or ARLA FOODS and there is no evidence that the Respondent has been or is commonly known by the disputed domain name.
Furthermore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and it is not making a legitimate noncommercial or fair use of the trademark.
Evidence shows that the disputed domain name has been used to fraudulently acquire financial information from the Complainant (Annex 10 to the Complaint): on January 27, 2016 the Respondent, impersonating Complainant’s CEO, sent an email to Complainant’s newly appointed CFO asking for assistance with an urgent international wire transfer.
In the light of the above, the Complainant has established prima facie evidence that none of the three circumstances establishing rights or legitimate interests o mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to respondent to rebut the evidence (see among others Barry Callebaut AG, Barry Callebaut Belgium NV v. VistaPrint Technologies Ltd, WIPO Case No. D2015-0819; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy or otherwise.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the international reputation and the distinctive nature of the ARLA and ARLA FOODS marks, the Panel finds that in all likelihood the Respondent should have been aware of the Complainant’s well-known trademarks at the time it registered the disputed domain name (see Vertu Corporation Limited v. David Szn and Jun Luo, WIPO Case No. D2015-0185; Revlon Consumer Product Corp. v. Easy Weight Loss Info, WIPO Case No. D2010-0936; Hermes International SCA v. Cui ZhenHua, WIPO Case No. D2010-1743).
As shown in the Complaint (Annex 10), the disputed domain name was used for an attempted fraud against the Complainant. According to several UDRP decisions, this is further evidence of bad faith (see e.g. Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017).
The fact that the disputed domain name does not resolve to a web page does not affect the above conclusions. It is an established principle that the lack of active use of a domain name does not as such prevent a finding of bad faith (see Vertu Corporation Limited v. David Szn and Jun Luo, WIPO Case No. D2015-0185; Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; McGrigors LLP v. Fraser Coutts, WIPO Case No. DCO2011-0022).
According to paragraph 3.2 of the WIPO Overview 2.0, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith and in the Panel’s view the circumstances of the present case (namely: reputation and distinctiveness of the Complainant’s trademarks, no response to the Complaint, impossibility of conceiving a good faith use of the disputed domain name) clearly show the Respondent’s bad faith.
Accordingly, the Panel finds that the Complainant has established element 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 disputed domain name <arlefoods.com> be transferred to the Complainant.
Date: April 18, 2016