WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods Amba v. Nick Hiscox
Case No. D2017-0393
1. The Parties
Complainant is Arla Foods Amba of Viby J, Denmark, represented by BrandIT GmbH, Switzerland.
Respondent is Nick Hiscox of Radstock, United Kingdom of Great Britain and Northern Ireland ("UK").
2. The Domain Names and Registrars
The disputed domain names <arla-organic.com>, <arlaorganic.com>, <arla-organic-milk.com>, <arla-organic-milk.net>, <arla-organic.net> and <arlaorganic.net> are registered with 123-Reg Limited.
The disputed domain names <arla-organic-milk.org>, <arla-organic.org> and <arlaorganic.org> are registered with Mesh Digital Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2017. On February 27, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 28, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 30, 2017. The Center received three email communications from Respondent on March 30, 2017, April 6, 2017 and April 10, 2017. The Center invited Complainant to suspend the proceeding to discuss settlement; however, Complainant did not request suspension.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on April 18, 2017. 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
Complainant is a global dairy company and co-operative owned by 12,650 dairy farmers in seven countries. Complainant has over 19,000 employees worldwide and had a global revenue of EUR 10.3 billion in 2015. Complainant has a significant presence in the UK, where Respondent is located. Arla is the UK's largest diary company by turnover (GBP 2 billion) and milk pool (3.2 billion litres). It produces 100 million litres of organic milk a year in the UK. It is also the country's largest supplier of butter and spreads and cheese.
Complainant owns registrations for ARLA and ARLA FOODS trademarks (the ARLA marks) in numerous countries, including the UK. The earliest of these registrations date back to 2000. Complainant also owns various domain names containing the ARLA and ARLA FOODS marks.
Respondent registered the disputed domain names on November 15, 2016. These domain names all resolve to pay-per-click (PPC) websites.
According to Complainant, Respondent is the founder of the Free Range Milk Marketing Board, established in April 2016, and is also a dairy farmer himself.
5. Parties' Contentions
Complainant asserts that it has rights in the ARLA trademark. It contends that the disputed domain names are confusingly similar to Complainant's mark because they consist of Complainant's ARLA mark in its entirety. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that it registered and uses the disputed domain names in bad faith.
Respondent did not reply to Complainant's contentions. However, Respondent sent numerous emails to the Center indicating its alleged willingness to transfer the disputed domain names to Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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
As set forth above, Complainant owns many international trademark registrations for the ARLA mark, including in the UK. Moreover, previous domain name decisions involving the ARLA mark have found that ARLA is considered well-known. See Arla Foods Amba v Frederik Enghall,, WIPO Case No. D2016-1205 ; Arla Foods Amba v Zhao Ke, WIPO Case No. DMX2016-0012; Arla Foods Amba v. Graytech Hosting Pty Ltd. ABN 49106229476, Elizabeth Rose, WIPO Case No. DAU2016-0001; and Arla Foods amba v. Ye Li, WIPO Case No. DME2015-0010.
The disputed domain names are confusingly similar to Complainant's ARLA mark; they contain Complainant's mark in its entirety. Additionally, all of the disputed domain names contain the descriptive word "organic", and some also contain the descriptive word "milk". Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from complainant's mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Finally, it is established in previous UDRP decisions that the addition of a hyphen cannot avoid a finding of confusing similarity. See, Hertz System, Inc. Hertz Equipment Rental Corp. v. Vasilina Fedotova, WIPO Case No. D2012-2526.
Accordingly, the Panel finds that Complainant has rights in the ARLA mark and that the disputed domain names are confusingly similar to Complainant's mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the ARLA mark and has not authorized Respondent to register and use the disputed domain names. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the ARLA mark. Respondent is not commonly known under the mark. Respondent has made no showing that it has any legitimate interest in using the domain names or a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain names.
Respondent is in default, and has not provided any evidence in its own favor. However, Respondent has expressed its willingness to transfer the disputed domain names to Complainant.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant's marks and products when Respondent registered the disputed domain names. As set forth above, the ARLA products are protected by various trademark registrations, including in the UK. Complainant uses the ARLA mark for its dairy products. All of this occurred before Respondent registered the disputed domain names on November 15, 2016. Moreover, Respondent appears to be the founder of the Free Range Milk Marketing Board, established in April 2016 and a dairy farmer himself. It would be impossible for Respondent not to know about Complainant, the largest dairy company in the UK. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain names, and therefore registered them in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
Additionally, Complainant sent Respondent a cease-and-desist letter on November 24, 2016. Respondent therefore was made aware of Complainant's rights in the ARLA mark and Complainant's demand that it transfer the disputed domain names to Complainant. On December 9, 2016, Respondent responded to the letter, stating "we have absolutely no intention in using any domain name or trademark that related to Arla; we are more than happy to consider an offer for the transfer of the desired domain names to your client." Complainant contacted Respondent seven more times in an attempt to resolve this dispute amicably. On December 21, 2016, Respondent said it would transfer the domain names, and Respondent's further emails said he would "get the wheels in motion." Despite this, there were no transfers, or any more good faith discussions. It is this Panel's conclusion that Respondent's failure to reply in good faith is akin to failing to respond at all. A failure of a Respondent to respond to a cease-and-desist letter has been considered relevant in a finding of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
Further, Respondent uses the domain names in bad faith in that all of the disputed domain names resolve to PPC sites, which contain links to organic foods and products sponsored by third parties. Respondent's websites intentionally attract Internet users for commercial gain by linking to other websites through which Complainant's competitors sell similar goods and services. This creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a product or service. It has long been held that this type of click through revenue violates the Policy under paragraph 4(b)(iv). See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
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 names <arla-organic.com>, <arlaorganic.com>, <arla-organic-milk.com> <arla-organic-milk.net>, <arla-organic-milk.org>, <arla-organic.net>, <arlaorganic.net>, <arla-organic.org> <arlaorganic.org> be transferred to Complainant.
Sandra A. Sellers
Date: May 1, 2017