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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valio Oy v. Muhammad Tayab, Dairy Engineering International

Case No. D2017-2376

1. The Parties

Complainant is Valio Oy of Helsinki, Finland, represented by Castrén & Snellman Attorneys Ltd, Finland.

Respondent is Muhammad Tayab, Dairy Engineering International of Sheikhupura, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <valiodairy.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 December 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 28, 2017.

The Center appointed Michael A. Albert as the sole panelist in this matter on January 17, 2018. 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 Valio Oy, founded in 1905, is the largest dairy company in Finland. Complainant's product range is comprised of several categories such as milk, butter, yogurt, milk powder, infant formula, cream, sauce, cheese, juice and snacks. Complainant is an expert in lactose free dairy products and was the first to launch lactose free milk in the world in 2001. Complainant continues to offer the widest range of lactose free products globally and is well known.

Complainant's products are sold in several countries, including Finland, United Kingdom of Great Britain and Northern Ireland, Russian Federation, United States of America, and China. Complainant owns hundreds of trademark registrations globally incorporating its well-known VALIO mark (i.a. European Union trademark 000174359 for VALIO registered August 2, 2000).

The disputed domain name was registered on November 23, 2012 and currently resolves to a website promoting various dairy products whilst prominently displaying Complainant's logo.

5. Parties' Contentions

A. Complainant

Complainant alleges that the word "dairy" as a generic and descriptive word is not enough to distinguish the disputed domain name from its well-known VALIO marks. Complainant argues the word "dairy" actually increases the likelihood of confusion taking into account that Complainant's marks are registered and used for dairy products.

Complainant alleges that Respondent has no rights or legitimate interests in the VALIO marks. Respondent is not in any way related to Complainant's business, nor has Complainant ever given any authorization to Respondent to use or register the disputed domain name.

Complainant alleges Respondent maintains and operates the website "www.dairyengineeringintl.com" where it states that "Valio Dairy" is Respondent's sister company. However, there is no record of a company named "Valio Dairy" being registered in Pakistan where Respondent resides.

Complainant also alleges Respondent had actual knowledge of Complainant's famous VALIO mark, as evidenced by Respondent's use of the mark in the disputed domain name. Complainant argues Respondent is aiming to gain more visitors to its website by exploiting the reputation of Complainant and its VALIO marks. Also, Complainant argues Respondent is tarnishing Complainant and its VALIO marks by copying Complainant's logo and attaching it to a website and possibly to products of lesser quality than Complainant's products.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated rights to the VALIO mark. Respondent's <valiodairy.com> domain name is identical to Complainant's VALIO mark, and incorporates Complainant's VALIO mark in full, adding only "dairy" after Complainant's mark. Numerous panel decisions have found that the mere addition of descriptive terms to a Complainant's mark generally fails to produce a domain name distinct from Complainant's mark. See, e.g., Lotto Sport Italia S.p.A. v. David Dent, WIPO Case No. D2016-2532. ("It is well established that where the distinctive and prominent element of a disputed domain name is Complainant's mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark"); see also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.").

The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has not authorized, licensed, or consented to Respondent's registration and use of a domain name incorporating Complainant's VALIO mark, or any confusingly similar variation thereof. In addition, Complainant registered the VALIO mark at least 12 years prior to Respondent's registration of the disputed domain name <valiodairy.com> on November 23, 2012.

Respondent's failure to respond to the Complaint, coupled with Complainant's prima facie case, are indicative that Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant has established that Respondent registered and used the disputed domain name in bad faith. Paragraph 4(b)(iv) of the Policy explains that there is evidence of bad faith if, "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

Respondent is highly likely to have had actual knowledge of Complainant's famous VALIO mark, as evidenced by Respondent's use of the identical mark in the disputed domain name. The fact that Respondent registered a domain name which incorporates the trademark of a well-known company is alone sufficient to give rise to an inference of bad faith.

In addition, Respondent is using the disputed domain name to market dairy products and juice – identical products for which the VALIO marks are registered and used. It is evident that Respondent had Complainant's trademark in mind when registering the disputed domain name, as it is confusingly similar to said trademark.

Further, Respondent copied Complainant's registered VALIO figurative marks (Reg. Nos. international trademark 991381, registered on November 17, 2008; European Union trademark 008148983, registered on March 1, 2010; and European Union trademark 016733628, registered on September 19, 2017) on the website at the disputed domain name, which is additional evidence of bad faith.

7. Decision

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 <valiodairy.com> be transferred to Complainant.

Michael A. Albert
Sole Panelist
Date: February 5, 2018

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