WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Lactalis v. Domain Administrator, See PrivacyGuardian.org / Auber Auber, A CRH Company
Case No. D2021-3827
1. The Parties
The Complainant is Groupe Lactalis, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Auber Auber, A CRH Company, United States.
2. The Domain Names and Registrar
The disputed domain names <svetlanatasevskamklactaliscom.xyz>, <svetlanatasevskamklactalis.xyz>, <svetlanatasevskamlactaliscom.xyz> (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2021, the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 26, 2021.
The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 4, 2022. 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 was founded in 1933, and has become one of the largest dairy groups in the world. It has 250 production sites in 50 countries around the world, with more than 80,000 employees in 94 countries and a turnover of EUR 20 billion.
The Complainant owns several trademarks relating to its LACTALIS trademark, such as French trademark no. 4438490, filed on March 20, 2018, European Union trademark no. 017959526, filed on September 20, 2018 and International trademark no. 1135514, registered on July 19, 2005.,
The Complainant also owns domain names that include the Complainant’s trademark, e.g. <lactalis.com>, <lactalis.eu>, <lactalis.org> and <lactalis.mk>.
The Domain Names were registered on June 11 and June 13, 2021. At the time of drafting the Decision, two of the Domain Names redirect to the same error page, while the third redirects to a page marked as
malicious by the search engine.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are registered to the same person or under the common control by connected parties, and thus that consolidation would be fair and equitable. Inter alia because the Domain Names were reserved anonymously with the same registrar. The Domain Names were also registered very close in time, and the last update indicated on the Domain Names was made on the same day. Two of the domain names redirect to the same error page, the third redirects to a page marked as malicious by the search engine. Two of the Domain Names have the same IP Address, and all three are hosted by the same service. All three Domain Names incorporate the Complainant’s trademark and the name of a purchasing officer of a subsidiary of the Complainant. Two of the Domain Names include the letters “mk” which refer to Macedonia.
The Complainant provides evidence of trademark registrations, and argues that the Domain Names are confusingly similar to the Complainant’s trademark and also to the name of its employee. The addition of “mk” or “m” does not prevent a finding of confusing similarity with the Complainant’s trademark. The combination of these elements does not avoid confusion but, on the contrary, is likely to reinforce it because it is associated to the Complainant.
The Complainant asserts that the Respondent is not authorized, licensed or permitted to use the Complainant’s trademark. The Respondent cannot establish rights in the Domain Names as it has not made any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. The Complainant submits that the objectives of the registrations of the Domain Names are nothing other than to block and disadvantage the Complainant in its commercial activities. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Names.
The Complainant argues that the Respondent has intentionally attempted to attract Internet users, for commercial gain, by creating confusion with the Complainant’s trademark. The Complainant’s trademark is a term of invention that has no meaning in any language. The trademark has been considered in many occasions as being distinctive. Moreover, the Complainant further submits that the Respondent has impersonated someone when registered the Domain Names. The Respondent in the Whois file does not correspond to any company, and indicates that the registrations were made in bad faith. The Respondent’s use of a privacy protection service to conceal its identity, further points to bad faith. Finally, the Complainant argues that each of the Domain Names have mail servers configured that indicates that fraudulent emails may be sent for phishing purposes.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural matters
The Complainant argues that the Domain Names are under the common control. The Panel has carefully examined the evidence in the case file and notes that the Respondents have not – despite given the opportunity – argued or filed any evidence to rebut. The Panel concludes that consolidation would be fair and equitable to the parties. Based on the evidence, and a consideration of procedural efficiency, the Panel orders consolidation of the Domain Names; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
B. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark LACTALIS. The test for confusing similarity involves a comparison between the trademark and the Domain Names. The Domain Names incorporate the Complainant’s trademark, with the addition of the name of an employee of the Complainant and the terms “com”, “mk” and “m”. The additions do not prevent a finding of confusing similarity between the Domain Names and the trademark.
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains, see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondents to register the Domain Names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondents have registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondents cannot establish rights in the Domain Names, particularly as they have not made use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel agrees with the Complainant that it is likely that the Respondents were aware of the Complainant when the Respondents registered the Domain Names. The Domain Names incorporate the Complainant’s distinctive trademark, with the addition of the name of an employee of the Complainant and the terms “.com”, “mk” and “m”.
It seems to the Panel that the Respondents have registered the Domain Names to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. The fact that most of the Domain Names currently are not resolving to active websites does not prevent a finding of bad faith, given the renown of the Complainant’s trademark, see WIPO Overview 3.0, section 3.3. The Respondents’ use of a privacy protection service to conceal its identity, points to bad faith. Finally, the fact that the Respondent has impersonated someone when registering the Domain Names, and configured mail servers, further indicates in the context of the case bad faith.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of 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 Names <svetlanatasevskamklactaliscom.xyz>, <svetlanatasevskamklactalis.xyz> and <svetlanatasevskamlactaliscom.xyz> be transferred to the Complainant.
Date: January 17, 2022