WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods Amba v. Graytech Hosting Pty Ltd. ABN 49106229476, Elizabeth Rose
Case No. DAU2016-0001
1. The Parties
The Complainant is Arla Foods Amba of Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Graytech Hosting Pty Ltd. ABN 49106229476, Elizabeth Rose of France.
2. The Domain Name and Registrar
The disputed domain name <arlafoods.com.au> is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2016. On January 6, 2016, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On January 8, 2016, TPP Wholesale Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 proceeding commenced on January 12, 2016. In response to an email communication from the Respondent of January 20, 2016, the Complainant requested a suspension of the administrative proceedings in order to explore a settlement on January 26, 2016. The administrative proceeding was suspended on January 27, 2016. On February 16, 2016 the Complainant requested re-institution of the proceeding. On February 17, 2016, the proceeding was reinstituted. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on March 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.
On March 22, 2016, due to exceptional circumstances, the Panel extended the due date for rendering its decision to March 29, 2016.
4. Factual Background
The Complainant is one of the world’s largest global dairy companies, operating internationally in 34 countries and is owned by 13,500 dairy farmers. The Complainant owns registered marks for ARLA in a number of countries and ARLA FOODS in Denmark. In Australia its marks were registered in 2000.
The Complainant has entered a joint venture with Australia’s largest cheese importer, F. Mayer Imports. Arla Foods Mayer Australia Pty Ltd is the name of the new joint venture with its head office in Sydney, which is set to market, sell, and distribute imported and local dairy specialty products to the Australian market. The joint venture came into effect on May 4, 2015, four months prior to the registration of the disputed domain name.
The Complainant has registered a number of domain names under generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (“ccTLD”) containing the term “arla”, for example <arlafood.co.uk> (created on Jan 29, 2007), <arla.com> (created on July 15, 1996 ), <arlafood.com> (created on October 6, 2004). The Complainant uses these domain names to connect websites through which it informs potential customers about its marks, and its products and services.
The Complainant has previously been successful in a number of cases under the Policy. The Complainant’s rights have been recognized by a number of panels in those cases. For example, in Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, WIPO Case No. D2012-0875, the panel found that: “the trademark ARLA has indeed a high level of recognition around the world, also confirmed by the UDRP cases handled by the Center involving domain names confusingly similar to it... Thus the Panel concludes that the trademark ARLA is recognized by global Internet users.”
The disputed domain name was registered on September 15, 2015. The case file includes a screenshot of the website at the disputed domain name, as it was in December, 2015. The screenshot shows a simple website, which has the appearance of a “landing” page, with a number of apparent links in German, and some in English such as “Arla Foods Ingredients”, and “Arla Lactofree”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its registered marks. The disputed domain name directly incorporates the Complainant’s ARLA and ARLA FOODS marks.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is not commonly known by the disputed domain name. An email including the term “domainestore”, associated with the WhoIs record, suggests that the Respondent is engaged in acquiring and selling domain names. The Respondent has not otherwise provided evidence of a bona fide use. Further, the disputed domain name reverts to a pay-per-click landing page. It has previously been established that linking a domain name to such a service, with a trademark owner’s name in mind, and in the hope and expectation that Internet users searching for information about the Complainant will be directed to that parking page, does not provide a legitimate interest in that domain name under the Policy. On that parking page, the disputed domain name is also listed for sale.
The Complainant also says that the disputed domain name was registered or has subsequently been used in bad faith. The Complainant first tried to contact the Respondent in November 2015 through a cease and desist letter. No response was received, despite a reminder been sent. The Complainant also states that the disputed domain name registration was in breach of the auDA Eligibility and Allocated Policy, which requires a registrant to have a “close and substantial connection” with the domain name. The Complainant refers to past cases under the Policy involving similar circumstances and decided in the then complainant’s favour. As to registration in bad faith, the Complainant says it is inconceivable that the Respondent was not aware of the Complainant when it registered the disputed domain name. As to use in bad faith, the Complainant says that the Respondent obviously derives income from the pay-per-click website, which constitutes bad faith under paragraph 4(b) of the Policy.
On January 20, 2016, the Director of the named registrant of the disputed domain name (Graytech Hosting Pty Ltd) sent an email to the Center. The email advised that the disputed domain name was not purchased by Graytech Hosting Pty Ltd, and was registered using that entity’s name and ABN without their knowledge. That email also stated that “Elizabeth Rose, as listed in the whois database, is not a current or past customer or employee of Graytech Hosting Pty Ltd. While Graytech Hosting is an Internet Hosting Company providing Domain Name Registrations and a reseller of TPP Wholesale, this domain does not appear as a domain in our reseller account, thus we have no administrative control over the domain.”
On Januray 21, 2016, the Center communicated to both parties, noting that any consideration of the Respondent’s identity shall be for the Panel to determine, in accordance with its discretion under the Rules.
Also on that day, the Registrar sent an email to the Center, and copied to the parties, stating that the registrant has full control of the disputed domain name, whether or not their details were misused by someone else to register it. The Registrar noted that the Director of Graytech Hosting Pty Ltd could contact the Registrar to transfer the disputed domain name to the Complainant.
Following a suspension of these proceedings (mentioned above), the Complainant asked the Respondent to complete a settlement agreement to facilitate the transfer of the disputed domain name. It appears that this agreement was never signed.
The Complainant asked the Center to reinstitute the proceedings, after having received an email from an apparent third party (from an email address that was not in the WhoIs details for the disputed domain name). The Complainant stated that it did not know how this email is related to the Respondent. The email, dated Feburary 9, 2016 apparently to the Complainant, stated that “Several weeks ago I sent you an email about arlafoods.com.au, now you can go to www.arlafoods.com.au to make your offer.” In other words, this email appeared to be inviting the Complainant to make an offer of money for the transfer of the disputed domain name.
After the proceedings were reinstituted, no Response was received by the due day of February 22, 2016.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith or subsequently used in bad faith.
Each of these elements are addressed in turn below, immediately after a brief consideration of the identity of the Respondent. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
A. Identity of the Respondent
From the sequence of events outlined above, the true identity of the Respondent is not apparent. The named registrant denied that it registered the disputed domain name, and claims that it must have been registered using its details and without its knowledge. An unknown third party has also communicated with the Complainant purporting to offer the disputed domain name for sale.
But identifying the actual identity of the Respondent is not a pre-requisite for this proceeding. It is sufficient for the Complaint to proceed on the basis of identifying the named registrant, and the contact details to the extent known by the Complainant, in accordance with paragraph 3(b)(v) of the Rules. See e.g., Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886
Regardless of the actual identity of the Respondent in this case, there is no doubt that the registration details in the WhoIs record were provided by that Respondent. It would be within the Respondent’s gift to have corrected those details or communicated in connection with this case. The Respondent’s failure to communicate in this case is not a factor that helps it.
B. Identical or Confusingly Similar
The Complainant provided evidence of its trademark registrations, which is sufficient to establish that it has rights in those marks under paragraph 4(a)(i) of the Policy. In Australia, the Complainant has trademark registrations for ARLA. In Denmark, the Complainant also has a registered mark for ARLA FOODS.
The Complainant must next establish that the disputed domain name is identical or confusingly similar to a mark in which it has rights. There is little doubt that the disputed domain name is relevantly identical to the Complainant’s ARLA FOODS mark. That mark is wholly incorporated in the disputed domain name, without change. It is well-established that the domain name extensions are typically irrelevant for the purpose of this comparison.
Although this is sufficient for the Complainant to establish its case under this element of the Policy, the Panel also finds that the disputed domain name is also confusingly similar to its ARLA mark. That mark is also wholly incorporated in the disputed domain name and adds only the term “foods”. Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, WIPO Case No. D2012-0875 dealt with a relevantly identical domain name (<arla-foods.org>) to the disputed domain name in this case. The panel in that case found that the generic term “foods” added at the end of the second-level domain name was not sufficient to make it different for purposes of the UDRP from the trademark ARLA. The panel found that the term “foods” simply indicates the kind of products that the Complainant produces and commercializes with the trademark ARLA.
For these reasons, the Panel finds that the disputed domain name is identical with the Complainant’s ARLA FOODS mark, and confusingly similar with its ARLA mark.
C. Rights or Legitimate Interests
At a minimum, the burden on the Complainant under this element is to establish a prima facie case against the Respondent. See paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). A prima facie case is one that is credible in the absence of evidence to the contrary. This general position under the Policy is the same as that under the UDRP: see the auDA Overview of Panel Views on Selected auDRP Questions First Edition, paragraph 2.1.
The Complainant has established a prima face case against the Respondent in relation to this second element under the Policy. The burden is therefore on the Respondent to rebut that argument.
The Respondent has provided no substantive case in reply to the Complaint. There is otherwise little evidence in the case file that would, on its own, suggest that the Respondent might have some right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established its case for the purpose of paragraph 4(a)(ii) of the Policy.
D. Registered or Subsequently Used in Bad Faith
The third element which the Complainant must show is that the disputed domain name has been registered or used in bad faith.
The Complainant relies on a number of grounds for this purpose, which the Panel has addressed in turn as follows:
Firstly, the Complainant refers to the Respondent’s failure to respond to a “cease and desist letter”. The Complainant argues that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith in other cases, e.g., 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.
This Panel does not however subscribe to the view that a mere failure to respond to a “cease and desist letter”, by itself, is evidence of bad faith. Rather the issue is whether a failure to respond is “without good reason”: Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022. Whether or not there is a good reason must be considered in its context. Such a failure, for example, may be evidence that a respondent is aware of a complainant’s mark, at least after it received the letter. In this case, there is no evidence that the Respondent did not, in fact, receive the “cease and desist letter” which the Complainant sent (to the email address in the WhoIs details). As such, the Respondent’s ongoing use of the disputed domain name, after receiving the letter, indicates that it was aware of the Complainant’s rights, but continued to use it. The Panel is otherwise unable to identify any good reason why the Respondent in this case may not have replied to the Complainant’s cease and desist letter, and the Respondent has not provided any.
Secondly, the Complainant says that the Respondent registered the disputed domain name contrary to auDA’s Domain Name Eligibility and Allocation Policy Rules, which requires the registrant to have a “close and substantial connection” with the domain name. Such a factor is not, however, one that is directly one of the matters which the Complainant must establish under paragraph 4(a) of the Policy. The Complainant refers to HCOA Pty Ltd, Molescan Australia Pty Ltd v. The Trustee for the Terantica Trust / Terry Lockitch, WIPO Case No. DAU2013-0003. In that case, the panel found that then respondent’s registration of the disputed domain name was not one permitted by the .auDA Eligibility Rules and, as such, the respondent could not have had rights or legitimate interests in the dispute domain name. This Panel is however more reluctant to import the terms of the registration agreement entirely into one of the factors (either paragraph 4(a)(ii) or (iii)) which a complainant must establish under the Policy. The same approach appears to have been taken by auDA).1
Regardless, and as noted above, there is little evidence in this case that the Respondent has rights or legitimate interests in the disputed domain name. This includes a lack of evidence of the factors that might demonstrate rights or legitimate interests, set out in paragraph 4(c) of the Policy: There is little evidence that the Respondent is making a relevant bona fide use of the disputed domain name; is commonly known by the disputed domain name; or is making a legitimate noncommerical or fair use of it. While these factors are, strictly, separate to the issue of bad faith, they are not entirely unrelated.
Thirdly, the Complainant says that it is inconceivable that the Respondent was unaware of the Complainant’s marks when it registered the disputed domain name. The Panel agrees. The Complainant’s marks have been registered for a substantial period (almost 15 years) before the Respondent registered the disputed domain name. The disputed domain name is identical to the Complainant’s ARLA FOODS mark, and confusingly similar to its ARLA mark. The disputed domain name reverts to a website that includes links closely associated with the Complainant. The fame of the Complainant’s marks has been recognized in a number of previous domain name cases, cited above. In these circumstances, and without any contrary case from the Respondent, there is a reasonable inference that the Respondent registered the disputed domain name with the Complainant’s marks in mind, and was seeking some advantage from the confusion between those marks and the disputed domain name.
Fourthly, the Complainant argues that the link of the disputed domain name to a “pay-per-click” website is indicative of bad faith. In this connection, the Complainant refers to AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230. That case, however, determined that such a use, in circumstances involving a serial cyber-squatter, was a use that did not give a registrant a right or legitimate interest in a domain name, rather than an issue going to bad faith.
The Panel is however aware of a series of prior panel decisions finding that the use of parking pages may provide evidence of bad faith registration and use of a disputed domain name. For example, in Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462, the panel found that “The Respondent is deriving a financial benefit from web traffic diverted through the Domain Name to linked websites on the domain parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the [UDRP]. Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.”
The Panel considers that the circumstances in this case are relevantly similar. There is a reasonable inference that the Respondent is obtaining, or at least hoping to obtain, some financial benefit from the links on the landing page to which the disputed domain name reverts. Various of the links are to commercial products, including those related to the Complainant. As noted above, the Respondent has registered a domain name that is identical and confusingly similar to the Complainant’s marks, and there is no evidence that the Respondent has rights or legitimate interests in the disputed domain name. In these circumstances, the Respondent’s registration is similarly suggestive of bad faith under paragraph 4(b)(iv) of the Policy.
Fifthly, and although not a factor advanced by the Complainant in this connection, the Panel considers that a finding of bad faith is reinforced by the somewhat opaque identity of the Respondent. The Panel cannot identify any good reason why the Respondent in this case might have not clearly identified itself, or replied, in connection with these proceedings, unless the Respondent felt it had no good case to answer. There is also some evidence that the Respondent, or a person associated with it, has offered the disputed domain name for sale.
Accordingly, the Panel finds that the disputed domain name was registered in bad faith for the second, third, fourth and fifth reasons elaborated above. Although strictly unnecessary to go further, the Panel also finds that the disputed domain name was used in bad faith, for all five of the factors elaborated above
For all 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, <arlafoods.com.au>, be transferred to the Complainant.
James A. Barker
Date: March 29, 2016
1 Relevantly, the footnote to paragraph 4(a)(ii) of the Policy states that “For the purposes of this policy, auDA has determined that ‘rights or legitimate interests in respect of the domain name’ are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.” If a registrant’s compliance with that eligibility criteria is not indicative of such rights or legitimate interests, the registrant’s potential non-compliance would not appear determinative either.