WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods Amba v. William Wong
Case No. DAU2016-0007
1. The Parties
The Complainant is Arla Foods Amba of Viby, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is William Wong of Port Noarlunga, Australia.
2. The Domain Name and Registrar
The disputed domain name <arlafood.com.au> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2016. On February 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 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 .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 proceedings commenced on February 24, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2016.
The Center appointed Keith Gymer as the sole panelist in this matter on March 31, 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, Arla Foods Amba, is a global dairy company and co-operative owned by 13,500 dairy farmers. It is the proprietor of the ARLA trademark and has registered the trademark ARLA in a number of countries in connection with “food”, including, inter alia:
DATE OF REGISTRATION
TYPE OF TRADEMARK
March 20, 2000
International Registration (Designated Australia)
March 6, 2000
VR 2000 01185
National registration (Denmark)
March 21, 2000
National registration (Australia)
The Complainant has entered into a joint venture, as of May 4, 2015, 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.
The Complainant is also the owner of various domain name registrations, including <arla.com> (which is used for its principal website), <arlafoods.com>, <arlafood.com> and <arla.com.au>.
The Respondent, William Wong, is registered as a sole trader in Australia.
According to the auDA.org.au registry records, the Domain Name <arlafood.com.au> was registered in the name of the Respondent on August 25, 2015.
5. Parties’ Contentions
The domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights
The Domain Name essentially incorporates the Complainant’s registered trademarks ARLA and ARLA FOODS. It is well established that country-code Top-Level Domain (“ccTLD”) suffixes such as “.com.au” are generally irrelevant when making a comparison with a name or mark in which the Complainant has rights. Consequently, the Domain Name is to be considered as confusingly similar to the Complainant’s registered trademarks.
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent is not commonly known by the Domain Name. The WhoIs information is the only evidence in the record which relates the Respondent to the Domain Name. It identifies the registrant as an individual named “William Wong”, which is not similar to the Domain Name. The Respondent has not provided the Complainant with any evidence of his use of, or his demonstrable preparations to use, the Domain Name in connection with any bona fide offering of goods or services.
The Respondent has made no effort to use the Domain Name for any purpose that might explain his choice in a manner consistent with having rights or legitimate interest in the name “Arla”. There is also no evidence that the Respondent has a history of using, or preparing to use, the Domain Name, or registered business names corresponding to the Domain Name, in connection with a bona fide offering of goods or services.
Rather, it is clear that the intention of registering the Domain Name was to take advantage of an association with the business of the Complainant.
When entering the terms “arla” or “arla foods” in the Google search engine, the top returned results point to the Complainant and its products. The Respondent could easily have performed a similar search before registering the Domain Name, or through the Australian Trademark Database “Atmoss”, and would have quickly learnt that ARLA is a trademark owned by the Complainant.
Prior to the filing of the Complaint, the Respondent operated a pay-per-click landing page using the Domain Name, which contained generic links to ads related to topics including lifestyle, entertainment, business and shopping.
Those, like the Respondent, who register domain names in large numbers for targeted advertising through automated programs and processes must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others. Although there may be nothing illegitimate per se in using a domain name parking service, it has been previously established that linking a domain name to such service, with a trademark owner’s name in mind, and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to that parking service page, is a different matter, and does not amount to a legitimate interest in that domain name under the Policy (see, for example, Express Scripts, Inc. v. Windgather Investments Limited / Mr Cartwright, WIPO Case No. D2007-0267 and Owens Corning v. NA, WIPO Case No. D2007-1143).
In these circumstances, the Respondent’s use of the Domain Name cannot be considered as legitimate under the Policy.
The domain namewas registered or is subsequently being used in bad faith.
The Complainant sent the Respondent a cease and desist letter on November 9, 2015. The Complainant advised the Respondent that the unauthorized use of the ARLA trademark within the Domain Name violated the Complainant’s rights in the trademark. The Complainant requested the voluntary transfer of the Domain Name. The Complainant received an email failure notification, from which it was clear that the registrant’s email address was not accurate. Therefore, a WhoIs complaint was lodged with the Registrar. The Registrar subsequently suspended the Domain Name owing to the false WhoIs record. The Respondent has disregarded any communication.
Since its efforts to resolve the matter directly were unsuccessful, the Complainant chose to file a Complaint under the .auDRP. The Complainant notes 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, 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.
The Policy does allow for the monetizing of websites, when such use is not in bad faith. Schedule C of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) specifically limits the registration of domain names for the purpose of domain name monetization to exclude domain names that incorporate a brand name in existence at the time the domain name was registered. Thus, Respondent has registered the Domain Name contrary to auDA’s Domain Name Eligibility and Allocation Policy Rules, because they require the registrant to have a “close and substantial connection” with the domain name and, in particular, that “the domain name must not be, or incorporate, an entity name or […] brand name in existence at the time the domain name was registered” and “this condition is intended to ensure that domain monetization is not used as a cover for cybersquatting”. The Complainant draws attention to HCOA Pty Ltd, Molescan Australia Pty Ltd v. The Trustee for the Terantica Trust / Terry Lockitch, WIPO Case No. DAU2013-0003,where similar circumstances applied, and the panel ruled in the complainant’s favour.
On January 9, 2016, a contact was received, apparently on behalf of the Respondent, by the Complainant’s previous representative, with an offer to sell the Domain Name. This offer to sell the Domain Name is further evidence that the Respondent can have no legitimate interest in the Domain Name other than to capitalize on the reputation and value of the ARLA trademark.
The Complainant has made substantial use and promotion of its trademark in the field of dairy and it is inconceivable that the Respondent was not aware of the existence of the ARLA trademarks at the time of registration of the Domain Name. The Respondent obviously derives income from the links listed on the parking site to which the Domain Name resolves, by diverting Internet users seeking products under the Complainant’s trademarks to the Respondent’s own pay-per-click website. This constitutes bad faith use of the Domain Name under paragraph 4(b) of the Policy (see AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
Consequently, the Respondent should be considered to have registered, and to be using, the Domain Name in bad faith.
The Complainant requests that the Domain Name be transferred to the Complainant.
No Response was provided by the Respondent.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove:
(i) the Domain Name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Note 2); and
(iii) the Domain Name has been registered or subsequently used in bad faith.
For the purposes of the Policy, auDA has determined that a “name … in which the complainant has rights” refers to:
a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
b) the complainant’s personal name.
For the purposes of the 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.
The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainants of the burden of proving their Case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate”.
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The Complainant has demonstrated registered trademark rights in ARLA, including by virtue of Australian trademark registration 828567, and under the Australian designation of IR 731917. Additionally, the Complainant has evidenced rights through registration of the composite mark, ARLA FOODS, as VR 2000 01185 in Denmark.
It is accepted that, for the purposes of the Policy, the domain suffix “.com.au” is to be typically discounted in the consideration of the identity or similarity between a domain name and a name or mark.
The Panel therefore finds that the Domain Name <arlafood.com.au> is confusingly similar to the trademarks ARLA and ARLA FOODS, in which the Complainant has rights.
The Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There is no evidence to suggest that the Respondent registered the Domain Name innocently on the basis of any prior rights of its own, nor that it did so in ignorance of the Complainant’s rights in the ARLA marks. The Respondent has made no claim to any alternative bona fide intended use for the Domain Name.
The Panel therefore accepts the Complainant’s assertion and holds that the Respondent has no genuine rights or legitimate interests in the Domain Name.
The Complainant has therefore also met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
The evidence provided by the Complainant shows that the Respondent has sought to exploit the Domain Name, via monetized pay-per-click links, for its own profit. In the absence of any evidence to the contrary, the Panel considers that, on the balance of probability, the Respondent’s registration of the Domain Name was made with knowledge of the Complainant’s mark and business (probably in light of the publicity around the Complainant’s joint venture in Australia in 2015), and in contravention of the auDA Policy rules on Eligibility. The Respondent thereby misappropriated the Complainant’s rights and goodwill in its ARLA and ARLA FOODS marks. The Respondent’s use of the Domain Name for a landing page with pay-per-click links unfairly exploited the Complainant’s name and reputation, without authorization.
In the Panel’s view, the Respondent’s conduct falls squarely within the examples of “Registration or Subsequent Use in Bad Faith” given at paragraph 4(b)(iv) of Schedule A of the Policy.
The Panel finds that, on the evidence, the Domain Name has been registered and subsequently used in bad faith.
The Complainant has fulfilled the requirement of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <arlafood.com.au>, be transferred to the Complainant.
Date: April 6, 2016