WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods Amba v. Ye Li
Case No. DCO2016-0041
1. The Parties
The Complainant is Arla Foods Amba of Viby J, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Ye Li of Changsha, Hunan, China.
2. The Domain Name and Registrar
The disputed domain name <arlafoods.co> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On December 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 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 December 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2017.
The Center appointed Tan Tee Jim, S.C. as the sole panelist in this matter on January 11, 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
The Complainant, Arla Foods Amba, is a global dairy company and co-operative owned by 12,650 dairy farmers in seven countries. It is the proprietor of a number of trademark registrations as exhibited with the Complaint for the word marks ARLA (for example, International Registration No. 731917 with a registration date of March 20, 2000) and ARLA FOODS (the “Marks”). The Marks are registered ina number of countries, including China, Republic of Korea, Japan, Switzerland and Denmark.
The Complainant also owns multiple domain names incorporating the Marks, such as <arlafoods.com>, <arlafoods.co.uk>, and <arlafoods.net>.
The Respondent is the registrant of the Domain Name at which the web site “www.arlafoods.co” is located. The Domain Name resolves to a pay-per-click (“PPC”) web site (the “Web Site”). The Domain Name was registered on September 14, 2015.
5. Parties’ Contentions
The Complainant contends as follows:
(1) It has strong rights in the Marks because:
(a) It has used the Marks extensively worldwide for over a decade; and
(b) It has registered and used multiple domain names containing the Marks, e.g., <arlafoods.com>, <arlafoods.co.uk>, and <arlafoods.net>, over the years.
(2) The Domain Name is identical or confusingly similar to the Marks as the Respondent has wholly incorporated the Marks into the Domain Name.
(3) The Respondent has no rights or legitimate interests in respect of the Domain Name because of the following reasons:
(a) The WhoIs information “Ye Li” comprises the only evidence in the WhoIs record connecting the Respondent to the Domain Name;
(b) a Google search of the terms “arla” and “china” and “arla foods” and “china” generates search results relating only to the complainant and its business activity;
(c) there is no evidence of the Respondent previously using or preparing to use the Domain Name in connection with a bona fide offering of goods and services; and
(d) the Web Site is a PPC web site where Internet visitors will find links incorporating the Marks, which then divert the Internet visitors to unrelated sites.
(4) The Domain Name was registered and is being used in bad faith because:
(a) The Complainant’s Marks predate the registration of the Domain Name and the Complainant has been using the Marks worldwide for more than a decade, having registered the ARLA mark in many countries including China;
(b) The Respondent had also previously registered the domain name <arlafoods.me>, which was in fact the subject of another UDRP decision, Arla Foods amba v. Ye Li, WIPO Case No. DME2015-0010;
(c) When the Complainant attempted to contact the Respondent at the email address listed in the WhoIs record on September 1, 2016 via a cease-and-desist letter advising the Respondent of the unauthorized use of its Marks within the Domain Name and requesting a voluntary transfer of the Domain Name, the Complainant received a reply from the Respondent on that very day with the text “3500$US”;
(d) The Respondent has offered the Domain Name for sale via auction through Sedo.com, suggesting that the Domain Name was mainly registered for the purpose of selling or otherwise transferring the Domain Name to the Complainant or to the Complainant’s competitors for a profit; and
(e) The Respondent has registered around 1,103 domain names including well-known names with protected trademarks such as <airchina.asia>, <amazonbook.co.za>, and <amextravel.co.za>, thus demonstrating a pattern of abusive conduct constituting evidence of bad faith according to paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As required by paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in order to succeed:
(1) The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain name; and
(3) The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.
A. Identical or Confusingly Similar
The Complainant has furnished evidence of its trademark registrations of the Marks in multiple jurisdictions and its longstanding and extensive supply of dairy products under the Marks worldwide. Like the UDRP panel in the case involving the Complainant (namely, Arla Foods amba v. Ye Li, supra), the Panel is satisfied that the Marks are distinctive of the Complainant’s products, and that the Complainant enjoys strong rights in them.
The Panel notes that the Domain Name incorporates the Marks in their entirety. It is an exact duplicate of the ARLA FOODS mark followed by the country code Top-Level Domain (“ccTLD”) suffix “.co”.
Previous UDRP panel decisions indicate that for the purposes of determining confusing similarity under paragraph 4(a) of the Policy, the ccTLD suffix in the domain name (“.co” in this particular instance) should be disregarded except where the applicable top-level suffix itself forms part of the trademark in question. The Panel agrees with those decisions.
In the present case, when the ccTLD suffix “.co” is discounted, the Domain Name is identical to the Complainant’s ARLA FOODS mark and bears substantial aural and visual similarity to the Complainant’s ARLA mark.
Accordingly, the Panel is satisfied that the Domain Name is confusingly similar to the Marks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if proven, will lead to a finding that the Respondent has rights or legitimate interests in the Domain Name. The said list is reproduced here as follows:
(i) The Respondent is able to demonstrate its use of, or its preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) The Respondent has been commonly known by the Domain Name, even if it has not acquired any trademark or service marks rights therein; or
(iii) The Respondent makes a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
It stands to reason that given the impracticability of proving a negative, the Complainant is only required to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Marks. In this regard, the Panel concurs with the following views expressed by the UDRP panel in Belup d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110:
“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complain[an]t in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4(c) of the Policy.”
In the present case, the Panel is of the view that the Complainant has adequately provided evidence of its rights in the Marks and notes the fact that Internet searches reveal no connection between the Respondent and the Marks. The Complainant has sufficiently established the prima facie case required. The burden of proof thus shifts to the Respondent to rebut this prima facie case.
Regrettably, the Respondent has elected not to submit a response and hence cannot be taken to have discharged its burden of proof.
According to paragraph 14(b) of the Rules, the Panel may “draw such inferences […] as it considers appropriate” if a respondent “does not comply with any provision of or requirement under these Rules”.
Consequently, the Panel infers that the Respondent has no legitimate rights or interests in the Domain Name and is satisfied that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy outlines four non-exclusive scenarios that evidence the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web Site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Web Site or location or of a product or service on the Respondent’s Web Site or location.
The Panel is satisfied that scenarios 1, 2, and 4 have been sufficiently made out.
Evidence of offers by a respondent to sell its registered domain name to a complainant are admissible and would buttress an allegation of bad faith.
The correspondence between the Complainant and the Respondent reveals that the Respondent responded to the Complainant’s cease-and-desist letter with only a fee quote of “3500$US”, without the slightest attempt to address any of the assertions made by the Complainant in the letter regarding its registration of the Domain Name. This suggests to the Panel that the Respondent had registered the Domain Name with a view to selling it to the Complainant or others. This suggestion is bolstered by the Respondent’s offer of the Domain Name via auction through Sedo.com.
In this regard, the Panel agrees with the decision in American Woodmark Corporation v. Domain Registries Foundation / Domain May be for Sale, Check Afternic.Com, Domain Admin, WIPOCase No. D2016-0321 that the fact that the disputed domain name was offered for sale on Sedo.com suggested bad faith on the respondent’s part. The same decision may be made in the present case.
In the Panel’s view, this scenario is also satisfied.
A means through which a complainant can establish a respondent’s “pattern of conduct” under paragraph 4(b)(ii) of the Policy is by furnishing evidence that the respondent has had a history of registering domain names incorporating well-known marks. In Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798, the panel said that:
“[…] the record shows that Respondent has engaged in a pattern of registering domain names that bear striking resemblance to famous marks, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy. Specifically, as annexed to the Complaint Respondent appears to have registered the following domain names: <appl-e.com>, <aple.com>, <newyorktime.us>, <wwwworldcupsoccer.com> and <omega-watches.com>. Moreover, previous panels found at least two other domain names registered by Respondent to be identical or confusingly similar to another entity’s trademark: Nike, Inc. v. Online Marketing Realty c/o Young Jin, NAF Claim No. 0713839 (transfer of <nikestore.com>) and Movado LLC v. Online Marketing Realty, WIPO Case No. D2008-0757 (transfer of <movadowatch.com> and <movadowatches.com>). This pattern of conduct clearly demonstrates bad faith on the part of Respondent.”
The Panel agrees with these views.
In the present case, the Respondent has registered over a thousand domain names bearing well-known marks and names of others, e.g., “Amazon”. It is difficult to accept that the Respondent was not aware of the rights of others in such marks and names. As indicated by the panel in relation to the Marks of the Complainant in Arla Foods amba v Ye Li, supra,
“it [was] likely that the Respondent was aware of the Complainant’s well-known and distinctive trademarks ARLA and ARLA FOODS at the time of registration of the disputed domain name. The Complainant’s trademark ARLA is registered in China, which is the Respondent’s place of residence, and the Complainant was conducting business in China under the trademarks when the Respondent registered the disputed domain name.”
This scenario is also satisfied.
The Respondent’s Web Site is a PPC web site that actively uses the Marks as links which, when clicked on, directs the Internet user to unrelated third party sites. This leads to the strong presumption that the Respondent is purposefully attempting to attract Internet users to the Web Site so that it might profit from PPC advertising when Internet users are redirected from the Respondent’s web site to third party sites.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <arlafoods.co>, be transferred to the Complainant.
Tan Tee Jim, S.C.
Date: January 25, 2017