WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods Amba v. Hu Yifei
Case No. DCO2017-0046
1. The Parties
Complainant is Arla Foods Amba of Viby J, Denmark, represented by BrandIT GmbH, Switzerland.
Respondent is Hu Yifei of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <castellocheese.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2017. On November 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 of Respondent’s default on January 2, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 14, 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 is an international dairy co-operative with over 19,000 employees, which operates around the world, including in China, where Respondent is based. Complainant makes and sells Castello-brand cheese. Complainant is the parent company of Tholstrup Cheese A/S (“Tholstrup”), which owns the CASTELLO trademark. Specifically, Tholstrup owns the United States of America registered CASTELLO mark (No. 76223442; registered February 12, 2002) as well as numerous other registrations for that mark around the world, including an international registration designating China (No. 678624; August 27, 1997). Complainant owns several domain names incorporating the CASTELLO mark (e.g., <castellocheese.com> (created in 2007); and <castello-cheese.cn> (created in 2015)), which it uses to advertise its products.
Respondent registered the disputed domain name on May 2, 2017. The disputed domain name resolves to a parked page prominently featuring pay-per-click links and an offer for sale asking for EUR 5,999.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to the CASTELLO trademark in which Complainant has rights as it incorporates the trademark in its entirety. Complainant also maintains that Respondent has no rights or legitimate interests in the disputed domain name as there is nothing to indicate that Respondent is (1) commonly known by the disputed domain name, (2) using the disputed domain name in connection with a bona fide offering of goods or services, or (3) making a legitimate, non-commercial use of the disputed domain name. As for Respondent’s bad faith registration and use of the disputed domain name, Complainant contends that this is evidenced by the fact that, considering the use of the CASTELLO mark around the world, including in China, Respondent likely registered the disputed domain name despite Respondent’s awareness of Complainant’s rights in the mark and the fact that upon receiving a cease and desist letter from Complainant, Respondent countered with an offer to sell the disputed domain name at an inflated price (EUR 4,999). Moreover, Complainant shows that Respondent has engaged in a pattern of abusive registrations as evidenced by the fact that Respondent has registered 31 other domain names, including names featuring well-known marks (e.g., <outbacksteakhouse.co>; <smartfood.co>; and <bensherman.co>).
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <castellocheese.co> is confusingly similar to the CASTELLO mark, in which Complainant has rights. The mark is recognizable in the disputed domain name, which incorporates the CASTELLO mark in its entirety. The addition of the word “cheese” does not dispel the confusing similarity.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests in the disputed domain name. As such, the burden of production shifts to Respondent to rebut the prima facie case. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Respondent, however, has failed to respond and offer relevant evidence to demonstrate a bona fide use.
Accordingly, the Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent was plainly aware of the CASTELLO mark and its association with cheese as evidenced by Respondent’s use of the CASTELLO mark in conjunction with the word “cheese” in the disputed domain name. Considering that Complainant uses the CASTELLO mark for its cheese products, the addition of the word “cheese” exacerbates the confusion, making it appear that the disputed domain name is associated with Complainant. Because there is no plausible scenario under which Respondent registered the disputed domain name without awareness of Complainant’s rights in the CASTELLO mark, the Panel finds that Respondent registered the disputed domain name in bad faith.
Further, the Panel concludes that Respondent’s strategic use of CASTELLO and “cheese” in the disputed domain name (which reveals the intent to target Complainant) paired with Respondent’s offer to sell the disputed domain name to Complainant for an amount (EUR 4,999) far in excess of the cost related to the disputed domain name and Respondent’s current offer to sell the disputed domain name for EUR 5,999 (as displayed on the associated website), as well as Respondent’s pattern of abusive registrations support a finding of bad faith use by Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sections 3.1(i) and 3.2.1.
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 <castellocheese.co> be transferred to Complainant.
Lawrence K. Nodine
Date: January 29, 2018