Complainant is Arla Foods Amba of Viby J, Denmark, represented by BrandIT GmbH, Switzerland.
Respondent is lawyer wen of Tianjin, China, self represented.
The disputed domain name <arla.shop> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2017. On March 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 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 March 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2017. The Response was filed with the Center on March 29, 2017.
In light of the Response, on March 29, 2017, the Center invited Complainant to comment if it would like to suspend the proceeding to explore settlement with Respondent. A couple of emails were received by the Center from the Parties between March 29, 2017 and April 3, 2017.
On April 4, 2017, the Center informed the Parties as Complainant did not request to suspend the proceeding by the specified due date, the Center would proceed with panel appointment.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on April 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.
Complainant is a global dairy company and co-operative owned by 12,650 dairy farmers in seven countries. Complainant has over 19,000 employees worldwide and had a global revenue of EUR 10.3 billion in 2015. Complainant has a significant presence in the Asia Pacific region and China, where Respondent is located. It targets its Chinese customers through the website "www.arla.com.cn", a Chinese language site.
Complainant owns registrations for ARLA and ARLA FOODS trademarks (the ARLA marks) in numerous countries, including China. Complainant also owns various domain names containing the ARLA and ARLA FOODS marks, including <arla.com.cn>.
Respondent registered the disputed domain name on January 1, 2017. According to Complainant, the domain name does not resolve to an active website.
On January 17, 2017, Complainant sent a cease and desist letter to the then owner of the domain, "Jianhui Wenn". Complainant sent reminders on January 20 and 27, 2017, but received no response. While Complainant was preparing this Complaint, the registrant name in WhoIs changed from "Jianhui Wenn" to "Lawyer Wen", and the official email changed, but the physical address stayed the same. Complainant sent another cease and desist letter on February 28, 2017, but no response was received.
Respondent sent the Center a Response to this Complaint on March 29, 2017. In that Response, Respondent argued that 1) "arla is a general symbol combined by 4-letter, and is a common word, arla widely used in the world"; 2) Complainant's rights are limited to certain categories of goods; 3) Respondent has not used the disputed domain name so there is no damage to Complainant, and Respondent "cannot be considered malicious"; 4) "Respondent was an honest person who patch up the quarrel and preferred transferring the domain name to complainant for $100, but the complainant was not willing to pay $100"; and 5) "respondent would rather be free to transfer own legitimate domain name to a good reputation of the use of other units of arla, such as Germany's arla company, nor want to see the implement possibility of the complainant overbearing And predatory behavior". Based on this last statement, the Center emailed the Parties and indicated that if the Parties wanted to explore settlement options, Complainant should submit a request for suspension by April 3, 2017.
The parties continued to email. On March 29, 2017, pertaining to Respondent's last statement about its offer to transfer for USD 100, Complainant stated that it did not receive such a communication. It then said "Complainant would like to make clear that it is prepared to cover your reasonable out of pocket expenses in relation to registering the disputed domain name. You mention a figure of $100 for the <arla.shop> domain in your response, which we would consider to be a reasonable estimate of such expenses and one which Complainant would be prepared to pay."
However, on March 31, 2017, Respondent emailed Complainant and requested USD 1,000 for the transfer. Complainant then forwarded Respondent's email to the Center, alleging that this constituted bad faith. On the same day, Respondent emailed the Center and said "I shall promise a deal with the complainant. I had sociated the complainant. Sincerely, lawyer Wen." The Parties did not settle.
Complainant asserts that it has rights in the ARLA trademark. It contends that the disputed domain name is confusingly similar to Complainant's mark because it consists of Complainant's ARLA mark in its entirety. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
As set forth above, Respondent sent the Center a Response to the Complaint on March 29, 2017. In that Response, Respondent argued that 1) "arla is a general symbol combined by 4-letter, and is a common word, arla widely used in the world"; 2) Complainant's rights are limited to certain categories of goods; 3) Respondent has not used the disputed domain name so there is no damage to Complainant, and Respondent "cannot be considered malicious".
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As set forth above, Complainant owns many international trademark registrations for the ARLA mark. The disputed domain name is confusingly similar to Complainant's ARLA mark; it contains Complainant's mark in its entirety, except for the generic Top-Level Domain ("gTLD"). It is a longstanding principle that the TLD is irrelevant to the consideration of the questions of identical or confusing similarity for purposes of the Policy. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.
In its Response, Respondent contended that "arla is a general symbol combined by 4-letter, and is a common word, arla widely used in the world." However, Respondent provided no support for this contention. Moreover, previous UDRP decisions have found that ARLA is considered a well-known mark. See Arla Foods Amba v. Frederik Enghall, WIPO Case No. D2016-1205 (<arla.one>); Arla Foods Amba v. Zhao Ke, WIPO Case No. DMX2016-0012 (<arlafoods.mx>); Arla Foods Amba v. Graytech Hosting Pty Ltd. ABN 49106229476, Elizabeth Rose, WIPO Case No. DAU2016-0001 (<arlafoods.com.au>); and Arla Foods amba v. Ye Li, WIPO Case No. DME2015-0010 (<arlafoods.me>).
Accordingly, to the extent the Respondent's assertion could be taken as an argument against a finding of identity or confusing similarity under the Policy, the Panel finds such argument without merit.
Consequently, Complainant has shown that it has met Paragraph 4(a)(i).
In its Response, Respondent argued against finding that Complainant had rights in the mark, but offered no arguments or evidence to prove that Respondent itself had rights or legitimate interests.
Complainant has exclusive rights in the ARLA mark and has not authorized Respondent to register and use the disputed domain name <arla.shop>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the ARLA mark. Respondent is not commonly known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Respondent does not have rights or legitimate interests in the disputed domain name.
It is difficult to conceive that Respondent did not know of Complainant's marks and products when Respondent registered the disputed domain name. As set forth above, the ARLA products are protected by various trademark registrations, including in China. Complainant uses the ARLA mark for its ARLA products. All of this occurred before Respondent registered <arla.shop> on January 1, 2017. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
Additionally, Complainant sent Respondent a cease and desist letter on January 13, 2017, and reminders on January 20 and 27, 2017, and another to the newly listed Respondent on February 28, 2017. Respondent therefore was made aware of Complainant's rights in the ARLA mark and Complainant's demand that it transfer the disputed domain name to Complainant. A failure of a Respondent to respond to a cease and desist letter has been considered relevant in finding of bad faith. See 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.
Respondent also uses the disputed domain name in bad faith. The disputed domain name did not resolve to an active website at the time of filing of the Complaint. UDRP decisions have long established that passive holding of a domain name does not prevent a finding of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Before the Center instituted this proceeding, Complainant and Respondent carried on correspondence concerning Complainant's purchasing the disputed domain name. As set forth above, Respondent first mentioned (in its Response and an email) a price of USD 100 to transfer the disputed domain name; Complainant responded that it had not received such an offer but would be willing to pay USD 100. Respondent did not respond to that. Next, Respondent offered to transfer the disputed domain name for USD 1,000. This is considered further evidence of bad faith under the Policy, paragraph 4(b)(i), as it demonstrates Respondent's apparent intention to transfer the disputed domain name to Complainant in excess of out-of-pocket costs. See, e.g.,The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd, WIPO Case No. D2000-0124.
For these reasons, Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b) 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 disputed domain name <arla.shop> be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: April 25, 2017