WIPO Domain Name Decision: D2006-0409

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arla Foods amba v. Jucco Holdings

Case No. D2006-0409

1. The Parties

The Complainant is Arla Foods amba, Copenhagen, Denmark, represented by Sandel, Løje & Wallberg, Denmark.

The Respondent is Jucco Holdings, Los Angeles, United States of America.

2. The Domain Name and Registrar

The disputed domain name <arlafood.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On April 3, 2006, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On April 3, 2006, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. After receiving notice that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on the April 7, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2006.

The Center appointed Amund Grimstad as the sole panelist in this matter on May 10, 2006. 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

Arla Foods is a co-operative owned by approximately 11,600 milk producers in Denmark and Sweden.

The Arla Foods Group is Europe’s largest dairy company, with a turnover of DKK 48 billion in 2003/04.

Besides Denmark, Sweden and the United Kingdom, Arla Foods operates subsidiaries in 19 other countries. The Group exclusively produces milk-based products.

The Complainant has registered 23 trademarks in the United States including the trademarks: ARLA and ARLA MILK

The trademark ARLA FOODS is registered as a trademark in Denmark.

In addition the Complainant is the holder of several domain names incorporating Arla including in particular <arlafoods.com>, <arlafoods.dk>, <arlafoods.se>, <arlafoods.de> and <arlafoods.co.uk>. The website “www.arlafoods.com” is the Complainant’s general international site.

The Complainant has further established four companies in the United States namely: Arla Foods, Inc., Arla Foods Production, LLC., Arla Foods Ingredients, Inc. Dofo, Inc.

5. Parties’ Contentions

A. Complainant

The Respondent’s domain name <arlafood.com> is confusingly similar to the ARLA trademark.

The Respondent’s domain name consists of the Complainant’s trademark with the addition of the word “food” and the gTLD “.com”. The trademark ARLA is the distinctive element of the Respondent’s domain name. The additions are not sufficient to avoid the finding of similarity.

Furthermore the contested domain name is quasi identical to the Complainant’s company name ARLA FOODS and to the Complainant’s domain name <arlafoods.com>. Both names have been used actively as business identifiers in the United States market and the Complainant has through this use established common law rights to the mark ARLA FOODS.

The Complainant further states that the Respondent should be considered as having no right or legitimate interest in respect of the domain name <arlafood.com>. The Complainant has rights in the trademark ARLA, which precede the Respondent’s registration of the domain name.

The Complainant argues that the Respondent has failed to show any legitimate interest in the use of the disputed domain name and that the Respondent is not using the domain name for a bona fide offering of goods or services.

The Complainant has not authorized the Respondent to use the Complainant’s trademark ARLA in a domain name or otherwise.

The Complainant argues that the disputed domain name has been registered in bad faith.

The Complainant requests as remedy the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name <arlafood.com> transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):

- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name was registered and is being used in bad faith

A. Identical or Confusingly Similar

In order for the Complainant to successfully argue that the domain name should be transferred to the Complainant, the domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).

The Complainant is the holder of the trade mark ARLA in the country of residence of the Respondent, the United States, as well as in many other countries around the world. The mark is registered for various dairy products and ingredients. The mark has been in use in the United States for several years and its commercial advertisements have been published in several United States magazines within the food sector.

Furthermore, the Complainant has used its company name ARLA FOODS both as a company name and as a domain name in the United States market. It may well be that the Complainant has established common law rights to mark ARLA FOODS through this use. The contested domain name is very similar, nearly identical to the Complainant’s company name.

The use of the trademark in the domain name is likely to create confusion amongst Internet users as to whether the web site to which the domain name resolves is endorsed by or affiliated in some way with the Complainant.

The first requirement of the Policy has therefore been fulfilled.

B. Rights or Legitimate Interests

Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)).

A complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. The respondent then carries the burden of demonstrating rights or legitimate interests in a domain name. If the Respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has no known rights or legitimate interests in respect of the domain name that is the subject of the Complaint. There is thus no evidence of the Respondent’s use of, or demonstrable 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.

The Respondent’s web site at “www.arlafood.com” features links to other web sites, and many of these links appear to sell products that compete with the products of the Complainant. However, there is no indication on the website that the Respondent has made a bona fide use of the domain name or the word “arlafood”.

There is thus no evidence that the Respondent has made any legitimate use of the name “arlafood” as a trademark or service mark, nor is there any evidence that the Respondent is commonly known as “arlafood”.

The Complainant has not authorized or licensed the Respondent’s use of its ARLA or ARLA FOODS mark on or in connection with the Respondent’s web site.

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. In the absence of submissions from the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

The trademark of the Complainant is registered in a number of countries and is used worldwide. The question is whether the Respondent has registered the domain name in bad faith.

The Respondent’s domain name is used to link to a commercial website. This constitutes “commercial” use of the domain name.

If the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an 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 website or other location, this is evidence of bad faith. (Policy, paragraph 4(b)(iv)).

The Panel finds that the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.

The Respondent’s use of the domain <arlafood.com> to link to such a website is evidence of bad faith, cf . the Policy, paragraph 4 b) (iv).

The Panel agrees that the trademark ARLA is well known. It is most likely that the Respondent was aware of the Complainant, and its trademarks, when the Respondent registered the domain name. This view is supported by the fact that the registered domain name encompasses the trademark of the Complainant.

The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in that bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. The use of the trademark ARLA with the addition of the generic term “FOOD” suggests that the Respondent has acted in bad faith.

The third requirement of the Policy has therefore been fulfilled.

7. Decision

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>, be transferred to the Complainant.

Amund Grimstad
Sole Panelist

Dated: May 25, 2006