Complainant is Groupe Lactalis, France, represented by Inlex IP Expertise, France.
Respondents are:
(a) For <nzlactalis.com> - Domain Privacy Service FBO Registrant, United States of America / CEO Desk, South Africa.
(b) For <nzlactals.com> - Contact Privacy Inc. Customer 1249314777, Canada / Zhang Cameron, South Africa.
The disputed domain name <nzlactalis.com> is registered with Domain.com, LLC.
The disputed domain name <nzlactals.com> is registered with Google LLC (together with Domain.com, LLC, respectively the “Registrars”).
The disputed domain names will be hereinafter referred to as the “Domain Names”, or “Domain Name” when referenced in the singular.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 6, 2021, the Registrars transmitted separately by email to the Center their verification responses disclosing registrant and contact information for the Domain Names, which differed from named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on May 14, 2021, providing the registrant and contact information disclosed by the Registrars and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 19, 2021.
The Center verified that the Complaint, together with the amended 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 Respondents of the Complaint, and the proceedings commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 24, 2021.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on July 5, 2021. 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 French based family-owned company, created in 1933. Complainant trades in the agri-food industry, with a particular focus on the dairy products sector. It has 250 production sites in 50 countries around the world, with more than 80,000 employees in 94 countries and a turnover of EUR 20 billion.
Complainant is the owner of numerous trade marks using the term LACTALIS (“Complainant’s Mark”) throughout the world, including:
|
Mark |
Jurisdiction |
Registration No. |
Filing / Registration Date |
|
|
France |
4438490 |
March 20, 2018 / July 27, 2018 |
|
|
European Union |
017959526 |
September 20, 2018 / May 22, 2019 |
|
LACTALIS |
New Zealand |
311914 |
June 29, 1999 / September 7, 2000 |
|
|
South Africa |
2012/25628 |
September 20, 2012 |
Complainant is also the registered owner of numerous domain names, which contain the word “lactalis”, including:
- <lactalis.com> registered January 9, 1999;
- <lactalis.eu> registered June 10, 2006;
- <lactalis.org> registered May 12, 2011;
- <lactalis.fr> registered February 23, 1999;
- <lactalis.nz> registered December 19, 2014;
- <lactalis.co.nz> registered October 13, 2011.
The Domain Names were registered on February 3, 2021. Both Domain Names redirect to webpages that cannot be found.
Procedural Issue – Consolidation
Complainant has lodged a common complaint and seeks consolidation of two domain name disputes. It submits that it is appropriate that the two Complaints be dealt with together in this manner. That is, given that Respondents of the Domain Names appear to be the same person/entity or to be subject to common control. Complainant makes this submission on the grounds that both Domain Names:
(a) were registered on the same day;
(b) point to pages that cannot be found;
(c) incorporate Complainant’s Mark or a very similar term which has one letter withdrawn but remains almost identical to Complainant’s Mark;
(d) incorporate the term “nz” in the leading position, and
(e) incorporate the extension “.com”.
Complainant asserts that the Domain Names are confusingly similar to Complainant’s Mark. The Domain Name <nzlactalis.com> reproduces Complainant’s Mark in its entirety, whilst the Domain Name <nzlactals.com> reproduces Complainant’s Mark with the removal of the letter “i”. Complainant contends that this is typical feature of typosquatting cases based on spelling mistakes made by Internet users.
The Domain Names also contain the geographical term “nz” at the beginning, which refers to New Zealand.
Complainant submits that the Domain Names are confusingly similar to Complainant’s Mark visually, phonetically, and conceptually.
Complainant states that there is no business relationship with either Respondent, and neither of them have been authorised to register or use Complainant’s Mark.
Complainant claims that both Respondents have registered the Domain Names in bad faith in order to take undue advantage of Complainant’s reputation. Complainant points out that proof of this bad faith registration is the fact that both Respondents used a privacy service to conceal their identities.
Complainant advises that it has attempted to contact Respondents and has sent emails, including Cease and Desist letters, on March 5, and March 16, 2021, but has received no replies.
Respondents did not reply to Complainant’s contentions.
Pursuant to paragraph 10(e) of the Rules, multiple domain name disputes can be consolidated provided the complainant demonstrates that the disputed domain names are subject to common control and if the consolidation would be procedurally efficient, fair and equitable to the parties (BMW v. Mike Lee et al., WIPO Case No. D2016-2268, <bmw-icom.com> et al.). Complainant points to a number of circumstances that suggest the Domain Names are subject to common control, including that they were registered on the same day, point to pages that cannot be located, and incorporate Complainant’s Mark along with the term “nz” in an almost identical fashion. This does indeed suggest some form of common control and Respondents, by failing to respond, have not disputed this. Further, consolidation appears to be procedurally efficient, fair and equitable to the parties.
As such, the Panel finds consolidation is appropriate and will proceed accordingly.
Complainant has traded since 1933, adopting the name “Groupe Lactalis” in 1984. It is clearly well established in the dairy products sector. It has a business around the world and a turnover of EUR 20 billion. Complainant’s Mark is registered, inter alia, in Complainant’s home country France, in the European Union, New Zealand, and South Africa (where the Respondents are allegedly located). Complainant clearly has rights in Complainant’s Mark (which rights predate registration of the Domain Names).
Complainant submits that the Domain Names are confusingly similar to Complainant’s Mark. That is, on the basis that the Domain Name <nzlactalis.com> reproduces Complainant’s Mark in its entirety, whereas the Domain Name <nzlactals.com> reproduces Complainant’s Mark with the removal of the letter “i”. Further, Complainant notes that the Domain Names contain the geographical term “nz” at the beginning, which refers to New Zealand. The Panel accepts this submission.
In addition, the Panel finds that the addition of the geographical term “nz” (a well-known abbreviation of New Zealand) and the removal of the letter “i” do not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
On that basis, the Panel concludes that the Domain Names are confusingly similar to Complainant’s Mark. Accordingly, the first ground under the Policy is made out.
Complainant contends that it has been unable to locate any activity on Respondent’s part in using the Domain Names. It has however sent two cease-and-desist letters to Respondents, but to no avail.
Complainant contends that there is no business relationship with either Respondent, and neither of them has been authorised to register or use Complainant’s Mark in a domain name or otherwise.
As matters stand, there is no evidence that Respondents have used the Domain Names for any purposes, since both Domain Names fail to resolve to active websites. Nevertheless, there are other relevant factors. First, Complainant has established a long-standing and significant international reputation in Complainant’s Mark in the dairy industry. Secondly, Respondents have chosen to append the abbreviation “nz” to the confusingly similar Domain Names, thereby identifying a connection with a leading dairy producing country. The Panel notes that New Zealand is an international player in the dairy industry and a major exporter of dairy products. Thirdly, Respondents have failed to explain why they have registered the Domain Names. These factors allow the Panel to infer that Respondents have no rights or legitimate interests in the Domain Names, having registered Domain Names that carry a risk of implied affiliation to the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Further, it allows the Panel to infer that the purpose of the registration of the Domain Names is to block and disadvantage Complainant in its business activities.
Given the nature of these allegations and the failure to explain why they chose the Domain Names, the Panel finds that the Domain Names were not registered and have not been used for any legitimate or fair purpose.
Accordingly, the second ground under the Policy is made out.
Given the above findings, the Panel finds that Respondent knew or must have known that the Domain Names are confusingly similar to Complainant’s Mark and that Complainant had rights in Complainant’s Mark well in advance of registration of the Domain Names.
Further, Complainant argues that two further factors need to be taken into account. The first is that Complainant’s Mark is a fancy and distinctive name and the registration of the Domain Names cannot be coincidence. Secondly, Complainant points to the fact that both Respondents used a privacy service to conceal their identities and argues that this also points towards bad faith registration. There is merit in both these points, particularly the first.
The fact that neither Domain Name resolves to an active website does not prevent a finding of bad faith. Even in instance of passive holding, a panel may infer bad faith registration when weighing the totality of the circumstances. See Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and generally, section 3.3 of the WIPO Overview 3.0.
Complainant has therefore established that the Domain Names were registered and have been used in bad faith. Accordingly, the third ground under the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <nzlactalis.com> and <nzlactals.com>, be transferred to Complainant.
Clive L. Elliott Q.C.
Sole Panelist
Date: July 19, 2021
