WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The a2 Milk Company Limited v. Privacy Service Provided by Withheld for Privacy ehf / Nguyen Van Linh

Case No. D2021-4223

1. The Parties

Complainant is The a2 Milk Company Limited, New Zealand, represented by SILKA AB, Sweden.

Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Nguyen Van Linh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <the-a2-milk-company.shop> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 20, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 21, 2021.

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” 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 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. On December 22, 2021, Respondent sent an email communication to the Center providing certain registration information, but did not submit any formal response. Accordingly, the Center informed the Parties of the commencement of the Panel appointment process on January 18, 2022.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 3, 2022. 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 owner of registrations for the word, and word and device/design, trademark THE A2 MILK COMPANY on the trademark registries of a substantial number of jurisdictions. These include registration (word and device) on the trademark registry of the New Zealand Intellectual Property Office, registration number 1004058, registration dated March 25, 2015, in International Classes (“ICs”) 5 and 29, covering various milk products; registration (word) on the registry of the European Union Intellectual Property Office (“EUIPO”), registration number 012739645, registration dated September 24, 2014, in ICs 5 and 29; registration (word and design) on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 5267836, registration dated August 15, 2017, in IC 30, covering ice cream and frozen desserts, all containing A2 beta-casein protein, and; registration (word and device) as an International Trademark under the Madrid System, registration number 1238161, registration dated September 3, 2014, in ICs 5 and 29. Complainant is the owner of registrations for the word, and word and device/design, trademark A2 MILK on the trademark registry of the Vietnam Trademark Office, registration (word) number 40336835000, registration dated November 15, 2019, in ICs 5 and 29, and; registration (word and device) number 40323373000, registration dated July 2, 2019, in ICs 5 and 29.

Complainant markets and distributes milk and milk products coming from cows that produce milk containing only A2 beta casein protein (i.e., free of A1 protein). Complainant’s principal markets include Australia, New Zealand, China, as well as other markets in Asia. Complainant in 2021 had approximately 335 employees worldwide, and over USD 800 million in revenues. Complainant operates a commercial website at <thea2milkcompany.com>, among other related domain names.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. A NameCheap WhoIs search report provided by Complainant identified the creation date of the disputed domain name as October 7, 2021.

Respondent has used the disputed domain name to direct Internet users to a website headed with the distinctive trademark and logo of Complainant, including photographs of milk products labeled with Complainant’s trademark and logo. The color scheme used on Respondent’s website is substantially similar to that used on Complainant’s website. There is no evidence of disclosure by Respondent on its website or elsewhere of any relationship (or lack thereof) to Complainant, nor is there evidence in this proceeding as to what activities were undertaken by Respondent through its website (e.g., distribution of milk products, etc.). As of the date of this proceeding, Respondent’s website identified by the disputed domain name is no longer active.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it owns rights in the trademark THE A2 MILK COMPANY and that the disputed domain name is confusingly similar to that trademark.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not a licensee of Complainant nor has Respondent received other consent from Complainant to use its trademark; (2) Respondent does not own trademark rights in the disputed domain name or the term “the-a2-milk-company”; (3) Respondent has not been commonly known by the disputed domain name; (4) Respondent has not used the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain, and; (5) Respondent used the disputed domain name in a manner intended to create Internet user confusion as to Complainant’s responsibility for Respondent’s website, including by implied affiliation.

Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) the disputed domain name incorporates in full Complainant’s trademark, which trademark was in use before the registration date of the disputed domain name; (2) Respondent knew or should have known of Complainant’s trademark; (3) statements made on Respondent’s website make clear that it was aware of Complainant and its trademark; (4) Respondent deliberately created a “copycat” of Complainant’s website, encouraging Internet user confusion; (5) Respondent is not protected from a finding of bad faith by having discontinued active bad faith use of the disputed domain name, and is now engaged in bad faith passive holding, and; (6) Respondent’s use of a privacy service reinforces its bad faith intent.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions. However, Respondent sent an email communication to the Center on December 22, 2021 merely providing registration information for “New Subscribers”, including an email address matching the Registrar-confirmed email address of Respondent.

6. Discussion and Findings

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery to Respondent was completed. Respondent transmitted an email to the Center indicating that notice was received. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.

Furthermore, the Panel notes that the Rules define a respondent as the “holder of a domain-name registration against which a complaint is initiated”. In this regard, the Panel considers Nguyen Van Linh, the registrant details disclosed by the concerned Registrar, to be Respondent for the purposes of the Policy.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:

(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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided substantial evidence of rights in the trademark THE A2 MILK COMPANY, including by registration at the New Zealand Intellectual Property Office, the EUIPO, the USPTO, as an International Trademark under the Madrid System, and by use in commerce in a substantial number of countries. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of trademark rights. The Panel determines that Complainant owns rights in the trademark THE A2 MILK COMPANY.

Complainant also has provided evidence of registration of the trademark A2 MILK at the Vietnam Trademark Office.

The disputed domain name fully incorporates Complainant’s distinctive trademark THE A2 MILK COMPANY with the addition of hyphens between the terms of the trademark, and the Top-Level Domain (“TLD”) “.shop”. It is sufficient for a finding of confusing similarity within the meaning of the Policy that the disputed domain name fully and identifiably incorporates Complainant’s trademark. Placing hyphens between the terms of Complainant’s word trademark in the disputed domain name does not prevent a finding of confusing similarity. Addition of the TLD “.shop” does not prevent a finding of confusing similarity either. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark within the meaning of the Policy.¹

The Panel determines that Complainant has established rights in the trademark THE A2 MILK COMPANY and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has not substantively replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.

Respondent’s use of the disputed domain name to direct Internet users to a website that deceptively replicates the look and feel of Complainant’s website, including through use of its trademark and logo, does not establish rights or legitimate interests in favor of Respondent. It is neither a bona fide offering of goods or services nor a fair use of the disputed domain name or Complainant’s trademark.

Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests in the disputed domain name.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 location or of a product or service on [the respondent’s] website or location”.

Respondent used the disputed domain name to create a website replicating the look and feel of Complainant’s commercial website, including through incorporation of Complainant’s trademark and logo, and the color scheme of Complainant’s commercial website. Respondent was manifestly aware of Complainant’s trademark when it registered and used the disputed domain name.

There is no direct evidence on the record of this proceeding regarding the nature of activities undertaken by Respondent through its website identified by the disputed domain name. The Panel may reasonably infer that Respondent was attempting either to market milk products that it would pass off as coming from Complainant, or that Respondent was attempting to secure money from Internet users under false pretenses. Respondent might have attempted to refute these reasonable inferences, but it did not. The fact that Respondent has suspended deceptive use of the disputed domain name does not insulate it from a finding of bad faith use. Respondent’s past practice is substantial evidence of its intent in registering the disputed domain name and a predictor of its likely future conduct, particularly as there is no reasonably apparent good faith use by Respondent for the disputed domain name.

Respondent’s registration and use of the disputed domain name constitutes intentionally using Complainant’s trademark in the disputed domain name for purposes of attracting Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s sourcing, sponsoring, affiliation with, or endorsing Respondent’s website. Such action by Respondent constitutes registration and use of the disputed domain name in bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.

The Panel determines that Complainant has established that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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, <the-a2-milk-company.shop>, be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: February 10, 2022

¹ There is no need for the Panel to make a determination as to whether the disputed domain name also is confusingly similar to Complainant's A2 MILK trademark registered in Viet Nam.