WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arla Foods amba v. hem
Case No. D2008-0378
1. The Parties
The Complainant is Arla Foods amba, Skanderborgvej, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is hem, London, Russian Federation, represented by Reino Mustonen.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2008. On March 11, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On the same day, Tucows transmitted by email to the Center its verification response confirming that the 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”), 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 March 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2008. The Response was filed with the Center on March 27, 2008.
The Center appointed David Perkins as the sole panelist in this matter on April 10, 2008. 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
4.A. Complainant
4.A.1 The Complainant is Arla Foods amba, a co-operative owned by approximately 10,000 milk producers in Denmark and Sweden. The Arla Foods Group is one of Europe’s largest dairy companies. Its turnover in 2007 was Danish Kroner 47.7 billion (approximately, Euros 6.4 billion).
The ARLA Trademark
4.A.2 The Complainant is the registered proprietor of the ARLA trademark in a number of countries. Those registrations exhibited to the Complaint are:
International Registration
Mark
Class(es)
Number of Countries Designated
Dates applied for / Registered
731,917
ARLA
1, 5, 29, 30, 31 and 32
53
March 6, 2000
747,550
ARLA and logo
1, 5, 29, 30 and 32
17
October 4, 2000
786,155
ARLA and logo
5, 29, 30 and 32
54
April 15, 2000
786,154
ARLA and logo
5, 29, 30 and 32
18
April 15, 2000
786,151
ARLA and logo
5, 29, 30 and 32
53
April 15, 2000
A number of those designations have, however, been refused either totally or in certain classes of goods.
The ARLA domain names
4.A.3 The Complainant is the registrant of the domain names and .
The Complainant’s presence in the Russian Federation
4.A.4 In October 2006, the Complainant announced that with its distribution partner in Russia, Artis, it was forming a joint venture company, Arla Foods Artis Ltd, to sell and promote cheese and butter in the Russian market. Arla Foods Artis Ltd is 75% owned by the Complainant and 25% by Artis. The company is based in St. Petersburg. The dispute domain name was registered by the Respondent very shortly thereafter on November 11, 2006.
4.B. Respondent
4.B.1 The Response was submitted by one, Reino Mustonen of Heinolassa in Finland who appears to be the individual behind the registrant identified in Tucows response as “hem, billingstreet 10”.
5. Parties’ Contentions
5.A. Complainant
5.A.1 Identical or Confusingly Similar
5.A.1.1 The Complainant is the proprietor of the trademark ARLA which is registered in a significant number of countries by International Registrations, the earliest of which dates from March 2000.
5.A.1.2 The distinctive component of the disputed domain name is the Complainant’s ARLA trademark to which the suffix “-russia” has been added. That, the Complainant says, will inevitably confuse Internet users into believing that the site to which the disputed domain name resolves “www.“ is a Russian company in the Arla Group. Accordingly, the Complainant’s case is that the domain name is confusingly similar to the ARLA trademark.
5.A.2 Rights or Legitimate Interests
5.A.2.1 The Complainant says there is no evidence to show that the Respondent can establish any of the circumstances set out in paragraph 4(c) of the Policy. Furthermore, the Complainant has not licensed or otherwise authorised the Respondent to use the ARLA trademark.
5.A.2.2 As to paragraphs 4(c)(i) and (iii) of the Policy, the Complainant exhibits the website to which the disputed domain name resolves. That site is a portal site, which links not only to the Complainants, Aral Foods, but also to “Food at Tesco” and a number of non-food related websites, including real estate, hotels in Russia and cheap flights to Russia. This, the Complainant says is neither a non-commercial nor a fair use of the domain name. Nor, the Complainant says, is it use of the disputed domain name in connection with a bona fide offering of goods or services.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 The Complainant asserts that the ARLA trademark is well known in Europe. Additionally, the Complainant suggests that it is hardly co-incidental that the Respondent registered the domain in issue with the suffix “-russia” on November 11, 2006 very shortly after the announcement by the Complainant of its joint venture operation in Russia; see, paragraph 4.A.4 above. Such is clearly not registration in good faith.
5.A.3.2 As to use in bad faith, the Complainant points to the website to which the disputed domain name resolves which, the Complainant says demonstrates circumstances within paragraph 4(b)(iv) of the Policy.
5.B Respondent
5.B.1 Respondent says that he registered the domain name in issue for future use in writing a history blog relating to the Finnish wars of 1808 and 1809 between the Swedes and the Russians. He says that “arla” means “early” in Swedish and that in that war the Russian plan was described as “early”, since it was launched in February 1808 rather than in the Summer of 1808 as the Swedish general had anticipated.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5. The Complainant is the owner of the trademark ARLA which is registered internationally in a number of classes. The first registration dates from early 2000. Accordingly, the Complainant has established that it has rights in the ARLA trademark for the purposes of the Policy.
6.6. The distinctive element of the domain name is identical to the Complainant’s ARLA trademark. The hyphenated suffix “russia” could indicate a branch or other activity of ARLA. Although the Complainant is based geographically in Denmark and Sweden and will undoubtedly be most widely known by the ARLA trademark in those countries, it has also established trading links in Central Europe and through a distributor in St. Petersburg, Russia. The Panel is in no doubt that the disputed domain name is confusingly similar to the Complainant’s ARLA trademark and, consequently, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.7 There is no evidence in the Response, or otherwise, that the Respondent can show that any of the circumstances set out in paragraph 4(c) of the Policy which demonstrate rights or legitimate interests in the disputed domain name apply in this case.
6.8 While the Respondent says that his intention is to use the domain name for a history blog featuring the Finnish Wars of 1808 -1809, the fact is that the disputed domain name resolves to a portal website with links to not only the Complainant but also to Tesco, a well known grocery retailer, and to quite unrelated websites for real estate, hotels in Russia and cheap flights to Russia. Self evidently, this is not a bona fide offering of goods or services, so that the Respondent can bring himself with paragraph 4(c)(i) of the Policy.
6.9 Nor, for the reasons set out in the Complaint, can the Respondent bring himself within paragraph 4(c)(iii) of the policy.
6.10. The Respondent does not seek to suggest he can demonstrate that paragraph 4(c)(ii) applies.
6.11 In the light of the forgoing, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
Registered and used in Bad Faith
6.12 The evidence points to an opportunistic registration by the Respondent having regard to the fact that the Complainant had, only weeks before registration of the disputed domain name in November 2006, announced its joint venture in Russia.
6.13 However, if that is not the case and if the Respondent had intended to use the disputed domain name for a history blog as he maintains in the Response, the fact is that 15 months after registering the domain name it was being used for a portal website having no connection whatever with the Finnish Wars of 1808-1809. Moreover, the Respondent has not provided any evidence of intent to use the disputed domain name for such a history blog. The weight of the evidence is firmly against either good faith registration or use.
6.14 Still further, the Respondent asserts that “arla” translated from Swedish to English means “early”. In Norstedts English / Swedish dictionary, there is no such word as “arla”.
6.15 The evidence set out in the preceding section, clearly establishes circumstances falling within paragraph 4(b)(iv) of the Policy.
6.16. Accordingly, the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy.
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 be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: April 15, 2008
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