The Complainant is Groupe Lactalis of Laval, France, represented by Inlex IP Expertise, France.
The Respondent is John Kleedofer of Murfreesboro, Tennessee, United States of America / Privacy Protection Service INC d/b/a Privacy P of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2014, 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 the Complainant on January 31, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 31, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 12, 2014. 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
The Complainant is the owner, amongst others, of the following trademark registrations:
- French Trademark registration No. 99798846 for GROUPE LACTALIS filed on June 22, 1999 and registered on 1999 and successively renewed, to cover products and services in classes 29, 30 and 35 (Annex 7 to the Complaint);
- Community Trademark registration No. 1529833 for LACTALIS filed on February 28, 2000 and registered on January 15, 2001 to cover products and services in classes 01, 05, 10, 13, 16, 31, 33, 34, 40 and 42 (Annex 7 to the Complaint);
- Community Trademark registration No. 11203262 for LACTALIS filed on September 20, 2012 to cover products and services in all 45 classes (Annex 7 to the Complaint); and
- International Trademark registration No. 1135514 for LACTALIS registered on September 20, 2012, to cover products and services in classes 5, 29, 30, 32 and 35 (Annex 7 to the Complaint).
The disputed domain name was registered on October 18, 2013. Currently the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is a French group which was established in 1933 and today enjoys considerable notoriety it its field of activities, namely dairy products, having acquired throughout the world a reputation for its products. The Complainant’s group currently employs 55,000 people and owns more than 200 industrial plants around the world, in 35 different countries, having had in 2012 a turnover of over 15,7 billion of euros.
The Complainant further asserts that the disputed domain name infringes its prior trade name, domain names and registered trademarks LACTALIS and GROUPE LACTALIS (Annex 7 to the Complaint) merely inverting the latter.
Moreover, the Complainant argues that the Respondent made use of the disputed domain name by sending fraudulent emails in an attempt to create a likelihood of confusion between him and the Complainant and trying to hide his true identity by hiring privacy protection services.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not entitled to any trademark, trade name or any other right in the name “Lactalis”;
(ii) the Respondent has not been authorized by the Complainant to use the name “Lactalis” and there is no business relationship between the Complainant and the Respondent; and
(iii) the Respondent has not used the disputed domain name for an active legitimate website, and has not shown any intention of using the domain name in connection with a good faith offering of goods and services.
Furthermore, the Complainant asserts that third parties were contacted by the person behind the Respondent using not only email addresses containing the disputed domain name but also and more specially the company details of the Complainant (notably its SIREN number, which is a unique French business identification number – Annex 3 and 3 bis to the Complaint) in an attempt to solicit business transactions with such parties, thus creating a likelihood of confusion and possibly taking undue advantage of the Complainant’s reputation.
Lastly, in the Complainant’s view, two other facts corroborate with the characterization of bad faith use and registration of the disputed domain name by the Respondent: Firstly, the Privacy Protection Service retained by the Respondent did not inform the true identity of the Respondent when contacted by the Complainant and secondly, the Complainant sent a cease and desist letter to the email addresses used by the Respondent to contact third parties soliciting business transactions, which, despite several reminders was never replied to. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the well-known LACTALIS and GROUPE LACTALIS trademarks, duly registered in France, Europe and other countries (Annex 7 to the Complaint).
In this Panel’s view the inversion of the Complainant’s GROUPE LACTALIS trademark in the disputed domain name, with the suppression of the vowel “e” in the French word “groupe”, is not sufficient to distinguish the disputed domain name from the Complainant’s mark given that “groupe” translates into English as “group” and LACTALIS is a highly distinctive and well-known trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, 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; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108, ). Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the LACTALIS or GROUPE LACTALIS trademarks in the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
According to the emails attached to the Complaint (Annexes 3 and 3 bis) the Respondent has indeed used the disputed domain name in a manner to solicit and attempt to engage in business transactions with third parties creating a likelihood of confusion with the Complainant and attempting to unduly profit from the Complainant’s reputation and goodwill. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use of the disputed domain name.
Another element to be taken into account is the absence of any reply to the warning letter and respective reminder sent to the Respondent. Previous UDRP panels have already recognized that “[t]he fact that the Respondent was requested to transfer domain names consisting of famous brands at several occasions last year in other UDRP proceedings further suggests the absence of legitimate interests” (see in particular Deutsche Telekom AG v. Spiral Matrix,WIPO Case No. D2005-1145; Dr Ing. h.c. F. Porsche AG v. Spiral Matrix et al.,WIPO Case No. D2005-0890; Société des HôtelsMeridiens v. Spiral Matrix / Kentech Inc.,WIPO Case No. D2005-1196; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
The Respondent’s knowledge of the Complainant appears to be evident from the use of the Complainant’s unique French business identification number – SIREN 331142554 – in the fraudulent emails sent by the Respondent to third parties (Annexes 3 and 3 bis to the Complaint).
In this case, the use of the disputed domain name in connection with fraudulent emails sent to third parties in an attempt to solicit and attempt to engage in business transactions mimicking the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s mark.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the Respondent appears to use some sort of “Privacy Protection” service, which may further support in the circumstances of this case the Panel’s finding of bad faith.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. 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, be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: March 17, 2014
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