The Complainant is Mejeriforeningen Danish Dairy Board of Aarhus, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Liu TianLe of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2016. On July 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 8, 2016, the Registrar 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” 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 the Respondent of the Complaint, and the proceedings commenced on July 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 15, 2016. 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 central organization of the Danish dairy companies. The Complainant has been using the LURPAK trade mark since 1957 in relation to Danish butter. The Complainant’s “Lurpak” products are being sold in more than 75 countries. The Complainant has registered rights in the LURPAK trade mark, which include six China trade mark registrations (the earliest of which was registered in May 2015) and an international registration no. 999177 which was obtained in February 27, 2009.
The Respondent registered the Disputed Domain Name on April 8, 2016. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant has been using the LURPAK trade mark since 1957. The Complainant has obtained registered rights in its LURPAK trade mark in many different jurisdictions, including China trade mark registrations and international trade mark registrations.
(b) The Complainant has never authorized the Respondent to use its LURPAK trade mark. The Respondent registered the Disputed Domain Name on April 8, 2016, which is well after the Complainant had acquired rights in the LURPAK trade mark and had registered its “lurpak” domain names.
(c) The Respondent has not been using the Disputed Domain Name for a bona fide offering of goods or services, as it is using the Complainant’s LURPAK trade mark to mislead and attract users to its parking page in order to earn pay-per-click revenue. The links on the parking page include links to the Complainant’s competitors and the Complainant’s “Lurpak” products.
(d) There is no evidence to suggest that the Respondent has become commonly known by the Disputed Domain Name.
(e) The Complainant’s LURPAK trade mark is well-known in relation to its milk-based products, including in China where the Respondent is based. The Complainant sent a cease-and-desist letter to the Respondent on June 17, 2016, informing the Respondent of its rights and requesting the transfer of the Disputed Domain Name. The Respondent responded to the Complainant on the same date asking for USD 6,000 in return for the Disputed Domain Name. In addition, the parking page to which the Disputed Domain Name resolves offers the Disputed Domain Name for sale for USD 9,000. This shows that the Respondent registered the Disputed Domain Name in bad faith for the purposes of selling it to the Complainant or its competitors for valuable consideration in excess of any out-of-pocket expenses incurred by the Respondent in relation to the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the LURPAK trade mark, based on its Chinese and international trade mark registrations.
The Disputed Domain Name incorporates the Complainant’s LURPAK trade mark in its entirety, and is therefore identical to the Complainant’s trade mark. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case “.org”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the LURPAK trade mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel accepts that the Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or a name corresponding to it. The Disputed Domain Name resolves to a parking page which includes pay-per-click links.
As stated in paragraph 2.6 of the WIPO Overview 2.0, use of a domain name to post parking pages or pay-per-click links “may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’…or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.” For example, if a domain name corresponds to a generic or descriptive word, and the pay-per-click links genuinely relate to the generic meaning of the domain name and there is no evidence that the respondent was targeting the complainant, then this may amount to permissible use and legitimate rights and interest (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; US Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services).
In this case, “lurpak” is not a generic word, and appears to have no common meaning outside of the Complainant’s LURPAK mark. The parking page to which the Disputed Domain Name resolves also includes direct references and pay-per-click links to the Complainant’s “Lurpak” products and to the Complainant’s competitors. Therefore, the Panel finds that the Respondent registered the Disputed Domain Name to trade off the goodwill of the Complainant’s mark in order to increase its pay-per-click revenue, which cannot amount to a legitimate interest or right.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel accepts that the Respondent registered and has been using the Disputed Domain Name in bad faith, based on the following:
(a) the Respondent registered the Disputed Domain Name in April 2016, many years after the Complainant first began using, and obtained its first registration for, the LURPAK trade mark;
(b) the Complainant’s LURPAK trade mark is unique and does not correspond to any generic or common word, such that the Panel cannot conceive of any reasonable purpose or use of the Disputed Domain Name by the Respondent which could amount to good faith;
(c) the Disputed Domain Name resolves to a parking page which includes pay-per-click links that refer to the Complainant and its “Lurpak” products, and also to the Complainant’s competitors;
(d) on the parking page to which the Disputed Domain Name resolves, the Respondent offers the Disputed Domain Name for sale for USD 9,000;
(e) in response to the Complainant’s cease-and-desist letter dated June 17, 2016, the Respondent reverted on the same date asking for USD 6,000 in return for the Disputed Domain Name, which is well above the nominal amount needed to cover the Respondent’s out-of-pocket expenses related to the Disputed Domain Name.
Based on the above, the Panel reasonably believes that the Respondent registered and is using the Disputed Domain Name with the intent of: (i) selling it to the Complainant or its competitors for profit; and/or (ii) trading on the reputation of the Complainant’s LURPAK trade mark to attempt to attract Internet users to the Respondent’s parking page for commercial gain, by creating a likelihood of confusion with the Complainant’s LURPAK trade mark.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: August 29, 2016
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