The Complainants are Arla Foods Amba of Viby, Denmark and Mejeriforeningen Danish Dairy Board of Aarhus, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Mohammad Alkurdi of Dubai, United Arab Emirates, self-represented. 2. The Domain Names and Registrars
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2017. On February 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details, and confirming English as the language of the Registration Agreement.
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 Respondent of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. The Center notified the Parties the commencement of the Panel Appointment process on March 27, 2017. Respondent sent communications to the Center on March 11, 2017, March 16, 2017, March 17, 2017, March 24, 2017 and March 30, 2017. On March 16, 2017, following receipt of Respondent’s email received on the same day, the Center advised the Parties - should they wish to explore settlement options - that Complainant should submit a request for suspension by March 23, 2017. On March 24, 2017, the Center, in the absence of any request for suspension to implement a settlement agreement, advised the Parties that the proceeding would continue.
On March 31, 2017, the Center appointed Roberto Bianchi as the sole panelist in this matter. 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
Arla Foods Amba (“Arla”) is a global dairy company and co-operative owned by 12,650 dairy farmers in seven countries and has over 19,000 employees worldwide. Arla is the largest producer of dairy products in Scandinavia. In 2015, Arla had a global revenue of EUR 10.3 billion. The company has operations worldwide, including in the Middle East.
Mejeriforeningen Danish Dairy Board (“Danish Dairy Board”) is the central organization of the Danish dairy companies. It consists of 28 companies including Arla (54 production plants) processing around 4.9 billion kilograms of milk for various products sold in many countries.
Arla owns the following trademark registrations:
TRADEMARK
REG. No
JURISDICTION
INT. CLASS
REG. DATE
ARLA (Word mark)
731917
International Registration
01, 05, 29, 30, 31 and 32
March 20, 2000
ARLA (Mixed mark)
990596
International registration
01, 05, 29, 30, 31 and 32
September 8, 2008
ARLA (Word mark)
VA1999 01187
Denmark
01, 05, 29, 30, 31 and 32
October 1, 1999
Mejeriforeningen Danish Dairy Board owns the following trademark registrations:
TRADEMARK
REG. No
JURISDICTION
INT. CLASS
REG. DATE
LURPAK
(Mixed mark with Arabic characters)
1043972
International Registration
29
May 18, 2010
LURPAK (Word mark)
1167472
International Registration
01, 05, 29, 30
October 30, 2012
LURPAK (Mixed mark)
1142736
International Registration
29
October 30, 2012
LURPAK ESTD 1901 (Mixed mark with Arabic characters)
1323316
International Registration
29
June 17, 2016
Arla owns the domain names , registered on October 1, 1999; , registered on July 15, 1996; , registered on October 1, 1999; and , registered on February 21, 2000.
Danish Dairy Board owns the domain names , registered in October 31, 1996 and , registered in November 18, 2005.
The disputed domain name was registered on September 7, 2016. The disputed domain names and were registered on January 12, 2017. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain names entirely incorporate Complainants registered trademarks ARLA and LURPAK and the generic Top-Level Domain (gTLD) “.com”. The terms “milk” and “cheese”, coupled with the ARLA mark, are very closely connected with Arla’s business as a leading global dairy company. The Complainant explains that the term “Arabia”, coupled with the LURPAK mark, typically is used as a descriptor for the region encompassing Saudi Arabia, Yemen, Oman, Bahrain, Qatar, Kuwait and the United Arab Emirates. Noting the Danish Dairy Board’s business focus in that region, the addition of “Arabia” can be seen as a descriptive term for LURPAK in relation to this geographical zone. Complainant concludes that the disputed domain names should be considered as confusingly similar to the registered trademarks ARLA and LURPAK.
Complainant says that Respondent has made no claims to either having any relevant prior rights of its own. Moreover, Complainants have never authorized Respondent to use their trademarks in any form. Complainant also contends that Respondent is not commonly known by the disputed domain names. According to the WhoIs information, Respondent is “Mohammad Alkurdi”. Further, Respondent has not shown that the disputed domain names will be used in connection with a bona fide offering of goods or services. When entering the terms “Arla Milk”, “Arla Cheese” as well as “Lurpak Arabia” into the Google search engine, the returned results point to Complainants and their business activities (as mentioned in Annex 8 to the Complaint). Respondent could easily perform a similar search before registering the disputed domain names. He would then quickly have learned that Complainants own the ARLA and LURPAK trademarks, and that Complainants have been using them globally. Complainants have become a distinctive identifier associated with the terms “Arla” and “Lurpak” and that the registration of the disputed domain names seeks to take advantage of an association with the businesses of Complainants.
Prior panels have found that registering and using a domain name including a trademark without descriptive meaning and where the links are unrelated to any descriptive meaning is not legitimate, and does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). As found in Mejeriforeningen Danish Dairy Board v. Liu TianLe,WIPO Case No. D2016-1387, concerning a domain name resolving to a pay-per-click (“PPC”) parking page, “lurpak” was found to be a non-generic word, and without any common meaning aside of the Complainant’s LURPAK mark.
The disputed domain names were registered in bad faith. The fact that Complainants’ trademarks predate the registration of the disputed domain names demonstrates that Respondent was aware of Complainants’ trademarks at the time of the registration. Further, it cannot be a mere coincidence that the disputed domain names and involve the associated Danish businesses of Arla and the Danish Dairy Corporation and the related “Arla” domain names include the dairy related terms “Milk” and “Cheese”. This shows that it is almost certain that Respondent was aware of the unlawful registration of the disputed domain names.
The disputed domain names are being used in bad faith. Arla tried to contact Respondent on January 19, 2017 through a cease and desist letter. The letter was sent to the email address listed in the WhoIs record. In this letter, Arla advised Respondent that the unauthorized use of its trademarks within the disputed domain names and violated its trademark rights. Thus, Arla requested a voluntary transfer of those domain names. However, in a response sent on January 23, 2017, Respondent denied infringing on Arla’s trademark rights. Further research revealed that Respondent had registered at least 177 other domains using famous brands, including (as mentioned in Annex 10 of the Complaint, providing a list of domains registered by Respondent). As noted previously, Arla’s representative also represents the owner of the LURPAK trademark, the Danish Dairy Board. Therefore, after becoming aware of the registration of the domain name, on February 2, 2017, Complainants jointly notified Respondent that they were also concerned over the registration of the domain, and asked for the transfer of all three domains.
On February 7, 2017, Complainants received a reply from Respondent, stating, “I hereby confirm my interest in selling the above-mentioned items for USD 3,000 each (i.e., total $9,000).” This conduct is evidence of bad faith in terms of paragraph 4(b)(i), due to the Respondent’s intent to unduly profit from the Complainant´s rights.
In addition, the disputed domain names are pointing to PPC websites where Internet visitors find links to unrelated sites (as mentioned in Annex 11). In terms of paragraph 4(b)(iv) of the Policy, this conduct constitutes bad faith as it has also been confirmed in previous cases. “While there is nothing per se illegitimate in using a domain name parking service, linking a domain name to such a service with a trademark owner’s name in mind in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking page is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy.”
Respondent via its official email address, […]@, indicated in the WhoIs record, registered around 179 domain names including well-known brands with protected trademarks such as , , and . Such pattern of abusive conduct constitutes evidence of bad faith.
The trademarks ARLA and LURPAK are well known worldwide, including in the Middle East. Respondent bears no relationship to the trademarks, and the disputed domain names have no other meaning except for referring to Complainants’ names and trademarks. There is no way in which Respondent could use the disputed domain names legitimately. Consequently, Respondent should be considered to have registered and to be using the disputed Domain Names in bad faith. B. Respondent
Respondent did not submit a formal Response. However, in an email to the Center dated March 11, 2017, he claimed to have “no bad intentions” and to be “not willing to relate any of the sites to Arla brands”. He also stated he was “[h]appy to transfer LurpakA anytime”, but regarding the disputed domain names and , he requested a translation of the complaint into Arabic. He added that “having Arla as a trademark doesn’t mean we can’t buy any domain name or open any company that has Arla name in it, if I want to buy ArlaBananas or ArlaFruits or even ArlaProperties for example, that shouldn’t be violating any legal terms just because of having 4 letters in common.”
In its email dated March 17, 2017 to Complainant’s representative, copied to the Center, Respondent stated that he “wouldn’t mind transferring LurpakArabia without getting any money for it, as i [sic] understand it has Lurpak as a trademark and Arabia as a region, it wasn’t a good idea for me to have a business plan to name a small family business dairy brand such a name that’s very similar to a registered trademark. As for the other two domain names, I already told you earlier that it has nothing to do with Arla as a trademark, Arla is a very common name and I already invested time and money in preparing a business plan to launch this small family business in lebanon [sic]. I have paid a freelancer to prepare a business plan for me to launch those two brands around a $1000 in total, if your client is keen to get the domain names I bought for my business plan, I will corporate and release the domain names immediately if they compensate me for the time and money i [sic] invested. I have the plan in my mind since 2012, only started working on business plan few months back and I wouldn’t mind changing the name of the brands I want to launch if your client pays $1500 to me.”
On March 17, 2017, Complainant’s representative replied to Respondent, stating that Complainants were prepared to cover Respondent’s reasonable out of pocket expenses in relation to registering the disputed domain names, and offered USD 50 for each of the disputed domain names. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainants have shown that Mejeriforeningen Danish Dairy Board owns international registrations for the LURPAK mark, and that Arla Foods amba owns international registrations for the ARLA mark. See section 4 above. Thus, the Panel is satisfied that Complainants have rights in these marks for purposes of Policy paragraph 4(a)(i).
The Panel notes that the disputed domain name contains the LURPAK mark in its entirety, just adding the geographic term “Arabia”, while the disputed domain names and contain the ARLA mark, adding the generic terms “cheese” and “milk”. The three domain names also add the top level domain “.com”. It is well established that the addition in a domain name of a geographic or generic term to a mark generally does nothing to distinguish the former from the latter for purposes of the Policy. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9. The Panel concludes that the disputed domain names and are confusingly similar to the ARLA mark, and that the disputed domain name is confusingly similar to the LURPAK mark. B. Rights or Legitimate Interests
Complainant contends that Respondent is not commonly known by the disputed domain names. The Panel agrees with Complainant, since according to the corresponding WhoIs database, Respondent is “Mohammad Alkurdi”. Thus, Policy paragraph 4(c)(ii) is not applicable.
Complainant has shown that Respondent is using the disputed domain name to lure Internet users, presumably looking for Complainant’s products or Complainants’ businesses, into visiting “sponsored listings” of commercial websites offering goods and services totally unrelated to Complainants. In the Panel’s view, this use attempts at obtaining click-through income, which is neither a bona fide use under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use under Policy paragraph 4(c)(iii). The Panel also notes that although Respondent argues that “Arlamilk” and “Arlacheese” are common terms, he failed to present the Panel with any evidence of this contention. With respect to the domain name, Respondent admits that it is “very similar to a registered trademark”.
In the Panel’s view, Complainant has made a prima facie case that Respondent lacks rights or legitimate rights in the disputed domain names. For its part, Respondent failed to submit any convincing evidence or arguments that he has any right or legitimate interest in the disputed domain names. The Panel concludes that Complainants have made out their case that Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Panel notes that the registrations of the ARLA and LURPAK trademarks predate the registration of the disputed domain names by several years. See section 4 above. Moreover, Complainant’s marks are well-known in respect of milk, cheese, butter and dairy products in general. In fact, as relates the disputed domain name , in its email of March 17, 2017 to Complainants’ representative, Respondent admitted that this domain name was “very similar to a registered trademark”. The Panel concludes that Respondent most likely knew of Complainants, their trademarks and ARLA and LURPAK products, and had them in mind, when he registered the disputed domain names.
Complainant also submitted print screens, obtained on February 24, 2017, of the websites at the disputed domain names. The Panel notes that in each case the main webpage of the website displays a text stating, “Would you like to buy this domain?”. Also, Complainants have shown that in their February 7, 2017 reply to Complainant’s cease and desist letter, Respondent stated, “I hereby confirm my interest in selling the above-mentioned items [i.e., the disputed domain names] for USD 3,000 each (i.e. total $9,000).” In the opinion of the Panel, this suggests that Respondent registered the disputed domain names primarily for the purpose of selling the domain name registrations to Complainants, the owners of the trademarks ARLA and LURPAK, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names. This is evidence of registration in bad faith under Policy paragraph 4(b)(i). Moreover, offering a domain name for sale in such a manner is in itself evidence of use in bad faith of the domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001, finding that “[b]ecause respondent offered to sell the domain name to complainant ʻfor valuable consideration in excess of any out-of-pocket costs directly related to the domain name, respondent has ʻusedʼ the domain name in bad faith as defined in the Policy.”
The Panel also notes that on the websites at the disputed domain names, several “sponsored listings”, i.e. links to websites, offer services such as learning of foreign languages, founding startups, diets, dating, advertising management, cultivating vegetables, natural diets, etcetera. (See Annex 11 to the Complainant). The Panel believes that the sponsored websites are commercial, and clearly are unrelated to either of the Complainants. Presumably, these websites are an income source via click-through for Respondent.
In other words, Respondent, by using the disputed domain names as shown, has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
In addition, Complainant conducted a “Reverse Whois” search. This search returned a list of 179 domain names registered by Respondent, which contain, aside from Complainants’ marks, numerous other famous or well-known third party marks. The Panel notes that on this list, besides the three disputed domain names, numerous other domain names appear, also containing famous or well-known third parties’ marks, together with a geographic term like “Arabia” or other generic or geographic term, plus the top level domain, such as , , , , , , , , , , , etcetera. In the Panel’s opinion, this list demonstrates that Respondent has clearly engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that the registration of the disputed domain names was in bad faith under Policy paragraph 4(b)(ii).
In sum, the Panel concludes that the disputed domain names were registered and are 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 names and and be transferred to Complainants.
Roberto Bianchi
Sole Panelist
Date: April 14, 2017
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