The Complainant is Arla Foods Amba of Viby, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Zhao Zhong Xian of Shenyang, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2017, 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 transmitted an email in English and Chinese to the Parties regarding the language of the proceeding on March 3, 2017. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese the Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 5, 2017. 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 a dairy company and co-operative owned by 12,650 dairy farmers in seven countries. The Complainant has operations worldwide, including in China, where it has an office in Beijing. The Complainant owns multiple trademark registrations, including International Trademark Registration number 731917 for ARLA registered from March 20, 2000, designating multiple jurisdictions including China, and specifying goods in classes 1, 5, 29, 30, 31 and 32. That registration remains in effect. The Complainant operates a website at the domain name and a Chinese language website at the domain name where it provides information about itself and its products. The Complainant registered those domain names on July 15, 1996 and December 16, 2002, respectively.
The Respondent appears to be an individual located in China and is the registrant of the disputed domain name. The disputed domain name was registered on December 4, 2016. It does not resolve to any active website.
The Complainant sent a cease and desist letter to the Respondent by email on January 14, 2017, requesting a voluntary transfer of the disputed domain name. The Respondent replied by email on January 17, 2017 offering to transfer the disputed domain name for USD 1,000.
The Respondent's contact email address is associated with over 500 other domain name registrations, many of them in the ".site" or ".website" domains. Panels in previous proceedings under the Policy have found that the Respondent had registered and was using other domain names in bad faith. See, for example, Arcelormittal S.A. v. Zhao Zhong Xian,WIPO Case No. D2016-1950, and Compagnie De Saint Gobain v. Zhao Zhong Xian,WIPO Case No. D2016-2120. 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the Complainant's ARLA trademark. The disputed domain name directly and entirely incorporates that trademark with the generic Top-Level Domain ("gTLD") ".website".
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has not by virtue of the content of the website, nor by its use of the disputed domain name shown that it will be used in connection with a bona fide offering of goods or services. The Complainant has become a distinctive identifier associated with the term "arla" and the disputed domain name is intended to take advantage of an association with the business of the Complainant.
The disputed domain name was registered and is being used in bad faith. The Complainant's trademarks predate the registration of the disputed domain name. It is almost certain that the Respondent was aware of the unlawful registration of the disputed domain name. The disputed domain name currently does not resolve to an active website. The Respondent offered a price for the transfer of the disputed domain name in excess of reasonable out-of-pocket expenses. The Respondent's email address is associated with around 564 domain names including well-known brands, which constitutes a pattern of abusive conduct. The Respondent has been unsuccessful in at least five other domain name disputes. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that (1) the Respondent understands English because (a) the Respondent has registered a well-known brand with a global presence which uses the English language extensively, (b) the email chain between the Complainant's legal representatives and the Respondent was in English, and (c) the disputed domain name is in Latin script and includes the gTLD ".website" which is applicable to a broader audience than merely China; and (2) the Complainant would be unfairly disadvantaged if it had to translate the Complaint. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The correspondence between the Parties prior to the commencement of this proceeding was also in English, which demonstrates that both Parties are able to understand and communicate in that language. Further, having received notice of the Complaint and commencement of the proceeding in Chinese and English, the Respondent has expressed no interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the ARLA trademark.
The disputed domain name wholly incorporates the Complainant's ARLA trademark as its initial and dominant element.
The only additional element is ".website", which is a gTLD suffix. A gTLD suffix generally has no capacity to dispel confusing similarity between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. In this case, the gTLD suffix is ".website", which is merely a generic description of what a domain name can resolve to and does not dispel confusing similarity between the disputed domain name and the Complainant's trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] 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 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 [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's ARLA trademark. The disputed domain name does not resolve to any active website and there is no evidence of any preparations to use it in connection with an active website. That is not a use of the disputed domain name in connection with an offering of goods or services, nor evidence of some legitimate noncommercial or fair use, as envisaged by the first and third circumstances of paragraph 4(c) of the Policy. Further, the Respondent's name is "Zhao Zhong Xian" not "arla". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The first and second of these are as follows:
"(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name;" and
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct."
With respect to registration, the Panel observes that disputed domain name, apart from the gTLD, is identical to the Complainant's ARLA trademark. The Respondent registered the disputed domain name many years after the Complainant registered its trademark, including in China where the Respondent is located. The Complainant and its goods and services are the top results for the term "arla" in the Baidu search engine. The Respondent's email address is associated with hundreds of domain names, most if not all of which are composed of a brand name and a gTLD, like the disputed domain name. Therefore, the Panel finds that the Respondent deliberately chose to register the Complainant's trademark in the disputed domain name in bad faith.
With respect to use, the Panel notes that the disputed domain name does not resolve to any active website and that the Respondent offered to transfer the disputed domain name to the Complainant for a price of USD 1,000. This price is in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name. Consequently, the Panel finds that the facts of this case fall within the circumstances set out in paragraph 4(b)(i) of the Policy.
Further, the Panel notes that the Respondent has previously registered and used other domain names in bad faith. As in the current proceeding, the domain name in at least two of those previous proceedings comprised a third party trademark and the ".website" domain and did not resolve to any active website. See Arcelormittal S.A. v. Zhao Zhong Xian, supra., (regarding ) and Compagnie De Saint Gobain v. Zhao Zhong Xian, supra., (regarding ). This constitutes a pattern of conduct. The Panel finds that the facts of this case also fall within the circumstances set out in paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: April 10, 2017
Full & Egal Universal Law Academy