The Complainant is Groupe Lactalis, France, represented by Inlex IP Expertise, France.
The Respondent is Contact Privacy Inc. Customer 1246860447, Canada / Pietro Chirco, Pietro, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2020, 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 July 5, 2020, 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 amended Complaint on July 9, 2020. The Center verified that the Complaint together with the amended 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 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2020. The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 14, 2020. 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 Groupe Lactalis, one of the largest companies in dairy industries worldwide. The Complainant is operative since 1933 and is active in several countries in all continents. Since 1984, that is for almost 40 years, the Complainant operates under the denomination “GROUPE LACTALIS”. The Complainant owns a considerable number of registrations for marks formed by the mark LACTALIS throughout the world, including French trademark registration No. 4438490 for LACTALIS, registered on March 20, 2018. The Complainant also holds numerous domain names formed by the mark LACTALIS. The Complainant has established rights over the mark LACTALIS internationally, and its fame and renown is inevitably linked to the Complainant. Further to the submission of the Complaint, the Registrar confirmed to the Center the registrant details of the disputed domain name, an individual with an address in New York, United States and an email address that bears the trademark of a third party. The disputed domain name was registered on April 6, 2020. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name bears the famous trademark LACTALIS, associated with the code referring to the country where it has its seat, France – “fr”, in a clear attempt to create confusion and mislead Internet users. The Complainant claims not to have any relationship with the Respondent and has never given the Respondent permission to use its mark or to apply it to any kind of domain name incorporating this mark. As stated by the documents presented, the registration and use of the trademark LACTALIS predate the registration of the disputed domain name. The disputed domain name does not resolve to an active website. The Complainant alleges that such registration and use is clearly calculated to mislead consumers and tarnish the Complainant’s trademark. Further, the Complainant alleges that there is no coincidence in the adoption of the disputed domain name, being the choice a pretext for commercial advantage. The Complainant tried to contact the Respondent by addressing a cease-and-desist (“C&D”) letter by email, but no response was ever received to this correspondence. In sum, the Complainant alleges that the registration and use of the disputed domain name is intentional to mislead Internet users, that it is clear that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are: i. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; ii. the respondent has no rights or legitimate interests in respect to the domain name; and iii. the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name is, indeed, confusingly similar to the LACTALIS trademark, as the latter is virtually incorporated in the disputed domain name, with the mere addition of the element “fr”. The Complainant has presented consistent evidence of ownership of the trademark LACTALIS in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark. The addition of the element “fr”, a clear reference to the country where the Complainant has its seat, does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant B. Rights or Legitimate Interests The evidence shows that the trademark LACTALIS is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent. Furthermore, the Respondent does not appear to be commonly known by the disputed domain name. It has also been shown that the Respondent is not making any direct use of the disputed domain name, noting the disputed domain name does not resolve to an active website. The Respondent is not making a noncommercial or fair use of the disputed domain name, nor a bona fide offering of goods or services. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case. The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith The Complainant’s trademark is recognized as being well known in the respective market. In this Panel’s view, the Respondent was aware of the Complainant’s rights in the LACTALIS mark at the time the disputed domain name was registered. These facts indicate that such registration was made in bad faith. The disputed domain name was registered to clearly mislead Internet consumers – hence the intentional addition of the country code “fr” to the mark LACTALIS in the disputed domain name. The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant. Such impression may lead the public to consider the disputed domain name leads to a site related to the Complainant. The current passive holding of the disputed domain name is also evidence of bad faith from the Respondent. Previous UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder does not prevent a finding of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Here, the Panel notes the distinctive and well-known nature of the Complaint’s trademark LACTALIS, the failure of the Respondent to submit a Response, and the implausibility of any good faith use to which the disputed domain name may be put support a finding of bad faith. On a further note, the Registrar-confirmed registrant details affirms a finding of bad faith. The email address provided appears to be an impersonation of a well-known third party, the domain name to which said registrant email address relates does not resolve to an active site. The Panel finds that the Respondent registered and is using the disputed domain name with the intention of improperly obtaining benefits and harming the Complainant’s reputation in the market. In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain name 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 name Alvaro Loureiro Oliveira
Sole Panelist
Date: August 26, 2020
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