The Complainant is Dairy Farm International Holdings Limited, Bermuda, United Kingdom, represented by Mayer Brown LLP, Hong Kong, China.
The Respondent is Kirsty Tuxford and Lever Foundation, both of the United States of America (“United States”), self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 9, 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 December 10, 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 December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Response was filed with the Center on January 1, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 18, 2021. 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. On January 19, 2021, the Complainant submitted an unsolicited supplemental filing. Noting that: The Respondent had not yet had an opportunity to address the admissibility of, or respond to, the Complainant’s unsolicited supplemental filing and is self-represented; a) the registered trademarks for, or based on, DAIRY FARM on which the Complaint relies are not registered in the Complainant’s name; b) the Complainant’s licence from the owner of the registered trademarks, Societe Des Produits Nestlé SA (“Nestlé”), to use the expression “Dairy Farm” appears to be limited to use as a corporate identifier and as a trademark only in respect of what may broadly be described as an “ice” business, an “ice cream” business and in respect of various shopping centres in Hong Kong, China (which appear to be no longer operating); c) the terms of the licence do not confer on the Complainant the power to sue for infringement of the trademark; d) the Complainant’s business has demonstrated very substantial revenues, but these appear to be generated under other brands such as IKEA, Wellcome, 7-Eleven, Mannings, Cold Storage, Guardian, Oliver’s, GNC, Marketplace, Gian and Hero; and e) the basis on which the Complainant has registered and is using the domain name f) the Respondent claims, and the Complainant has not disputed, that the Complainant’s licensor has adopted a policy of not selling or using “caged eggs”, On February 8, 2021, the Panel issued Administrative Panel Order No. 1 inviting the Complainant to make a supplemental filing either (a) to obtain the authorization of its licensor, Nestlé, to proceed with the present Complaint, or (b) if it is so minded, to amend the Complaint to add its licensor, Nestlé, as a Co‑Complainant and, if the Complainant availed itself of that opportunity, providing for a supplemental filing in response by the Respondent. On February 10, 2021, the Complainant notified the Center that it intended filing materials in response to Panel Order No. 1, but requesting an extension of time of three weeks (that is, until March 8, 2021). The reason stated for requested extension was “in view of the upcoming Chinese New Year holidays where most of our client’s and Nestle’s offices in this region will be closed”. On February 11, 2021, the Panel granted the Complainant an extension of time to February 24, 2021 “in view of the Chinese New Year Holiday”, with a corresponding extension of the time for the Respondent’s supplemental filing (if any). On February 22, 2021, the Center received an email from the Complainant requesting a further extension of time of two weeks as “in light of internal procedures affecting our client and Nestle, there has been a hold up in obtaining [the required material].” On February 23, 2021, bearing in mind the difficulties created by the COVID-19 pandemic, the Chinese New Year holidays and the apparent need to liaise with the internal procedures of the Complainant’s licensor, the Panel granted the Complainant a further extension of time to March 10, 2021 with considerable reluctance. Corresponding extensions of time were granted for the Respondent to file a supplemental response and for submission of the Panel’s decision. On March 10, 2021, the Complainant sent an email communication to the Center stating that “due to internal administrative reasons the Complainant has been unable to obtain the requested authorisation letter from its licensor, Nestle. The Complainant would like to assure the Panel that it has the authority to register and use the “DAIRY FARM” mark as a corporate identifier in domain names, as evidenced by the fact that it has held and used for many years. The use of is clearly meant to refer to the Complainant as a corporate entity/group and its egg selling practices, and therefore the Respondent has used “dairy farm” in the Disputed Domain Name as a corporate identifier to identify and refer to the Complainant.” On March 15, 2021 and after the Panel had submitted its decision to the Center, the Respondent emailed to the Center a supplemental filing. In the event, it is unnecessary to take the Respondent’s proposed supplemental filing into the record or account. 4. Factual Background The Complainant is incorporated in Bermuda and listed on the London Stock Exchange, with secondary listings in Bermuda and Singapore. It is a member of a group of companies (the Dairy Farm Group), the origins of which can be traced back to 1896 when the first company was established in Hong Kong, China. These days, the Dairy Farm Group is a substantial pan-Asian retailer operating in China (including Taiwan Province of China and Hong Kong, China), Singapore, Malaysia, Indonesia, the Philippines, Cambodia, Brunei Darussalam and Viet Nam. The group operates a range of brands including IKEA, Wellcome, 7-Eleven, Mannings, Cold Storage, Guardian, Oliver’s, GNC, Marketplace, Gian, and Hero. According to the Complaint, the Dairy Farm Group and its associates and joint ventures as at December 31, 2019 had over 10,000 outlets and employed 230,000 people. Its annual sales revenues in 2019 exceeded USD 27 billion. The Dairy Farm Group’s official website is hosted at the domain name “www.dairyfarmgroup.com”. The Complaint includes evidence of a number of trademarks registered in Hong Kong, China for DAIRY FARM. The earliest of these is Registered Trademark No. 19841571AA (formerly Nos 19841571 and 19841572) for DAIRY FARM in a slightly stylized form and registered in respect of a range of goods in International Classes 29 and 30. This trademark (or its pre-merger predecessors) was entered in the Register on July 31, 1984 and is effective from November 23, 1982. Other, later registrations extend the range of goods covered to include goods and services in International Classes 32, 35, 41 and 42. As a result of what is described in the Complaint as a joint venture entered into in November 1992 with Nestlé is now registered as the owner of these registered trademarks. Pursuant to a “Dairy Farm” Corporate Name Agreement entered into on November 5, 1992, Nestlé licensed the use of the trademarks to the Complainant and other members of the Dairy Farm Group. The respondent Lever Foundation (“the Respondent”)1 is a public charity incorporated in the United States. Its mission is to prevent animal suffering and cruelty to animals. The, or at least a significant, project of the Respondent involves campaigning to encourage food corporations to shift away from using “caged eggs”; that is, eggs laid by caged hens. According to the Response, the health risks and cruelty issues resulting from “caged eggs” have led to battery caged egg production being banned in some 30 countries (including the European Union and Switzerland). From September 2018 until early in 2020, the Respondent engaged with the Complainant on the issue of moving away from the use of “caged eggs” by the Complainant. By early 2020, however, the Complainant decided to “work with” the Humane Society International to address the “caged egg” issue, rather than the Respondent. The Complainant also issued an announcement about how it intended addressing the Dairy Farm Group’s use of “caged eggs” which the Respondent regards as “very weak”. The Respondent had earlier, in November 2019, registered the disputed domain name. Following the Complainant’s announcement about its plans to address “caged eggs” 2, the Respondent released a report about what it claims are the results of its investigations into two of the Complainant’s Malaysian egg suppliers on to the website to which the disputed domain name resolves. The results of further investigations, carried out by another charity, Equitas Global, were added to the website in June 2020. The landing page features the trademark DAIRY FARM above the word “Cruelty”. To the right of this, is a five minute video showing scenes allegedly of the conditions at “caged egg” suppliers to the Complainant’s retail stores. The video also reports on the European Food Safety Authority’s finding about the health risks of “caged eggs”. The video also identifies a number of other major retailers who have reportedly committed not to selling “caged eggs” including City Super, Tesco, METRO, Aldi, CarreFour, Compass Group, Sodexo, Aramark, Mondelez International, Nestlé, Grupo Bimbo, Accor Hotels, M&S, Starbucks, Pepsico, Subway and Costco. Immediately beneath the video is the text: “Food safety risks and animal cruelty.” “A shocking new investigation exposes filth and food safety risks in Dairy Farm Group’s egg supply chain.” “Do you shop at Wellcome or Market Place by Jasons? If so, you may want to think again. A shocking new investigation of farms that supply these stores in Hong Kong and Taiwan has revealed what Dairy Farm Group, owner of Wellcome and Market Place by Jasons, wants to keep hidden: the company continues to sell customers eggs from filthy, cruel battery cage egg farms with higher food safety risks…” After some further text, the browser is invited to sign a petition. There also links to various studies relied on to support the claims about the health and cruelty risks of caged links. In addition to the page to which the disputed domain name resolves directly, there are also subpages in the form “http://dairyfarmeggs.com/[name of director]/” in which essentially the same videos and text are repeated. The opening text however is targeted more personally, in the form: “Do you know [name of director]?” “[Name of director] and Dairy Farm Group are supporting filth and animal cruelty.” “[Name of director] is on the board of Directors for Dairy Farm Group, one of the largest retail companies in Asia. But [Name of director] and Dairy Farm have a dirty secret – A shocking series of investigations have revealed what the company want to keep hidden…” The Complainant disputes these allegations, stating the website contains false and misleading information. Equitas Global, which the Respondent says manages the content for the Respondent’s website, has also registered the names of a number of the Dairy Farm Group’s directors and officers as domain names where similar allegations and materials have been published. The Complaint also includes emails sent by Equitas Global personnel to some of these directors and officers warning them that it was also going to begin taking out Google ads promoting their, and Dairy Farm Group’s, alleged practices. There is evidence that these ads are in fact being published if someone were to search on the executive’s name. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Admissibility of Complainant’s Supplemental Filing Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear. In light of the Respondent’s objections to the Complainant’s standing to bring the Complaint, the most significant aspect of the Complainant’s unsolicited supplemental filing is the attempt to broaden its claims from reliance on the registered trademarks to introduce what is essentially a secondary ground based on claimed common law rights in “Dairy Farm Eggs” as an unregistered trademark. On balance, the Panel considers it appropriate to admit the supplemental filing into the record in the present case. B. Who is the Respondent According to paragraph 1 of the Rules, the respondent in an administrative proceeding under the Policy is the holder of the domain name against which the complaint has been initiated. According to the Registrar, the holder is Ms Tuxford. While the Complaint describes her as an employee of Lever Foundation, the Response claims she is an independent contractor and registered the disputed domain name as its agent. On her LinkedIn profile, Ms Tuxford describes herself as “[c]urrently working as a self-employed Campaign Manager for the nonprofit Lever Foundation”. The contact details Ms Tuxford used to register the disputed domain name are the address for Lever Foundation. Ms Tuxford also used an email address supplied by Lever Foundation. In the circumstances, the Panel considers it appropriate for both Ms Tuxford and Lever Foundation to be recorded as the Respondent. The Complainant also contends that a Mr Cooney should also be a respondent. According to the Complainant, Mr Cooney is the founder and managing partner of Lever Foundation. Mr Cooney led the discussions or meetings which took place between the Complainant and the Respondent prior to March 2020. The Respondent disputes this, but admits Mr Cooney is a director of Lever Foundation. There is insufficient information before the Panel to determine whether Mr Cooney was involved in the Respondent’s decision to register and use the disputed domain name. In the circumstances of this case, therefore, the Panel does not consider he should be added as a respondent. C. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven the registration of a number of trademarks for DAIRY FARM. It has also established that it and at least some other members of the Dairy Farms Group, have used “Dairy Farm” extensively in Hong Kong, China and other Asian countries (at least) as their corporate identifier and in the domain name The disputed domain name is confusingly similar to these; consisting as it does solely of the trademark and the dictionary term “eggs”. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 , 1.8 and 1.11 . The trademarks, however, are registered in the name of Nestlé. Nestlé has licensed the Complainant rights to use the trademarks and the name “Dairy Farm”. As reflected in the WIPO Overview 3.0 , section 1.4.1 , it has generally been accepted that members of the same corporate group or exclusive licensees of the trademark owner have standing under the Policy. More generally, the contractual wording of the licence agreement and the nature of the relationship between the trademark owner and the Complainant must be examined to determine the scope of the Complainant’s rights. See NA PALI SAS v BWI Domains,WIPO Case No. D2008-1859 and Aldi GmbH & Co. KG, Aldi Stores Limited v. Jack Trotter,WIPO Case No. D2018-1052. The Respondent points out that the Complainant’s rights to use the trademark under the licence agreement with Nestlé are very limited. The rights are limited to use as a corporate identifier, but the Complainant and its subsidiaries are forbidden from using the corporate name, defined as “Dairy Farm”, or logo as trademarks for goods or services of any kind or “on any name plates or outdoor signs in or outside any trading entities.” However, clause 3.5 of the licence agreement does permit the Dairy Farm Group to use “Dairy Farm” and the logo as trademarks in respect of the “ice business”, the “ice cream retail business” and the operation of then existing “Dairy Farm Shopping Centres” in Hong Kong, China. The Respondent states and, despite filing a supplemental filing, the Complainant does not dispute that the shopping centres are no longer operational and those rights have ceased. Moreover, the licence agreement does not authorise the Complainant to sue for infringement. Rather, clause 7 imposes an obligation to inform the licensor (Nestlé) immediately of any uses of names or trademarks identical or similar to “Dairy Farm” of which they become aware. The Complainant and its subsidiaries must then take such action or assist the licensor to take such action as the licensor then decides, at the licensor’s expense. Neither the Complaint nor the supplemental filing include evidence that the Complainant has notified Nestlé of its objections to the disputed domain name. Nor do they provide evidence that Nestlé has directed the Complainant to bring the Complaint. As noted in section 3 above, the Complainant has not been able to provide evidence that Nestlé consents to the Complainant bring this Complaint, despite an extension of time in the order of one month to rectify the deficiency. It does not appear from the Complaint that the Complainant or its subsidiaries are subsidiaries of Nestlé, its parent, Nestlé S.A., or members of the Nestlé group. The Complaint describes the nature of the transaction by which Nestlé became the trademark owner as a joint venture arrangement in which Nestlé S.A. acquired a 51 per cent interest in those of the Complainant’s subsidiaries relating to the manufacture and sale of ice cream, chilled products, ready-to-drink products (other than coffee or tea) and wet soy products (other than soya sauce) in Macau and China (including Hong Kong). The Complaint also describes the Complainant as a member of the Jardine Matheson Group. The fact that the complainant was operating under the name Komatsu as well as being a subsidiary of the trademark owner was an important consideration in the panel finding that Komatsu Deutschland GmbH had a beneficial interest in the trademark sufficient to confer standing under the Policy. Komatsu Deutschland GmbH v. Ali Osman / ANS,WIPO Case No. D2009-0107. The panel considered the fact of operations under a corporate name corresponding to the trademark as particularly persuasive in Desjardins Capital Management Inc. v. Perfect Privacy LLP / DesJardins, Julie,WIPO Case No. D2018-1341. Unlike the present case, however, the complainant in that case also appears to have been a subsidiary of the trademark owner or otherwise a member of the same group. Both decisions, therefore, are consistent with the consensus position that a complainant who is not a member of the same corporate group as the trademark owner must show that the terms of its licence permit it to enforce rights in the trademark or it otherwise has consent of the trademark owner to bring the complaint. In the present case, the Complainant has not provided such evidence. Despite being given ample opportunity, the Complainant has failed to join the trademark owner, Nestlé, as a complainant or show that Nestlé consents to the bringing of this Complaint. Accordingly, the Panel finds that the Complainant has not demonstrated it holds rights in the registered trademarks it relies on. As already noted, the Complainant also contends it has common law rights in “Dairy Farm” as an unregistered trademark arising from continuous use for over a century. This also includes its registration and use of the domain name Despite Panel Order No.1, the Complainant has not explained how the registration and use of that domain name fits within the terms of its licence from Nestlé, other than to say that Nestlé’s consent may be inferred as the Complainant has been using the domain name for over two decades. The Complaint does provide evidence that its corporate group has very substantial revenues and some 230,000 employees. It is unclear from the Complaint, however, the extent to which the revenues are attributable to use of the “Dairy Farm” trademark. The trademark does appear as a logo on the website at “www.dairyfarmgroup.com”. However, the substantial retail operations appear to operate under their own brands: City Super, Tesco, METRO, Aldi, CarreFour, Compass Group, Sodexo, Aramark, Mondelez International, Nestlé, Grupo Bimbo, Accor Hotels, M&S, Starbucks, Pepsico, Subway and Costco. The extent, if any, to which the “Dairy Farm” trademark is used in connection with those businesses in a way which has generated reputation and goodwill with the public is not at all clear. As the Complainant points out, however, the adoption and use of the disputed domain name by the Respondent is predicated on the association between the name “Dairy Farm” and the Complainant’s activities. A fundamental objection to the Complainant’s contention, however, is that the ownership of rights in “Dairy Farm” as an unregistered trademark in someone other than the owner of the registered trademark is essentially inconsistent with the continued validity and maintenance of the registered trademark. In that connection, the licence agreement provides in clauses 4.1 and 5.1: “DFIH and any member of the Dairy Farm Group will not do or permit anything which will injure or diminish the exclusive rights which the Licensor has acquired in the Corporate Name, the Chinese Characters, the Logo, the initials “DF” and the trademark “Dairy Farm”.” And “DFIH and the DF Companies shall not use on or in connection with any goods or services, any name or trademark so nearly resembling the Corporate Name or the Logo as to be likely to cause confusion, or apply for registration of trademarks deceptively similar to the Corporate Name or the Logo.” Further, clause 9.5 of the licence agreement provides that any goodwill which the Complainant and its subsidiaries might develop through use of the corporate name and logo will be transferred to Nestlé on termination of the licence agreement. The rights in “Dairy Farm” as an unregistered trademark which the Complainant seeks to assert seem to the Panel inconsistent with trademark principle, the assignment of the registered trademarks to Nestlé and the terms of the Complainant’s licence. The registered trademark cannot operate as the identifier of trade source in accordance with the function of trademarks if there is another user who has developed a substantial, independent reputation with the public in the trademark as the source. Moreover, assertion of the 100 years prior use is to set the assignment of the registered rights and very limited licence back at naught. Accordingly, the Panel is unable to accept the Complainant’s claim that it has rights in “Dairy Farm” as an unregistered trademark independently of the rights in the registered trademarks, which the Complainant can assert independently of Nestlé. Therefore, the Panel finds that the Complainant has not established that the first limb of the Policy is satisfied and, accordingly, the Complaint must be denied. As the Complaint must fail, no good purpose would be served by considering the issues arising under the second and third requirements of the Policy. 6. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be denied. Warwick A. Rothnie 1 So far as appears from the Response, the Respondent Ms. Tuxford registered the disputed domain name as agent for Lever Foundation and, except to the extent necessary to distinguish between them, the Panel will simply refer to Lever Foundation as the Respondent. 2 The Response states “In response to Dairy Farm Group’s failure to adequately address this important animal cruelty and food safety issue, in March of 2020 EG released an investigation into two Dairy Farm Group egg suppliers in Malaysia.”
Sole Panelist
Date: March 23, 2021
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