The Complainant is Groupe Lactalis, France, represented by Inlex IP Expertise, France.
The Respondent is Registration Private (ID: CR447384913), Domains By Proxy, LLC / Name Redacted, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, the Registrar transmitted by email to the Center its verification response 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 January 25, 2021 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 January 28, 2021. 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”). On February 1, 2021, the Center received an informal communication from an individual asking information about the domain name in the present proceeding and another communication on February 19, 2021 from the same individual explaining that he does not have ownership or control over the disputed domain name. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. The Center notified the commencement of Panel Appointment Process on February 19, 2021. The Center appointed George R. F. Souter as the sole panelist in this matter on February 25, 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. 4. Factual Background The Complainant is a French company which, since 1984 has been trading under the trademark LACTALIS in connection with products in the food, particularly the dairy, industry. Details of the Complainant’s trading internationally under its LACTALIS trademark have been supplied to the Panel. The Complainant is the proprietor of a number of trademark registrations relating to its LACTALIS trademark, including French Trademark registration number 4438490, filed and registered on March 20, 2018, and European Union Trade Mark registration number 017959526, filed on September 20, 2018 and registered on May 22, 2019. The disputed domain name was registered on October 21, 2020, and currently resolves to a blank page. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its LACTALIS trademark, containing the LACTALIS trademark in its entirety, together only with the descriptive or non-distinctive element INTERNATIONAL. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that it has never granted permission to the Respondent to use its LACTALIS trademark in connection with registration of a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith. B. Respondent The Center received informal communications from an individual explaining that he does not have ownership or control over the disputed domain name. The Respondent did not formally respond to the Complaint. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (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 The Panel is satisfied from the information provided that the Complainant has sufficient rights in its LACTALIS trademark for the purposes of these proceedings, and that the LACTALIS trademark enjoys considerable common law rights arising from international trading. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.org” to be irrelevant in the circumstances of the present case, and so finds. It is well-established in prior decisions under the Policy that the mere addition of a descriptive or non distinctive element to a clearly recognizable trademark does not prevent a finding of confusing similarity. In the circumstances of the present case, the Complainant’s LACTALIS trademark is instantly recognizable in the disputed domain name, and the mere addition of the word “international”, which, in the Panel’s opinion, is clearly a descriptive or non distinctive element, in the Panel’s opinion, does not prevent a finding of confusing similarity, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. The Panel further notes that the evidence on file shows that the disputed domain name was used to send fraudulent emails, impersonating Complainant’s employee, to obtain monetary gain. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstances of the present case, in which the Panel regards it as self-evident that the Complainant’s LACTALIS trademarks were deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. Since the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, it has become well-established in prior decisions under the Policy that the mere lack of present use of a domain name found to have been registered in bad faith does not avoid a finding of bad faith use of a disputed domain name, if a complainant has a legitimate concern that any commencement of use of a disputed domain name would be likely to damage the complainant’s interests as owner of a confusingly similar trademark. In the circumstances of the present case, the Panel considers that any use of the disputed domain name would be likely to imply an unjustifiable connection with the Complainant, and that the Complainant has a legitimate concern in this regard. Accordingly, the Panel finds that the disputed domain name is being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 George R. F. Souter 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: March 11, 2021
Full & Egal Universal Law Academy