WIPO Domain Name Decision D2021-2216 for lactalis-ua.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Groupe Lactalis v. admin tools, admin space llc Case No. D2021-2216 1. The Parties

The Complainant is Groupe Lactalis, France, represented by Inlex IP Expertise, France

The Respondent is admin tools, admin space llc, United States of America.

2. The Domain Name and Registrar

The disputed domain name, (the “Domain Name”), is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 13, 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 July 15, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.

The Center appointed Tony Willoughby as the sole panelist in this matter on September 14, 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.

The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent.

4. Factual Background

The Complainant is a multi-national company incorporated in France. It is engaged in the food industry, particularly the dairy sector. The business was founded in 1933 and has traded under the “Lactalis” name since 1999. It is the registered proprietor of numerous trade mark registrations covering its name including French trade mark registration No. 98.766.743 LACTALIS (word) registered on December 29, 1998 for various services in classes 35, 36, 40, 41, 42 and 45.

The Complainant is the holder of several domain name registrations featuring the “Lactalis” name, one of which, in the Ukrainian country-code Top Level Domain is used by the Complainant for its Ukrainian website and the email addresses of its staff working in the Ukraine.

The Domain Name was registered on June 7, 2021. It is not connected to an active website.

In June 2021 the Domain Name was used by the Respondent for an email address in an email exchange with a third party to impersonate an employee of the Complainant whose email address used the domain name, . The exchange exhibited to the Complaint demonstrates that the third party was deceived into believing that he was communicating with the Complainant’s employee.

5. Parties’ Contentions A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s LACTALIS trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) the Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s LACTALIS registered trade mark, followed by a hyphen and the letters “ua” (the designation commonly used for Ukraine) and the generic “.com” Top Level Domain identifier.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:

“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The Complainant’s registered trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The evidence filed by the Complainant demonstrates to the satisfaction of the Panel that the Respondent registered the Domain Name to imitate the domain name used by the Complainant for its Ukrainian business (including its staff email addresses) and for the purpose for which it is using it, namely to impersonate the Complainant’s staff in email traffic with third parties (see section 4 above).

On no basis can such a use give rise to rights or legitimate interests in respect of the Domain Name in the hands of the Respondent. The Panel finds that the Respondent has no such rights or legitimate interests.

D. Registered and Used in Bad Faith

By the same reasoning the Panel finds that the Domain Name has been registered and is being used in bad faith. Targeting a trade mark owner by registering a domain name very similar to the complainant’s trade mark for the purpose of using it (and indeed using it) to impersonate the complainant cannot be anything other than registration and use in bad faith within the meaning 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 Domain Name, , be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: September 15, 2021

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