ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Slaney Foods International Unlimited Company and Irish Country Meats (Sheepmeat), Unlimited Company v. Alicha Jacobs, Freelancer/Alicha Jacobs, UAB Biodela Pakalnes Case No. D2024-3943 1. The Parties The Complainants are Slaney Foods International Unlimited Company, Ireland, and Irish Country Meats (Sheepmeat), Unlimited Company, Ireland, represented by FRKelly, Ireland. The Respondent is Alicha Jacobs, Freelancer, Cameroon; Alicha Jacobs, UAB Biodela Pakalnes, United States of America. 2. The Domain Names and Registrars The disputed domain name is registered with Cosmotown, Inc., and the disputed domain name is registered with Name.com, Inc. (the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2024. On September 26, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 26, 2024, and October 4, 2024, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which partly differed from the named Respondent (Alicha Jacobs, Freelancer/Redacted For Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainants on October 4, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainants to either file separate complaints for the disputed domain name associated with different underlying registrant or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainants filed an amended Complaint on October 9, 2024. 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
page 2 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 October 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2024. The Center appointed Nayiri Boghossian as the sole panelist in this matter on November 12, 2024. 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 Complainants are part of the same group of companies. They produce sustainable beef and own trademark registrations containing SLANEY worldwide such as: 1. European Union Trademark Registration for SLANEY GOLD (figurative) No. 008698946, registered on April 28, 2010; 2. European Union Trademark Registration for SLANEY VALLEY NATURAL IRISH LAMB (figurative) No. 008699282, registered on May 24, 2010. The disputed domain name was registered on November 25, 2023, and resolves to a website which purports to sell the Complainants’ products and substantially replicates the Complainants’ prior website. The disputed domain name was registered on June 16, 2023, and resolves to an inactive website. 5. Parties’ Contentions A. Complainants The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainants contend that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainants have rights. The disputed domain names incorporate the Complainants’ trademark and it is the dominant part. The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainants did not authorize the Respondent to use their trademark. The Complainants have prior rights in the trademark. The Respondent is not commonly known by the disputed domain names nor the trademark. The Respondent cannot reasonably demonstrate a legitimate noncommercial or fair use of the disputed domain names. The disputed domain name resolves to a website that contains references to the Complainants’ trademarks and products. It also reproduces images from the Complainants’ prior website. The Complainants contend that the disputed domain names were registered and are being used in bad faith. The disputed domain name was registered or acquired primarily for the purpose of disrupting the Complainants’ business. The Respondent must have had knowledge of the Complainants’
page 3 trademark as it is renowned and the disputed domain name resolves to a website which replicates the Complainants’ prior website. The Complainants contend that the disputed domain name must be intended for use in the same manner as the domain name . B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings The Panel notes that the registrant organizations are different for the disputed domain names, but they are both registered by the same Respondent, according to the same registrant’s name and the email address. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainants have shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds that the dominant textual element of the Complainants’ marks, “SLANEY”, is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “food” and “foods”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
page 4 The Panel notes that the composition of the disputed domain names carries a risk of implied affiliation, which is further reinforced by the impersonating nature of the content exhibited at the disputed domain name . WIPO Overview 3.0, section 2.5.1. In this regard, panels have held that the use of a domain name for illegitimate activity here, claimed impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent was aware of the Complainants’ trademark and products as the disputed domain name resolves to a website which purports to offer such products and substantially replicated the content priorly exhibited at the Complainant’s own website. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In relation to the disputed domain name , panels have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainants’ trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. In relation to the disputed domain name , panels have held that the use of a domain name for illegitimate activity here, claimed impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy. The Panel finds that the Complainants have established the third element 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 names and be transferred to the Complainants. /Nayiri Boghossian/ Nayiri Boghossian Sole Panelist Date: November 19, 2024
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