Westmore · UDRP DecisionHklactalis.com
The Panel ordered transfer of <hklactalis.com>. It found the domain confusingly similar to the Complainant’s figurative trademarks incorporating LACTALIS because it wholly incorporated LACTALIS with the prefix “hk”. The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the non-responding Respondent did not rebut. Bad-faith registration and use were established based principally on the distinctive and invented nature of LACTALIS and the Respondent’s use of the domain to send at least one fraudulent email impersonating the Complainant and seeking to divert a customer payment.
The timeline behind hklactalis.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind hklactalis.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision illustrates that fraudulent use of a domain’s email functionality can be decisive under the bad-faith element even where the associated website was initially inactive and later only displayed a parking page. It also demonstrates the procedural handling of apparent identity theft, including redaction of the named individual and non-publication of a transfer annex.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Groupe Lactalis v. Registration Private, Domains By Proxy, LLC / [Name Redacted] 1 Case No. D2021-2406 1. The Parties The Complainant is Groupe Lactalis, France, represented by Inlex IP Expertise, France. The Respondent is Registration Private, Domains By Proxy, LLC / [Name Redacted]. 2. The Domain Name and Registrar The disputed domain name <hklactalis.com> is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2021, the Registrar transmitted by email to the Center its verification response stating that that the Respondent named above was not the registrant of the disputed domain name 2 . The Center verified that the 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 August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021. The Center appointed Steven A. Maier as the sole panelist in this matter on October 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. 4. Factual Background The Complainant is a company registered in France. It is a supplier of food products under the name and trademark LACTALIS, specializing in the dairy sector. The Complainant is the owner of numerous registrations for a combined word and device or figurative trademark incorporating the term LACTALIS as shown below: The Complainant’s said trademark registrations include, for example, the following: - Hong Kong trademark number 302383957, registered on September 20, 2012 in numerous classes; - France trademark number 4438490 registered on March 20, 2018 in numerous classes; and - European Union Trademark number 017959526, registered on May 22, 2019 in numerous classes. The disputed domain name was registered on May 24, 2020. According to the Complainant’s submissions, the disputed domain name had not resolved to any active website. At the date of this decision, however, the disputed domain name resolved to a “parking page” website including links to providers of food, beverage, wholesale, distribution and other goods and services. 5. Parties’ Contentions A. Complainant The Complainant states that it was formed in 1933 and grew steadily into one of the world’s leading providers of dairy products. It produces evidence of its company history and business profile. The Complainant states that it currently operates 266 production sites in 51 countries around the world, employing over 85,000 individuals. It states that its annual turnover is EUR 21.1 billion. The Complainant relies on its trademark portfolio referred to above and states that it is also the holder of numerous domain names including the LACTALIS mark. These include <lactalis.hk>, registered on September 29, 2011. The Complainant submits that its trademark LACTALIS is a distinctive, invented name which has no dictionary meaning in either French or English and which has become widely associated in commerce with the Complainant and its business. The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark LACTALIS. It states that the trademark is incorporated in the disputed domain name together with the term “hk”, which is a geographical identifier for the territory of Hong Kong and does not prevent the disputed domain name from being confusingly similar to its trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no link with the Respondent and has never licensed or authorized it to use the LACTALIS trademark. The Complainant further submits that the Respondent has made neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant submits that the Respondent has registered and used the disputed domain name for dishonest purposes as further described below. The Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant reiterates that its LACTALIS trademark is an invented and distinctive term which corresponds to the Complainant and its business activities. The Complainant contends that the Respondent cannot in the circumstances have registered the disputed domain name coincidentally and must surely have registered it in order to take advantage of the Complainant’s reputation, particularly in Hong Kong. The Complainant states that it has a senior employee named ”[Name Redacted]” and that it is clear, therefore, that the Respondent impersonated that individual in connection with its registration of the disputed domain name. The Complainant contends that by redirecting the disputed domain name to a non-functioning website, the Respondent disrupts the Complainant’s business because Internet users are liable to believe that the website is operated by the Complainant and is not working. The Complainant further alleges that the Respondent has configured email servers for the disputed domain name and is able to send emails from addresses “…@hklactalis.com”. The Complainant submits evidence that the Respondent has in fact sent at least one such an email for a fraudulent purpose, namely, an email from “[…]@hklactalis.com” to a customer of the Complainant stating that that customer’s remittance of EUR 58,601 has been delayed and that alternative bank details for payment will be supplied. The email purports to be signed by the Complainant’s “Customer Service” department for Asia. The Complainant also submits that the Respondent has attempted to hide its true identity and that the Complainant has attempted to send various “cease and desist” letters to the Respondent, via the Registrar and otherwise, none of which has received any reply. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established that it has registered trademark rights in respect of a combined word and device or figurative mark which prominently includes the term LACTALIS. The disputed domain name wholly incorporates that trademark together with the prefix “hk”, the addition of which letters does not prevent a finding of confusing similarity. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel accepts the Complainant’s submissions that the mark LACTALIS is an invented and distinctive name which has no meaning in commerce other than to refer to the Complainant and its business. In the light of this, and of the Respondent’s use of the disputed domain name as discussed below, the Panel has no hesitation in inferring that the Respondent registered the disputed domain name with the Complainant’s trademark in mind and with the intention of taking unfair commercial advantage of that trademark. The Panel further accepts the Complainant’s allegations, which the Respondent has not sought to dispute, that the Respondent has used the disputed domain name for the purpose of sending at least one fraudulent email to a customer of the Complainant, which impersonated the Complainant with the intention of dishonestly obtaining a payment from that customer. Such activity is clearly indicative of use of the of disputed domain name in bad faith. It does not affect the Panel’s findings in this regard that the disputed domain name was not immediately used for the purpose of any website or that it was later used for the purpose of a “parking page” website. In the circumstances, the Panel finds that the disputed domain name has been registered and is being used 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, <hklactalis.com>, be transferred to the Complainant. Steven A. Maier Sole Panelist Date: October 19, 2021 1 The Respondent appears to have used the name of a third party when registering the Domain Name. Such information was disclosed by the Privacy Service to the Complainant prior to launching the Complaint. Hence, the Complainant filed the Complaint against Registration Private, Domains By Proxy, LLC and the disclosed individual. In light of the Complainant’s submissions regarding identity theft, the Panel has redacted the disclosed individual’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 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 . 2 The Complainant produces, as evidence in support of its Complaint, correspondence with the Privacy Service which names the registrant of the disputed domain name as [Name Redacted]. While this registrant has provided a street address which appears to be in Malaysia, that address concludes with the country code ZA, which represents South Africa.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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