Groupe Lactalis v Sophia

WIPO Case No. D2025-0096

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Groupe Lactalis v. Sophia

Case No. D2025-0096

1. The Parties

The Complainant is Groupe Lactalis, France, represented by Nameshield, France.

The Respondent is Sophia, United States of America.

2. The Domain Name and Registrar

The disputed domain names <lactalis-usd.cc> and <lactalis-usd.net> are registered with Dominet (HK)

Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2025.
On January 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 14, 2025, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on January 14, 2025, 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 15, 2025.

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 January 16, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 5, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 6, 2025.

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The Center appointed Marina Perraki as the sole panelist in this matter on February 12, 2025. 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

Complainant is a French multi-national company founded in 1933, engaged in the food industry, particularly
the dairy sector. Complainant has traded under the name “Lactalis” since 1999. Per Complaint,
Complainant is the largest dairy products group in the world, with over 85,500 employees, 266 production
sites and a presence in over 51 different countries. Complainant owns several trademark registrations for
LACTALIS including the European Union trademark registration No. 1529833, LACTALIS (word), filed on
February 28, 2000, and registered on November 7, 2002, for goods and services in international classes 1,

5, 10, 13, 16, 31, 33, 34, 40 and 42.

Complainant is also the owner of the domain name registration <lactalis.com> registered on January 9,

1999.

The disputed domain names were registered on November 30, 2024, and lead to inactive websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the disputed domain names:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

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 Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

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The entirety of the mark 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, “usd” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such term 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 generic Top-Level Domain (“gTLD”) “.net” and the country code Top-Level Domain (“ccTLD”) “.cc” are disregarded, as gTLDs and ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

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.

The Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the disputed domain names. As per the Complainant, the Respondent was not authorized to register the disputed domain names.

The Respondent did not demonstrate any prior or bona fide use of the disputed domain names or a trademark corresponding to the disputed domain names in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Names resolved to inactive websites.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

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.

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.

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To the extent that the websites at the disputed domain names are inactive, the Panel notes that panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.

The LACTALIS trademark had been widely used and registered by Complainant at the time of the disputed names.
domain name registrations. The Panel notes that the Respondent was subject to another UDRP proceeding
with the Complainant concerning the domain name <lactalis-usd.com> (Groupe Lactalis v. Sophia, Sophia,
WIPO Case No. D2024-5164). The Panel noting also the pattern of bad faith conduct, finds it likely that the
Respondent had the Complainant’s trademark in mind when registering the disputed domain names

(Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Having reviewed the available record, the Panel finds the non-use of the disputed domain names does not
prevent a finding of bad faith use in the circumstances of this proceeding. Although panelists will look at the
totality of the circumstances in each case, factors that have been considered relevant in applying the passive
holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the
failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-
faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in
breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain
name may be put. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes a) the reputation of the Complainant’s trademark, b) the fact that Respondent has not submitted a response, c) the misleading composition of the disputed domain names which incorporate Complainant’s trademark entirely, and d) the apparent incomplete or false contact information of Respondent registered as “Sophia”, e) the fact that the Respondent was subject to another UDRP proceeding targeting the Complainant’s trademark and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has 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 <lactalis-usd.cc> and <lactalis-usd.net> be transferred to the

Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: February 26, 2025