Groupe Lactalis v Sophia, Sophia

WIPO Case No. D2025-0335

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Groupe Lactalis v. Sophia, Sophia

Case No. D2025-0335

1. The Parties

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

The Respondent is Sophia, Sophia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lactalisvip.org> is 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 28, 2025. On January 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 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 (Sophia) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 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 February 5, 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 February 12, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was March 4, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 5, 2025.

The Center appointed Anita Gerewal as the sole panelist in this matter on March 7, 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.

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4. Factual Background

The Complainant is a French multi-national company, engaged in the food industry, particularly the dairy sector. The Complainant was founded in 1933 and has traded under the “Lactalis” name since 1999.

The Complainant is one of the largest dairy products groups in the world, with over 85,500 employees, 266 production sites, and a presence in over 51 different countries.

The Complainant is the owner of numerous trademark registrations internationally, including the following:

- European Union Registration No. 1529833 for LACTALIS (word) in classes 1, 5, 10, 13, 16, 31, 33, 34, 40, and 42, registered on November 7, 2002.

- International Registration No. 900154 LACTALIS (word) in classes 29, 30, and 35, registered on July 27, 2006, designating Norway, Turkmenistan and Switzerland.
- International Registration No. 1135514 LACTALIS (word) in classes 5, 29, 30, 32, and 35, registered on September 20, 2012, designating several countries.

- European Union Registration No. 017959526 for in classes 1, 5, 7, 9, 16, 21, 24, 25, 28, 29, 30,

31, 32, 33, 34, 35, 36, 38, 39, 40, 41, 42, 43, 44, and 45, registered on May 22, 2019.

The Complainant is also the owner of a large domain names portfolio, including <lactalis.com> registered on
January 9, 1999.

The disputed domain name was registered on January 18, 2025, and resolves to a website which appears to be inactive.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the Complainant, its trademark and domain names associated. The Complainant also contends that the addition of the suffix “.org” does not change the overall impression of the designation as being connected to the trademark LACTALIS.

Complainant’s trademark LACTALIS. The disputed domain name includes the Complainant’s mark in its
entirety. The Complainant asserts that the addition of the term “vip” is not sufficient to escape the finding
that the disputed domain name is confusingly similar to the trademark LACTALIS because it does not
change the overall impression of the designation as being connected to the Complainant’s trademark
The Complainant states that the Complainant’s rights over the term “LACTALIS” have been confirmed by
previous panels in Groupe Lactalis v. xx ee, WIPO Case No. D2023-3561, <lactalis.vip> and
<lactalisapp.vip> and Groupe Lactalis v. Mark Taylor, WIPO Case No. DCO2023-0040, <lactaliscanada.co>.

The Complainant asserts that the Respondent is not identified in the WhoIs database as the disputed domain name and thus is not commonly known by the disputed domain name.

The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Complainant has granted neither license nor authorization to the Respondent to make any use of the Complainant’s trademarks, or apply for registration of the disputed domain name.

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The Complainant contends that the disputed domain name resolves to a website which is inactive and the Respondent did not make any use of disputed domain name, and this confirms that the Respondent has no demonstrable plan to use the disputed domain name. It proves a lack of legitimate interests in respect of the disputed domain name except in order to create a likelihood of confusion with the Complainant and its trademark.

The Complainant asserts that its trademark LACTALIS is well-known and protected in numerous countries at the time of the registration of the disputed domain name. The Complainant is one of the world’s leading producers of dairy products and enjoys a strong worldwide reputation. The Complainant contends that given the distinctiveness of the Complainant’s trademarks and reputation; it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks.

The Complainant also contends that the Respondent is a known cyber-squatter who has registered numerous domain names reproducing trademarks of numerous companies and products.

The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

The Complainant has cited several prior relevant decisions under the Policy to support its Complaint including cases involving the Complainant’s LACTALIS trademark.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which

the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii) The domain name has been registered and is 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 the LACTALIS trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the LACTALIS mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Although the addition of other terms here, “vip” 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 name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The addition of the generic Top-Level Domain (“gTLD”) “.org” shall be disregarded for the purposes of
assessing confusing similarity, as it is a standard requirement of registration. 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 no connection or affiliation with the Complainant, who has not consented to the entirety.

The Panel further notes that none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use (commercially or non- commercially) the disputed domain name and the Respondent is not commonly known by the disputed domain name.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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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In the present case, the disputed domain name contains the Complainant’s well-known trademark in its entirety, and merely adds the generic term, “vip”. The inclusion of the Complainant’s well-known mark in its entirety in itself would be an indication that the Respondent must thus have known about the LACTALIS trademark when registering the disputed domain name. Further, the disputed domain name resolves to a website that is presently inactive.

It appears that the Respondent has provided incomplete contact information i.e. postal address, when registering the disputed domain name, as evidenced in the case file. The Panel sees no justification for concealing the true identity by submitting inaccurate or incomplete contact details, other than to obstruct the Complainant’s ability to defend its trademark rights.

Panels have found that the non-use of a domain name (including a blank or “coming soon” 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 and reputation of the Complainant’s
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.

Furthermore, the Complainant has submitted that the Respondent has previously been involved in a number
of disputes involving registrations of domain names relating to well-known trademarks including the
Complainant’s LACTALIS trademark. Groupe Lactalis v. Sophia, Sophia, WIPO Case No. D2024-5164,
<lactalis-usd.com>; Arcelormittal v. Sophia, Sophia, WIPO Case No. D2024-4648, <arcelormittal-vip.com>;
, KPMG International Cooperative v. Sophia, Sophia, WIPO Case No. D2024-5230, <kpmgvai.com>.

As stated in WIPO Overview 3.0, section 3.1.2, “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner”.

In the view of the above, the Panel finds that this behavior demonstrates a pattern of conduct by the trademark.

Respondent, exploiting third-party trademarks without authorization, which is indicative of bad faith. The

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 name <lactalisvip.org> be transferred to the Complainant.

/Anita Gerewal/
Anita Gerewal
Sole Panelist
Date: March 18, 2025