Groupe Lactalis v Sophia, Sophia

WIPO Case No. D2024-5164

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Groupe Lactalis v. Sophia, Sophia

Case No. D2024-5164

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 <lactalis-usd.com> (the “Domain Name”) 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 December 16, 2024. On December 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2024, 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 (Not Identified) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, 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 the same day.

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 December 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2025.

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The Center appointed Nicholas Smith as the sole panelist in this matter on January 13, 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

The Complainant is a French multi-national company that produces a variety of food products, particularly dairy products. It has traded under the name “Lactalis” since 1999.

The Complainant has held trademark registrations for the word “Lactalis” (the “LACTALIS Mark”) in various
jurisdictions since 2002, including a European Union trademark registration for the LACTALIS Mark since
November 7, 2002, for a variety of goods and services in multiple classes (registration No. 001529833).

The Domain Name was registered on November 30, 2024. The Domain Name is presently inactive but previously resolved to a website (the “Respondent’s Website”) that prominently reproduced the LACTALIS Mark and contained images of the Complainant’s products and information about the Complainant. It is unclear to the Panel precisely what the Respondent offered from the Respondent’s Website, but it appears that the Respondent’s Website was offering some form of financial service or opportunity to purchase shares in the Complainant or related company.

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 Domain Name.

Notably, the Complainant contends that:

a) It is the owner of the LACTALIS Mark, having registered the LACTALIS Mark in various jurisdictions. The Domain Name is confusingly similar to the LACTALIS Mark as it reproduces the LACTALIS Mark in its entirety and adds the term “-usd”.

b) There are no rights or legitimate interests held by the Respondent in respect of the Domain Name.

The Complainant has not granted any license or authorization for the Respondent to use the LACTALIS for a bona fide purpose or legitimate noncommercial purpose. Rather the Respondent is using the Domain Name to pass off as the Complainant for commercial gain by offering financial placements. Such use is not a legitimate use of the Domain Name.

c) The Domain Name was registered and is being used in bad faith. The Respondent is using the

Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website to disrupt the Complainant’s business and divert Internet users searching for the Complainant to a website offering financial placements under the LACTALIS Mark for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

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

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6. Discussion and Findings

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 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.

The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is 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” 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

Domain Name 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 Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the 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 Domain Name.

The Panel considers that the record of this case reflects that:

- before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made
demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in
connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and

WIPO Overview 3.0, section 2.2.

- the Respondent (as an individual, business, or other organization) has not been commonly known by the
Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.

- the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

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- the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the
Domain Name.

The Respondent’s use of the Domain Name to resolve to a webpage reproducing the Complainant’s LACTALIS Mark and information about the Complainant and purporting to offer some form of financial service connected to the Complainant does not amount to use for a bona fide offering of goods and services. The Respondent’s Website actively passes off as an official website of the Complainant and it appears that the purpose behind the Respondent’s Website is to encourage visitors, under the impression that they are dealing with the Complainant or an entity authorized by the Complainant, to utilize the financial services purportedly offered by the Respondent, such conduct not being bona fide.

Based on the available record, 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.

The Panel considers that the record of this case reflects that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the

Respondent’s Website or location or of a product or service on the Respondent’s Website or location.

Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the contained corporate information about the Complainant. Furthermore, the Respondent has provided no explanation, and neither it is immediately obvious, why an entity would register a domain name incorporating the LACTALIS Mark and redirect it to a website purportedly offering financial services by reference to the Complainant unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its LACTALIS Mark.

The Respondent’s Website purports to offer some form of financial services by reference to the Complainant. Noting the coined nature of the LACTALIS Mark, the fact that the Respondent passes off as the Complainant on the Respondent’s Website and the absence of any explanation for the registration, the Panel considers

that the most likely explanation is that the Respondent is using the Domain Name to intentionally attempt to
attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the
LACTALIS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.

The fact that the website at the Domain Name is presently inactive does not prevent a finding of bad faith.

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 Domain Name <lactalis-usd.com> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: January 16, 2025