WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Gervais Danone and The Dannon Company Inc. v. Moniker 470909, TheGuidePublishers, Curt Cranfield
Case No. D2007-1731
1. The Parties
The Complainants are Compagnie Gervais Danone and The Dannon Company Inc., Paris, France; New York, United States of America, respectively represented by Cabinet Dreyfus & Associ�s, France.
The Respondent is Moniker 470909, TheGuidePublishers, Curt Cranfield, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2007. On November 26, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 27, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2007.
The Center appointed Eduardo Machado as the sole panelist in this matter on January 18, 2008. 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 First Complainant is a company incorporated under French law. Its main brand DANONE was launched for yoghurt products in Barcelona, Spain around 1919. In about 1932, the First Complainant opened its factory for fresh dairy products at Levallois-Perret, France.
In 1967, the First Complainant merged with another company to form Gervais Danone. In 1973, that company merged with BSN to form BSN-GERVAIS DANONE, France’s largest food and beverage group with consolidated sales in 1973 of approximately 1.4 billion euros.
The Second Complainant is incorporated in Delaware in the United States of America. Since about 1942 the Second Complainant and its predecessors in title have supplied dairy products in the United States of America under the trademark name Dannon (a variation of “Danone”).
Both the First Complainant and Second Complainant are subsidiaries of the French company Groupe Danone. Hereafter, both Complainants are referred to collectively as “the Complainant”.
Today the Complainant is an international market leader in fresh dairy products and employs more than 89,000 people throughout the world. Danone / Dannon represent almost 20% of the total market for fresh dairy products and are marketed in 40 countries. The Complainant has used Danone / Dannon on labeling, packaging and promotional literature and the marks have been prominently displayed in supermarkets and grocery stores.
The Complainant owns numerous DANONE and DANNON trademarks worldwide including the following:
- International trademark DANONE N� 17252, filed on October 31, 1953 renewed and covering goods in classes 1, 5 and 29.
- International trademark DANONE N� 228184, filed on February 2, 1960 renewed and covering goods in classes 1, 5, 29, 30, 31, 32 and 33.
- International trademark DANONE + logo, N� 482337, filed on January 23, 1984 renewed and covering goods in classes 5, 29, 30 and 32.
- International trademark DANONE + logo, N� 639073, filed on January 6, 1995 renewed and covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42.
- International trademark DANONE N� 649535, filed on December 1, 1995 renewed and covering goods and services in classes 5, 29, 30, 31, 32 and 42.
- International trademark DANONE N� 667644, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N� 667645, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N� 667646, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N�667837, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N�668079, filed on February 3, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N�849889, filed on October 29, 2004 and covering goods in classes 5, 29, 30, 32, 35, 38 and 43.
- United States national trademark DANONE ACTIV n�2951239, filed on July 5, 2000 and covering goods in classes 29, 30 and 32.
- United States national trademark DANONE + logo n�2827606, filed on November 19, 2001 and covering goods in class 32.
- United States national trademark DANONE + logo n�2924636, filed on July 15, 2002 and covering goods in classes 5, 29 and 30.
- United States national trademark DANONE CREME DE YAOURT n�2839555, filed on August 5, 2002 and covering goods in classes 29 and 30.
- United States national trademark DANNON N�73357013, filed on January 24, 1984 renewed and covering goods in class 29.
- United States national trademark DANNON N�75220946, filed on May 4, 1999 and covering goods in class 25.
- United States national trademark DANNON N�75978567, filed on December 28, 1999 and covering goods in class 29.
- United States national trademark DANNON N�76329727, filed on May 17, 2005 and covering goods in class 35.
- United States national trademark DANNON N�78746407, filed on September 12, 2007 and covering goods in class 32.
- United States national trademark DANNON N�78591693, filed on March 21, 2005 and covering goods in class 25.
The disputed domain name was registered on January 18, 2007.
The Complainant sent a cease and desist letter to the Respondent on August 20, 2007, and sent two reminders on September 7, 2007, and on October 3, 2007. No response was received.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The disputed domain name includes the entire trademark DANNON and is confusingly similar to the trademark DANONE. The common term “yogurt” is insufficient to avoid any risk of confusion with the trademark.
Such a change is not enough to distinguish the domain name from the Complainant’s trademarks DANNON and DANONE. On the contrary, it increases the likelihood of confusion by suggesting that the domain name is relevant to Danone’s activities and the reference to “yogurt” increases the confusion as the Complainant is a market leader in fresh dairy products.
Accordingly, the Complainant submits, the disputed domain name is confusingly similar to the Complainant’s trademarks DANNON and DANONE.
Rights or Legitimate Interests
The Respondent is not affiliated with the Complainant in any way and the Complainant has not authorized it to use and register its trademarks, or to register any domain name incorporating those marks.
Furthermore, the Complainant submits that the Respondent has no prior rights or legitimate interest in the domain name. The registration of various DANNON and DANONE trademarks preceded the registration of the disputed domain name by many years.
It is unlikely that the term “dannon” has a special meaning in English.
Since the disputed domain name is so similar to the famous trademarks of the Complainant, the Respondent can not reasonably claim that it was intending to develop a legitimate activity.
Registered and Used in Bad Faith
The Complainant contends that it is obvious that the Respondent knew or must have known of the Complainant’s dairy products at the time it registered the disputed domain name.
The Complainant is a well-known firm worldwide and DANNON and DANONE are famous trademarks and trade names. The terms are also used in the Complainant’s corporate names.
The mere addition of the word ‘yogurt’, a generic term, clearly indicates that the Respondent had the Complainant in mind while registering the domain name.
There are elements indicating that the Respondent also used the domain name in bad faith.
The disputed domain name directs users to a page offering commercial links in the field of dairy products. It appears that the Respondent registered the disputed domain name in order to take advantage of the fame of the Complainant’s trademarks. This is evidence of use of the domain name in bad faith.
Moreover, a finding of bad faith can be made where the Respondent ‘knew or should have known” of the Complainant’s trademark rights, and nevertheless registered a domain name incorporating that mark, in circumstances where the Respondent itself had no rights or legitimate interests, Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.
The Complainant finally argues that the lack of response to the Complainant’s cease and desist letter constitutes additional evidence of the Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that is confusingly similar to the DANNON and DANONE marks since the dominant portion of Complainant’s registered marks and of the disputed domain name is “dannon”.
The Panel finds that adding generic words to a domain name such as “yogurt” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the word “yogurt” do not serve any distinguishing function. On the contrary, it increases the likelihood of confusion by suggesting that the domain name is relevant to Complainant’s activities and the reference to “yogurt” increases the confusion as the Complainant is a market leader in fresh dairy products.
The Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name and has not used the domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed, the domain name provided, in part, links to websites that were in direct competition with the Complainant.
Moreover, the domain name as of the date of this decision still resolves to a page that displays links to the Complainant’s competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Cuards a/k/a William Moore, NAF No.FA132439 (finding that the Respondent’s use of complainant’s marks to divert Internet users to a website which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds in the circumstances of this case that the Respondent registered the domain name in bad faith.
The Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm the Complainant’s allegations that it had long been using its DANNON and DANONE marks when the domain name that is the subject of this Complaint was registered. The Panel finds persuasive the Complainant’s allegations that the Respondent must have been aware of the Complainant’s rights in the mark and, further that the Respondent knowingly infringed the Complainant’s trademark when it registered the subject domain name.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”, Policy paragraph 4(b)(iv).
The Respondent used the Complainant’s known trademarks in fresh dairy products industry to attract users to the Respondent’s website where links to the Complainant’s competitors are offered. This is evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or of a product or service on the Respondent’s website.
At the time the Complaint was filed and at the time of this Decision, the domain name resolves to a page that offers visitors links to sites of other companies, including the Complainant’s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (the “Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”). See also E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly the Panel finds that the Complainant has made out bad faith registration and use of the domain name by the Respondent.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be cancelled.
Eduardo Machado
Sole Panelist
Dated: February 1, 2008
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