��
WIPO Arbitration and Mediation Center
��
ADMINISTRATIVE PANEL DECISION
Compagnie Gervais Danone v. Wangmingyi
Case No. D2008-0181
��
1. The Parties
The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associ��s, France.
The Respondent is Wangmingyi, Quanzhou, China.
��
2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba .
��
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ��Center��) on February 4, 2008. On February 5, 2008, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba a request for registrar verification in connection with the domain name at issue. On February 13, 2008, Beijing Innovative Linkage Technology Ltd. dba transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 14, 2008. The Center verified that the Complaint together with the amendment to 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 February 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2008. An email was sent by the Respondent to the Center on March 7, 2008 for which the Center acknowledged receipt on March 10, 2008.
The Center appointed Francine Tan as the sole panelist in this matter on March 25, 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 Complainant, incorporated under French law, is a subsidiary of the French company, Groupe Danone. Its main brand, DANONE, originated around 1919 in Barcelona, Spain when it was launched in respect of yoghurt. In 1932, Danone opened its factory for fresh dairy products in France. In 1967, Danone merged with the company Gervais and formed Gervais Danone, developing its activities in several sectors. Today, the Complainant is a leading multinational company and employs more than 89,449 people worldwide.
The Complainant��s trade mark DANONE is a leading brand for fresh dairy products with an international market share of almost 20%. The trade mark has been used in 40 countries worldwide. The mark has been used on labeling, packaging and promotional literature, and has been prominently displayed in supermarkets and grocery stores in many regions around the world.
The Complainant is the registered owner of numerous DANONE trade marks and variations thereof containing the word ��danone�� throughout the world. The Complainant set out in its Complaint numerous International trade mark registrations dating from as far back as 1953. Some of the International registrations designate China which is where the Respondent appears to be located.
On October 16, 2007, the Complainant was alerted to the registration of the domain name . On November 29, 2007, the Complainant sent a cease and desist letter to the Respondent, by registered mail, fax and email. A reminder was also sent on December 31, 2007, but the Complainant did not receive a response.
Although no formal Response was filed with the Center, on March 7, 2008, the Respondent sent an email in Chinese to the Center. In this email which was addressed to the Complainant, the Respondent stated, inter alia, that:
1. Danoner is the transliteration of the Chinese name ��ũ�� which has no connection or relationship to DANONE.
2. He had registered the mark DANONER ��ũ�� by way of a legitimate registration procedure.
Additionally, the Respondent queried in the email if it meant, by the Complainant��s reasoning, that marks like Danonez, Danonee, etc. cannot be registered and used in China.
Attached to the email was a copy of an extract from the homepage of . The said website, which is in the Chinese language, sets out information on various suppliers of hardware products such as screws and screwbolts. There does not appear to be anything on the website which relates to dairy products. No other information was proffered in the Respondent��s email as to his business or, if indeed Danoner was a trade name he had operated by, how long this has been the case.
��
5. Parties�� Contentions
A. Complainant
1. The Complainant contends that the disputed domain name is highly confusingly similar to the trade mark DANONE in which the Complainant has rights. In this regard, the word ��Danone�� is clearly identifiable in the disputed domain name and the inclusion of the additional letter ��r�� at the end of the word ��Danone�� is insufficient in itself to avoid any confusion with the Complainant��s trade mark.
The Complainant also contends that the addition of the letter ��r�� at the end of the word ��Danone�� is a clear allusion to the sign which means ��registered��, for instance, under US trade mark law. Hence, the addition of the letter ��r�� after the word ��Danone�� is meant to indicate that that the mark is registered.
It is well established that the generic top level domains ��.com��, ��.net��, ��.mobi��, etc. are not a distinguishing feature and the inclusion of the same in the domain name does not have an impact on the likelihood of confusion. It has been held in numerous UDRP panel decisions that the addition of the domain name extension does not remove the likelihood of confusion. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
2. The Respondent has no rights or legitimate interests in respect of the domain name and this is borne out by the following:
(a) The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register the mark DANONE or to seek the registration of any domain name incorporating the said mark.
(b) The Respondent has no prior rights or legitimate interest in the domain name. The registration of numerous DANONE trade marks took place years before the registration of the domain name .
(c) It is unlikely that the term ��Danoner�� has a special meaning in Chinese or any other language.
(d) The domain name in dispute is to closely identical to the Complainant��s famous DANONE mark that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity.
3. The domain name was registered and is being used in bad faith. The Complainant contends that this is supported by the following:
(a) It is obvious that the Respondent knew or must have known of the Complainant��s trade mark DANONE at the time it registered the domain name. The Complainant is a well-known multinational company and DANONE is not only a famous trade mark but also a famous trade name. The name Danone is also used in the corporate name Compagnie Gervais Danone. The first results of a simple search via Google or any other search engine using the keyword ��Danone�� would surface links to the Complainant��s website and other sites which relate to the Complainant��s products or news. The mere addition of the letter ��r�� to the primary word ��Danone�� is of such a minor difference that it is not plausible that the Respondent did not have the Complainant in mind when it registered the domain name. It is therefore highly unlikely that the registration of the domain name was a coincidence.
The registration of the domain name was therefore in bad faith.
(b) The domain name at the time of the filing of the Complaint appears to be inactive. Nevertheless, the relevant issue is not whether the Respondent is ��undertaking a positive action�� in terms of bad faith in relation to the domain name but whether, in the circumstances of the case, it can be said that the Respondent is acting in bad faith.
The distinction between ��undertaking a positive action�� and acting in bad faith is important: the concept of a domain name being used in bad faith is not limited to positive action but includes inaction. The Respondent��s inactivity amounts to the domain name being used in bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
It should be noted in the present case that :
(i) The Complainant��s trade mark has a very strong reputation and is widely known. The Respondent therefore knew or should have known of the Complainant��s trade mark rights. However, the Respondent proceeded to register the domain name incorporating the said trade mark in circumstances where he had no rights or legitimate interests in the trade mark. (See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.)
(ii) The Complainant��s cease and desist letter could not be transmitted by fax to the Respondent and the fax number indicated in WhoIs is very likely to be false or wrong.
(iii) The lack of any response to the Complainant��s cease and desist letter is evidence of the Respondent��s bad faith.
The Respondent therefore registered and used the domain name in bad faith.
The remedy requested by the Complainant is for the domain name to be cancelled.
B. Respondent
As noted above, the Respondent did not file a formal Response in the manner prescribed by the Rules but sent an email to the Center on March 7, 2008.
��
6. Discussion and Findings
6.1 Procedural issue – Language of the Proceedings
Paragraph 11 of the Rules provides that ��Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding��. (Italics added.)
In this case, the registration agreement was in the Chinese language but the Complainant has requested that the proceedings take place in the English language.
On this issue, the Complainant submitted the following arguments in support of its request:
(1) English is the language most widely used in international relations and is one of the working languages of the Center.
(2) In many UDRP panel decisions relating to this issue, it has been held that as far as the Complainant is unable to communicate in Chinese, the proceeding would inevitably be unduly delayed, and the Complainant would have to incur substantial expenses for translations if the Complainant were to submit all documents in Chinese. Reference was made to the cases of CPS 1 Realty LP. v. DomainA, WIPO Case No. D2005-0869; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
(3) In the case of Casio Keisanki Kabushiki Kaisha dba Casio Computer Co., Ltd v. Taizhou Kaixuan Entertainment Co., Ltd.,WIPO Case No. D2005-0870, the Panel considered that ��one important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties��.
In this case, the Complainant is located in France and has no knowledge of Chinese. In order to proceed in the Chinese language, the Complainant would have had to retain specialized translation services, the costs of which would very likely be much higher than the overall cost of these proceedings. This would therefore impose an unduly heavy burden on the Complainant which is significant in comparison to the low cost of these proceedings. One has to consider the fact that the procedure under the Policy was designed to achieve a speedy resolution of the dispute at a relatively low cost.
(4) The Respondent seems to have sufficient ability to understand the English language, and at no time did the Respondent indicate to the Complainant that he does not understand English.
Having considered the circumstances of this case and in balancing the interests of the parties to these proceedings, the Panel is satisfied that the proceedings may proceed in English. Although the Respondent��s email to the Center was in the Chinese language, there was nothing to indicate that the Respondent (although he himself communicated in Chinese) did not understand previous communications relating to this dispute which were in the English language. The Panel further notes that the Center for its part went to the trouble of ensuring all case-related communications from the Center were in both English and Chinese. The Panel further notes that the fact that the Complaint itself was in English did not apparently prevent the Respondent from submitting an informal response. The very fact that he responded by way of the email shows that he understood the nature of the dispute. Requiring the Complainant to proceed in the Chinese language would have placed an unduly heavy burden on them in terms of costs and delayed the institution of these proceedings, which would be contrary to the aims of the UDRP proceedings as pointed out by the Complainant.
6.3 Substantive issues
Paragraph 15(a) of the Rules instructs that the Panel has to ��decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable��.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has trade mark rights in the word DANONE.
Although the primary element in the disputed domain name is not identical per se to the trade mark DANONE since the former contains an additional letter ��r��, the Panel is of the view that the domain name is, nevertheless, confusingly similar, both visually and phonetically, to the Complainant��s trade mark.
Whilst the Panel does not find there to be any clear basis for the Complainant��s assertion that the addition of the letter ��r�� after the word ��Danone�� in the domain name is meant to indicate that that the mark is registered, it does agree that the generic top level domain ��.net�� should not be considered in regard to this first issue; the use of generic top level domains such as ��.net�� is required of all domain name registrations. This principle is well established in many earlier panel decisions including that of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Hence, the Panel finds that the first requirement under paragraph 4(a)(i) of the Policy has been satisfied by the Complainant.
B. Rights or Legitimate Interests
The Panel is also satisfied that the Complainant, in relation to the second requirement under paragraph 4(a)(ii) of the Policy, has established a prima facie case. The burden therefore shifts to the Respondent to show that it has rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy provides examples of circumstances which, if founds to be proved, would demonstrate the Respondent��s rights or legitimate interests to the domain name:
��(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.��
In this case, a preliminary issue to consider is whether the Respondent can be said to have filed a response and whether the email received by the Center on March 7, 2008 ought to be taken into consideration by the Panel.
Rules paragraph 5 sets out what the Respondent is required to do in relation to the submission of a Response. Amongst other things, the Response has to:
(a) be submitted in hard copy and electronic form;
(b) specifically deal with the statements and allegations contained in the complaint and include any and all bases for the Respondent to retain registration and use of the disputed domain name;
(c) provide the name, postal and email addresses, and telephone and fax numbers of the Respondent and or any authorized representative;
(d) state that a copy of the response has been sent or transmitted to the Complainant; and
(e) conclude with the prescribed statement (to be signed by the Respondent or its authorized representative) in which the Respondent certifies that the information contained in the Response is complete and accurate and that the Response is not being presented for any improper purpose.
Rules paragraph 5(e) states that ��If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint��.
Having considered the aforesaid requirements of Rules paragraph 5, the Panel concludes that the Respondent has been in formal default within the meaning of the Policy and the Rules. The requirements of Rules paragraph 5 have not been met by the Respondent. What is particularly significant is that the Respondent has not provided the certification prescribed under Rules paragraph 5(b)(viii) that the information contained therein is, ��to the best of Respondent��s knowledge, complete and accurate��. Hence, the Panel finds the email to be deficient as a Response. (See EAuto, Inc. v. Available-Domain-N, d/b/a Intellectual-Assets. com, Inc.,WIPO Case No. D2000-0120.) The Panel has, as noted, had regard to the contents of the email, with an appropriate reduction in any evidentiary weight attribution thereto.
Pursuant to Rules paragraph 5(e) and in the absence of any of the circumstances enumerated above which the Panel can take into consideration and which demonstrate that the Respondent has rights or legitimate interests in the domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As the Respondent has been found to have formally defaulted in providing a response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding primarily on the basis of the undisputed factual assertions made in the Complaint (Rules paragraph 14(a)).
The Panel is persuaded, having considered the circumstances surrounding this case and the submissions made by the Complainant, that it is more likely than not that the Respondent chose to register the domain name incorporating the Complainant��s widely known DANONE trade mark with a view to attracting, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant��s mark as to the source, sponsorship or affiliation (paragraph 4(b)(iv) of the Policy). The Respondent has failed to rebut the Complainant��s assertions with any verified statement of fact or other evidence. (See InfoS, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.)
Furthermore, earlier UDRP panel decisions have also established the principle that the registration of a domain name that is obviously connected with a trade mark is widely known by someone who has no connection whatsoever with the trade mark suggests opportunistic bad faith. (See Veuve Cliquot Ponsardin, Maison Fond��e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.)
In the premises, the Panel concludes that the third requirement of paragraph 4(a) of the Policy has been met.
��
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.
Francine Tan
Sole Panelist
Dated: April 13, 2008
Full & Egal Universal Law Academy