WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Gervais Danone v. Yao Renfa
Case No. D2008-0582
1. The Parties
The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associ�s, France.
The Respondent is Yao Renfa, Zhe Jiang, 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 April 15, 2008. On April 15, 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 April 16, 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 the Center’s Complaint Deficiency Notification on April 16, 2008, the Complainant filed an amendment to the Complaint which the Center received on April 21, 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 April 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2008.
The Center appointed Soh Kar Liang as the sole panelist in this matter on June 9, 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 is a subsidiary of Groupe Danone (a French company). Groupe Danone is a global leader of fresh dairy products and bottled waters. In 2006, Groupe Danone achieved sales of 14 billion euros. In 2007, Groupe Danone acquired NUMICO, a leader in baby food and clinical nutrition.
10% of Groupe Danone’s turnover comes from China. China is the third country after France and Spain where Groupe Danone reported the highest sales in 2006. Of its 90,000 employees worldwide, over 20,000 are in China. Groupe Danone recently (February 5, 2008), entered into a joint venture with Weight Watchers in China.
Groupe Danone invests almost 140 million euros annually in research and development. Since 1991, it has established 16 Danone Institutes worldwide (including in Beijing) to promote public health development and dissemination of knowledge on nutrition, diet and health. These institutes have sponsored over 800 research programs worldwide, over 135 conferences, brought out 75 publications and set up 72 public education programs.
The Complainant has registered trade marks comprising the word “danone” throughout the world, including 21 international trade mark registrations (China is a designated state in all 21 international trade mark applications). The Complainant also owns domain name registrations for , , , and .
The Complainant came to know of the disputed domain name on or before November 21, 2007. Attempts by the Complainant to access the disputed domain name on September 11, 2007 and April 7, 2008 using Microsoft Internet Explorer were unsuccessful.
On November 21, 2007, the Complainant through their attorneys, Cabinet Dreyfus & associ�s, issued a cease and desist letter to the Respondent by registered mail, email and facsimile transmission advising the Respondent that the disputed domain name was registered in bad faith and created a risk of confusion in the mind of consumers, the registration and use of the disputed domain name was a trade mark infringement and constitutes unfair competition, and the reproduction of the Complainant’s logo trade marks on the website also constituted copyright infringement. The Complainant further gave the Respondent 48 hours to immediately cease use of the disputed domain name, transfer the disputed domain name, undertake not to use the trade marks DANONE in the future, and assume the Complainant’s associated costs. Reminders were also sent to the Respondent on January 4, 2008 and January 29, 2008. The Respondent neither replied to the Complainant’s demand nor the reminders.
It should also be highlighted the failed attempts by the Center to communicate with the Respondent by email using the email addresses provided by the Respondent according to the WhoIs record of the disputed domain name. All emails bounced with permanent fatal errors indicating that the email addresses do not effectively exist.
5. Parties’ Contentions
A. Complainant
The Complainant contents that
1) The disputed domain name is identical or confusingly similar to the Complainant’s trade mark DANONE and incorporates it entirely. The addition of the prefix “groupe” to the word “danone” in the disputed domain name increases the likelihood of confusion because this makes the disputed domain name identical to Groupe Danone which is the parent company of the Complainant;
2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no affiliation with the Complainant and is not authorized by the Complainant to register its trade marks or any domain names incorporating the trade marks; and
3) The disputed domain name was registered and is being used in bad faith. The Respondent should have known of the Complainant’s trade marks. The Respondent had in mind the Complainant and its parent company when registering the disputed domain name. In view of the strong reputation of the Complainant’s trade mark, use by the Respondent who has no connection with the Complainant suggests opportunistic bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceedings
Paragraph 11(a) 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.”
Since the Registration Agreement is in Chinese, the default language of the proceedings should have been Chinese. However, paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to the circumstances. The Complainant has requested in the Complaint that English should be the language of the proceedings.
In determining the language of the proceedings, it is important to ensure both fairness to the Parties, and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. There are many UDRP decisions which highlighted the risk of language requirements resulting in undue burden and undue delay (eg, Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-593; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432; CPS 1 Realty LP. v. DomainA, WIPO Case No. D2005-0869 and Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759).
In support of its request, the Complainant relied inter alia on the following arguments:
1) The Complaint was drafted in English;
2) English is widely used in international relations;
3) English is the working language of the Center;
4) The Complainant is French and has no knowledge of Chinese;
5) The proceeding would inevitably be delayed unduly and substantial costs inordinate to the cost of the normal proceedings will be incurred by translations if Chinese were the language of the proceedings; and
6) The use of Chinese would impose a significant burden on the Complainant and not be in accord with the interest of speed and low cost of proceedings under the UDRP.
Guided by the prior UDRP decisions highlighted above, the Panel is particularly persuaded by the last three points of the Complainant. In addition, the Panel also noted that the Respondent was given ample opportunity by the Center to obstruct the Complainant’s request for English to be the language of the proceedings. The Respondent was clearly aware of the situation it faced in terms of the disputed domain name and the procedural issue of the language of the proceedings since all communication from the Center to the Respondent was sent in Chinese in addition to English. Despite that, the Respondent has chosen to contest neither the proceedings nor the request for English to be the language of the proceedings.
Although the Panel hesitates to suggest that a complainant should be free to choose the language of uncontested proceedings, it would be a patent waste of time, effort and cost to translate all documents of a set of proceedings for a respondent who should be fully aware of his position and the stakes in the proceedings but who has declined to exercise his right to be heard.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceedings. It would be abjectly unfair and unilaterally burdensome on the Complainant otherwise in the circumstances.
6.2 The Panel’s decision in relation to the disputed domain name
In accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
1) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns trade mark registrations, including international trade mark registrations, in the trade mark DANONE which precede the registration of the disputed domain name. DANONE is clearly a prior trade mark in which the Complainant has rights.
The Complainant has also highlighted prior UDRP panels which determined that the trade mark DANONE is a well-known mark (see Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media,WIPO Case No. D2007-1630; Compagnie Gervais Danone v. Bruce Roarson, WIPO Case No. D2007-1719 and Compagnie Gervais Danone contre Sarl Biu, WIPO Case No. D2007-1824). This Panel is required to independently decide on the disputed domain name on the basis of the facts presented. Having reviewed the evidence submitted, this Panel agrees that the trade mark DANONE is well-known for reasons including the following:
1) The trade mark DANONE has been used extensively worldwide for many years and has become a leading global brand for the Complainant’s products;
2) A simple search on the World Wide Web (eg, via Google) for the word “danone” will return many high ranking hits regarding the Complainant’s goods and news; and
3) There have been many thwarted attempts of other parties to register and hold domain names incorporating the trade mark DANONE.
Although not identical to the Complainant’s trade mark DANONE, the disputed domain name incorporates it in its entirety. Unless the other elements of the disputed domain name are capable of distinguishing the disputed domain name from the Complainant’s trade mark, confusing similarity may be established (eg, AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758).
It should be noted that the disputed domain name is identical to the name of the Complainant’s parent company, Groupe Danone. In the absence of any argument to the contrary, the Panel is prepared to accept the Complainant’s submission that the addition of “groupe” to “danone” could increase the likelihood of confusion between the disputed domain name and the Complainant’s trade mark DANONE. Further, the addition of generic elements like “groupe” is insufficient to create a distinguishable sign from the original such that the issue of likelihood of confusion may be avoided. This position is consistent with many past UDRP decisions (eg, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137 and Compagnie Gervais Danone v Youngmi Park, NAF Case No. FA546800).
Therefore, the Panel is of the view that the disputed domain name is confusingly similar to the Complainant’s trade mark DANONE and the first limb of paragraph 4(a) of the Policy is satisfied. In achieving the above conclusion, the Panel also kept in mind the well established practice of disregarding the gTLD portion of a domain name for purposes of comparing the domain name against a prior trade mark of a Complainant (eg, see Gerling Beteiligungs-GmbH (GBG) v. World Space Corp,WIPO Case No. D2006-0223 and DZ Bank AG v. Bentz,WIPO Case No. D2006-0414).
B. Rights or Legitimate Interests
Based on the Complainant’s submissions, which have not been controverted by the Respondent, this Panel accepts that:
1) The Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use the trade mark DANONE, or register any domain name incorporating the trade mark DANONE;
2) The disputed domain name bore no relation to the name of the Respondent;
3) Although it is not clear what URL was used by the Complainant in its attempts to access the disputed domain name using Microsoft Internet Explorer, it serves as rebuttable (but unrebutted) evidence that the Respondent has not displayed any intention to use the disputed domain name consistent with any right or legitimate interest in the disputed domain name for potentially over half a year; and
4) The fact that the disputed domain name is identical to the parent company of the Complainant is highly suspicious and requires explanation by the Respondent.
The Respondent has failed to provide any justification of a right or legitimate interest in respect of the disputed domain name despite the above cogent factors. As such, the Panel concludes that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent is required by paragraph 2 of the Policy to:
“… represent and warrant to [the Registrar] that … (b) to [the Respondent’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) [the Respondent is] not registering the domain name for an unlawful purpose; and (d) [the Respondent] will not knowingly use the domain name in violation of any applicable laws or regulations …”
Given the significant well-known status of the Complainant’s trade mark DANONE and trade mark registrations for the trade mark, it is inconceivable without the benefit of additional information that the Respondent was unaware of the Complainant’s trade mark rights in DANONE. Further, the selection of a domain name that is identical to the name of the Complainant’s parent company required explanation which was not forthcoming from the Respondent.
The instances of bad faith registration and use referred to in paragraph 4(b) of the Policy are not exhaustive. Passive holding of a domain name could in some circumstances amount to bad faith. The Panel was referred to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 where a well-known mark was registered as a domain name by the Respondent in that case. The Respondent did not conduct any relevant legitimate commercial or non-commercial activity and had taken deliberate steps to conceal its true identity. The domain name did not resolve to any on-line presence and no evidence exists that such presence was forthcoming. Based on the special circumstances, the Panel there decided the case against the Respondent.
This Panel agrees with the detailed analysis and exposition of the concept of “bad faith registration and use” by the Panel in Telstra Corporation Limited v. Nuclear Marshmallows case. The facts in that case find significant parallels in the current circumstances. This Panel has taken particular note of the following circumstances in the current proceedings:
1) The disputed domain name incorporates a well-known mark with a very strong international reputation;
2) The Respondent has provided no justification or evidence of any actual or contemplated use of the disputed domain name in good faith. The fact that the disputed domain name is identical to the name of the Complainant’s parent company is so highly suspicious that coincidence in the absence of sound explanation is inconceivable;
3) The Respondent is an individual and not a business entity;
4) The Respondent has failed to provide any evidence of any actual or contemplated use of the disputed domain name since registration of the disputed domain name;
5) The evidence submitted by the Complainant that the disputed domain name did not resolve to any accessible services on the Internet on September 11, 2007 and April 7, 2008 raises a rebuttable (but unrebutted) inference that the disputed domain name was not active during at least that period;
6) The Respondent has failed to respond to the cease and desist letter (and reminders) of the Complainant and this Complaint;
7) The Respondent has failed to provide correct contact details and instead provided non-existent contact email addresses in association with the disputed domain name; and
8) In view of the trade mark rights of the Complainant in relation to the trade mark DANONE, it is not possible to conceive of any plausible legitimate actual or contemplated use of the disputed domain name by the Respondent.
The above circumstances points suspiciously to bad faith registration and use. Although there is a possibility that the Respondent had inadvertently omitted to update his email particulars in relation to the disputed domain name, the failure of the Respondent to provide any explanation, or for that matter, respond to the cease and desist letter and Complaint raises an adverse inference that the Respondent has no justifiable explanation.
In the light of the factual circumstances outlined above, this Panel must conclude that the disputed domain name was registered and used in bad faith 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 disputed domain name, be transferred to the Complainant.
Soh Kar Liang
Sole Panelist
Dated: June 30, 2008
Full & Egal Universal Law Academy