WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Gervais Danone v. Joseph Welter
Case No. D2008-0594
1. The Parties
The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associ�s, France.
The Respondent is Joseph Welter, Hobart, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with DomainPeople, Inc.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2008. On April 17, 2008, the Center transmitted by email to DomainPeople, Inc a request for registrar verification in connection with the domain name at issue. On April 25, 2008, DomainPeople, Inc 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 May 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2008.
The Center appointed Soh Kar Liang as the sole panelist in this matter on June 11, 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 employ over 90,000 people worldwide.
The Complainant’s main trade mark is DANONE which was first used in 1919 in Barcelona, Spain, for yogurts. Around 1932, a factory for manufacturing fresh dairy products under the trade mark DANONE was opened at Levallois-Perret, France. By 1973, the predecessor of Groupe Danone was already the largest food and beverage group in France with consolidated sales of about 1.4 billion euros. The Complainant’s trade mark DANONE is now among the world’s top brands for fresh dairy products and represents 20% of the international market. The trade mark DANONE is in use in over 40 countries worldwide. Labels, packaging and promotional literature containing the trademark DANONE are prominently displayed in supermarkets and grocery stores around the world. The Complainant has registered trade marks comprising the word DANONE throughout the world, including 11 international trade mark registrations.
The Complainant came to know of a website hosted under the domain name which used the Complainant’s trade marks DANONE, DANINO, SILHOUETTE and ACTIVIA. The website also provided hyperlinks to the websites of Groupe Danone’s subsidiaries. On April 10, 2008, the Complainant through their attorneys, Cabinet Dreyfus & associ�s, issued a cease and desist letter to the Respondent by registered mail and email, inter alia, 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 24 hours to immediately cease use of the disputed domain name, transfer the disputed domain name, undertake not to use the trade marks DANONE and DANNON in the future, and assume the Complainant’s associated costs.
The Respondent did not reply to the Complainant’s demand. The Complainant tried to reach the Respondent on the telephone using the number listed in the WHOIS record for the disputed domain name but the number was false.
Concurrent with the demand, the Complainant requested the webhosting provider of the disputed domain name, Affinity Internet Inc, to block Internet access to the disputed domain name. The webhosting provider confirmed that Internet access to the disputed domain name was blocked on April 11, 2008.
5. Parties’ Contentions
A. Complainant
The Complainant contents that
1) The disputed domain name is identical or confusingly similar to the Complainant’s DANONE trade marks and the mere addition of the letter “e” to the word “danone” is insufficient to avoid confusion with Complainants’ trade marks; and
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 Complainants’ trade marks. Use of the Complainant’s trade marks on the website at “www.” was a scheme to lead internet users to wrongly believe they are surfing an official website of the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 trademark 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 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 disputed domain name incorporates the word “danone” but is not factually identical to DANONE due to the addition of the prefix “e-”. With the growth of the Internet in the last decade, it is common to use the prefix “e-” to designate the conduct of business over an electronic network. When used alongside an established trade mark like DANONE, it is a direct reference to e-commerce activity in relation to the business associated with the trade mark.
The addition of a descriptive element like “e-” to a trade mark is insufficient to create a distinguishable trade mark from the original. On the contrary, a trade mark prefixed by such a descriptive element will likely be regarded as being associated and authorized by the owner of the original trade mark. As such, an “e-” prefixed trade mark will be likely to cause confusion with the original un-prefixed trade mark.
The Complainant had previously encountered a similar case in the domain name where the descriptive prefix “bio” was added to the Complainant’s trade mark DANONE (see Compagnie Gervais Danone v. Karim Saada, WIPO Case No. D2006-0986) and the Panel in that case had determined that the domain name should be transferred to the Complainant. In the present case, where the prefix is only a single non-distinctive and potential descriptive character, “e”, this Panel does not see any reason to depart from that decision. Therefore, this 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, this Panel followed 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; 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) The website at “www.” incorporated the use of trade marks belonging to the Complainant (including the word “danone”), works protected by copyright and hyperlinks to websites associated with Groupe Danone, all without the authorization of the Complainant; and
4) The website at “www.” purported to direct users to a gaming webpage which required payment to participate in a game which promised money and gifts as prizes.
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. Instead, the selective manner in which the Respondent had made use of the Complainant’s trade marks DANONE, DANINO, ACTIVIA, etc on the website at “www.” points to a prima facie intention to associate the website with the Complainant’s trade marks, business and activities.
Paragraph 4(b)(iv) of the Policy provides that the following is evidence of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your website or location."
The purported gaming offering on the website at “www.” is not associated with the Complainant and appears calculated to generate financial gain for the Respondent. The deliberate use of various trade marks and works of the Complainant on the website created a likelihood of confusion with the Complainant’s trade mark DANONE as to the source, sponsorship, affiliation or endorsement of the website. Together with the unauthorized and unjustified use of the Complainant’s trade marks on the website, a strong inference of bad faith on the part of the Respondent is difficult to avoid.
In addition, the false contact telephone number provided by the Respondent in relation to the registration of the disputed domain name, taken in the light of the above circumstances, points suspiciously to bad faith registration and use. Although there is a possibility that the Respondent had changed telephone numbers and inadvertently omitted to update his 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
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