WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. Australian Internet Investments Pty Ltd Case No. D2008-1418 1. The Parties
The Complainant is Compagnie Gervais Danone, of Paris, France, represented by Cabinet Dreyfus & Associés, of France.
The Respondent is Australian Internet Investments Pty Ltd, of New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2008. On September 18, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 18, 2008, GoD, 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 September 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on November 5, 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 the owner of numerous registrations for the trademark DANONE in various countries around the world, including Australia. The DANONE mark has been used worldwide by the Complainant for many years in connection with yogurt and other dairy products.
The Respondent registered the disputed domain name on May 14, 2008. The domain name resolves to a pay-per-click landing page featuring advertising links (“sponsored links”) related to yogurt and related products that compete with those of the Complainant, including links to websites of one or more of the Complainant's direct competitors.
Prior to filing the Complaint, the Complainant sent the Respondent a cease and desist letter, to which it received no reply. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its distinctive and well-known DANONE mark. According to the Complainant, the inclusion of the generic term yogurt in the domain name does not dispel confusing similarity, and demonstrates that the Respondent was well aware of the Complainant's mark when it registered the domain name.
The Complainant maintains that the Respondent has not been authorized to use the Complainant's DANONE mark or to register domain names incorporating the mark, and that the Respondent otherwise lacks rights or legitimate interests in the mark. The Complainant asserts that the Respondent's use of the disputed domain name to generate advertising revenue from pay-per-click links keyed to the Complainant's mark does not constitute a legitimate use of the disputed domain name.
The Complainant asserts that the Respondent's registration and use of the disputed domain name to divert Internet users to a pay-per-click landing page, including links to websites offering products competing with those of the Complainant, is an unauthorized use of the DANONE mark and constitutes bad faith under the paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations that provide evidence of the registration and use of a domain name in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's DANONE mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and disputed domain name, when directly compared, are identical or confusingly similar. Because the disputed domain name incorporates the Complainant's DANONE mark in its entirety, this alone is sufficient to support a finding that the disputed domain name is confusingly similar to the Complainant's mark for purposes of the Policy. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. In the context of this case, the addition of the dictionary word “yogurt” does not dispel the confusing similarity arising from the incorporation of the Complainant's distinctive and well-known mark, and in the Panel's view may well serve to compound the confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant's DANONE mark or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has been commonly known by the disputed domain name. Nevertheless, the record reflects the Respondent's use of the disputed domain name, which incorporates the Complainant's distinctive mark in its entirety, to divert Internet users to a website containing links to commercial websites, including websites where products directly competing with those of the Complainant are offered for sale. Such links serve no apparent purpose other than as a vehicle for generating advertising revenue.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Given the presence on the Respondent's website of advertising links to various commercial websites offering for sale yogurt and other products directly competitive with the Complainant's DANONE products, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. See Covanta Energy Corporation v. Anthony Mitchell,WIPO Case No. D2007-0185 (“Respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy”). The Panel further concludes that the Respondent's use of the disputed domain name in connection with a pay-per-click website featuring advertising links to commercial websites offering products that compete directly with those sold by the Complainant under the DANONE mark does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy,WIPO Case No. D2006-1113.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The Respondent's bad faith registration and use of the disputed domain name is palpable from the record in this case. It is an inescapable inference from the circumstances in the record that the Respondent knew of and had in mind the Complainant and the Complainant's DANONE mark when registering the disputed domain name. Under such circumstances, the Respondent's opportunistic use of the disputed domain name to drive Internet traffic to its website in order to generate advertising revenue, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, clearly constitutes bad faith registration and use under paragraph 4(a)(iii) of the Policy. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy,WIPO Case No. D2006-1113. See also Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry,WIPO Case No. D2007-0741; Chicago Pneumatic Tool Company LLC v. Tool Gopher,WIPO Case No. D2007-0330. It is apparent that the Respondent has sought to profit from and exploit the Complainant's mark in violation of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Dated: November 18, 2008
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