WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. Christopher Koda Case No. D2008-1639 1. The Parties
The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Christopher Koda, Atlanta, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is (the disputed domain name). The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 29, 2008, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On October 30, 2008, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Administrative and technical contact of the Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2008.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on December 4, 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, Companie Gervais Danone, is a company incorporated under French Law, is also a subsidiary of the French company Groupe Danone and is the owner of the trademark DANONE for food and beverage products in France and many countries all over the world.
The Compagnie Gervais Danone is one of the world's largest companies in the food and beverage industry and owns the main brand DANONE. The trademark DANONE originated around 1919 in Barcelona, Spain, when it was launched for yogurts. Danone started to commercialize its products in France and quickly internationalized, developing into the Compagnie Gervais Danone, the owner of the trademark DANONE for foods and beverage products.
The Complainant demonstrates ownership of a number of trademark registrations for the word DANONE in many countries worldwide, including but not limited to the United States of America and the European Union. The DANONE registrations in the United States of America include the following:
- DANONE + logo n° 2827606 registered on March 30, 2004 and covering goods in class 32;
- DANONE NATIONS CUP + logo n° 3335419 registered on November 13, 2007 and covering goods and services in classes 16, 29 and 41;
- DANONE ACTIV' + logo n° 2838349 registered on May 4, 2004 and covering goods in classes 23, 30 and 32;
- DANONE ACTIV' n° 2951239 registered on May 17, 2005 and covering goods in classes 29, 30 and 32;
- DANONE CREME DE YAOURT + logo n° 2839555 registered on May 11, 2004 and covering goods in classes 29 and 30;
- DANONE+ logo n° 2924636 registered on February 8, 2005 and covering goods in classes 05, 29 and 30;
- D + logo n° 2783682 registered on November 18, 2003 and covering goods in classes 29, 30 and 32;
- DANONE ACTIMEL + logo n° 2803943 registered on January 13, 2004 and covering goods in classes 05, 29, 30 and 32;
- DANONE LA SELECCION + logo n° 2676012 registered on January 21, 2003 and covering goods in classes 05, 29, 30 and 32;
Additionally, the Complainant is also the owner of several domain names incorporating their mark, including: , , , , and .
According the Complaint, the Complainant discovered the registration of the disputed domain name . A search of the Registrar's Whois database revealed that the disputed domain name had been registered on May 17, 2008 by the Respondent, Mr. Christopher Koda.
The Complainant indicates that before this proceeding it sent a cease-and-desist letter by e-mail and registered letter dated July 3, 2008 to the Respondent based on its trademarks rights asking the same to amicably cancel the disputed domain name. But the cease-and-desist letter was returned with a notice of “insufficient address” (Annex 4 of the Complaint). The Respondent did not answer the cease-and-desist letter despite the Complainant's reminders and emails.
The Respondent is not actively using the disputed domain name . It provides no information about the Respondent or any other commercial or noncommercial content, nor does the website indicate any present or future use. 5. Parties' Contentions A. Complainant
The Complainant argues that each of the three elements specified in paragraph 4(a) of the Policy are present in this procedure:
(i) The Complainant's main brand DANONE originated around 1919 in Barcelona, Spain, when it was launched for yogurts. At that time, DANONE was the result of the collaboration between Isaac Carasso and Elie Metchikof, the director of the Pasteur Institute. The Complainant included in its Complaint enough evidence to demonstrate the ownership of the trademark DANONE in the United States of America and the European Union, as well as in other countries.
(ii) The disputed domain name is confusingly similar to the DANONE trademark as is fully incorporates the Complainant's well-known and international trademark DANONE with the mere addition of the common and superlative adjective “super”, which is a dictionary term in English. The mere adjunction of a generic word is not a distinguishing attribute and does not remove the likelihood of confusion between the disputed domain name and the DANONE mark.
(iii) The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name as he is neither affiliated with the Complainant in any way nor authorized to seek registration of any domain name incorporating the DANONE mark. Furthermore, the Complainant contends that the Respondent is not commonly known under the disputed domain name and is not making any noncommercial or fair use of the disputed domain name as it leads Internet users to a page which says “page under construction”.
(iv) The Complainant finally argues the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant sustains that the Respondent knew or must have known of the DANONE mark at the time it registered the disputed domain name because their internationally well-known trademark is famous in the United States of America (where the Respondent is located) and because of the fact that the only difference between the Complainant's mark and the disputed domain name is the addition of the English term “super”. The Complainant further contends that the lack of active use, in addition to the registration of a domain name corresponding to a famous trademark which the Respondent must have been aware of, also demonstrates bad faith use.
The Complainant requests that the disputed domain name be cancelled. B. Respondent
Respondent registered the disputed domain name on December 15th of 2007. The disputed domain name has no contents at all nor any evidence to demonstrate that the Respondent intends to use it in conjunction with a commercial or noncommercial purpose.
The Respondent did not reply to the Complainant's contentions in this proceeding and thus has not contested the allegations in the Complaint. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following there elements are present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has proved to this Panel the ownership of numerous DANONE trademarks protected throughout the world, specifically the United States of America and the European Union. However for the merits of the case, in view of the fact that the Respondent is residing in the United States of America, to the Panel will rely on the registrations and use of the Complainant's trademark DANONE in the United States of America. Accordingly, the Complainant proved that DANONE is a trademark registered under the laws of the United States of America, and in many countries worldwide. DANONE by itself is a distinctive term without any other meaning.
There is no doubt that the mark DANONE has been included in the disputed domain name . The disputed domain name consists of the word “Danone” with the adjunction of the descriptive term “super”. The addition of the term “super”, a common English term, does not serve to distinguish said domain name from the Complainant's DANONE trademarks.
Numerous WIPO panels have recognized that adding a generic word or words to a trademark is insufficient to give any distinctiveness to the domain name in dispute (See Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565; Heineken Brouwerijen B.V. v. Mark Lott,WIPO Case No. D2000-1487; and America Online, Inc. v. East Coast Exotics ,WIPO Case No. D2001-0661).
Another example is Wal-Mart Stores, Inc. v. Kenneth E. Crew,WIPO Case No. D2000-0580, in which the Panel found that the domain name in dispute () was confusingly similar to the trademark WAL-MART despite its prefix “super” because the prefix simply denoted size. In that case, the panel found that the prefix “super” could not, therefore, avoid confusing similarity.
Based not only on prior WIPO decisions, but also in my own judgment, it is true that the addition to the domain name of the word “super” is not sufficient to avoid confusing similarity with DANONE, the Complainant's trademark. Therefore the disputed domain name is confusingly similar to the Complainant's trademark DANONE.
In addition, the top-level domain “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant's trademark and the disputed domain name.
For all the mentioned reasons, the Panel finds that the Complainant has proven its trademark rights in the mark DANONE, which has been included exactly with the generic prefix “super” in the disputed domain name, and therefore the condition of paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests
First in this case, Respondent is in default and did not argue or proof anything that can be used to establish that he has rights or legitimate interests in the disputed domain name. The respondent did not show any evidence of demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Moreover, to the best of the Panel's knowledge, the Respondent has so far neither used nor made any demonstrable preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with bona fide offering of goods or services.
The Panel has recognized that the Respondent is not affiliated with the Complainant in any way, nor has he been authorized to register or use the Complainant's DANONE trademark or to seek registration of any domain name incorporating said mark.
There is nothing to suggest that the Respondent has any rights or legitimate interests in the disputed domain name, because the Respondent is in default and did not argue or prove anything under this procedure.
The Panel finds that the Complainant has established an arguable case on this point and that the burden of proof has thus shifted to the Respondent to demonstrate sufficient rights or legitimate interests to justify his registration. The Respondent has not discharged this burden. Therefore the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant further has to prove that the Respondent registered and used the disputed domain name in bad faith.
The Panel finds that the registration and use of the disputed domain name is in bad faith based on the following:
The Complainant and its trademark “DANONE” have a very strong reputation and are widely known, as explained above. It is indicative of bad faith when the Respondent “knew or should have known” of the Complainant's trademark rights, and nevertheless registered a domain name incorporating a mark, in circumstances where the Respondent himself had no rights or legitimate interest in said trademark.
Other WIPO panels have recognized that the trademark DANONE is well known (Compagnie Gervais Danone v. Bethesda Properties LLC,WIPO Case No. D2007-1451; Compagnie Gervais Danone v. yunengdonglishangmao (beijing) youxiangongsi, WIPO Case No. D2007-1918). Furthermore, WIPO panels have held that the mark DANONE has been used through extensive worldwide trading activities (Compagnie Gervais Danone v. Greatplex Media,WIPO Case No. D2007-1630). InWIPO Case No. D2007-1918, concerning the domain name , the panel held that the mark DANONE has undisputed fame worldwide (Compagnie Gervais Danone v. yunengdonglishangmao (beijing) youxiangongsi,WIPO Case No. D2007-1918).
Due to the circumstances of this case, it is fair to say that the domain name was adopted by the Respondent despite being aware of the Complainant's well-known trademark and trade names and the goodwill attached to them. For this Panel, this is sufficient to prove bad faith registration and use of the disputed domain name.
The disputed domain name points to a page under construction without any
content or information that could prove by itself that the Respondent is making legitimate preparations to use the domain name. This lack of active use, in addition to the registration of a domain reproducing a well-known trademark that that Respondent could not be ignorant of demonstrates bad faith. This opinion is based on what has been previously stated by other WIPO panels (Fox News Network, LLC v. Sam Solomon,WIPO Case No. D2005-0022, “the bad faith lies in the deliberate and misleading use of another person's trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark, to Respondent's website”; and Chocoladefabriken Lindt & Sprüngli AG v. Cameron Jackson,WIPO Case No. D2007-1290, in which the panel established that passive holding of a domain name can be in itself evidence of bad faith where other factors exist).
Therefore in view of all the above considered points and the special circumstances of this case, the Panel concludes that the Respondent's passive holding of the disputed domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name be cancelled.
Ada L. Redondo Aguilera
Sole Panelist
Dated: December 15, 2008
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