WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. Beijing Yuchun Marketing Co. Zhiping Yan Case No. D2008-1797
1. The Parties
The Complainant is Compagnie Gervais Danone, of Paris, France, represented by Cabinet Dreyfus & associés, France.
The Respondent is Beijing Yuchun Marketing Co., Zhiping Yan, of Beijing, People's Republic of China (“China”).
2. The Domain Name and Registrar
The domain name (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On November 25, 2008 HiChina Zhicheng Technology Ltd. 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” 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 December 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2009.
The Center appointed Chiang Ling Li as the sole panelist in this matter on January 14, 2009. 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 worldwide leading company in fresh dairy products and bottled water and employs nearly 90,000 people around the world. The Complainant's main product in China is bottled water. .
The Complainant is said to be the owner of numerous DANONE trademarks around the world, and specifically in China. The Complainant has appended to the Complaint a long list of these trademarks.
The Complainant is also said to be the owner of several domain names including , , , and .
The Respondent registered the Disputed Domain Name on July 9, 2008.
5. Parties' Contentions A. Complainant
The Complainant contends that the Disputed Domain Name should no longer be registered with the Respondent but that it should be transferred to the Complainant by reason of the following:
5.1 The Disputed Domain Name is confusingly similar to the Complainant's DANONE trademark in which the Complainant has rights:
The Complainant submits that it is the owner of numerous DANONE trademarks around the world, and specifically in China. The Disputed Domain Name is very similar to its DANONE trademark, and the fact that the Respondent added the word “food” does not reduce the likelihood of confusion. On the contrary, taking into account the fact that it refers to the sector in which the Complainant is very well known in China, the public will immediately assume that the Disputed Domain Name is related to the said products and to the Complainant.
The Complainant also contends that the Disputed Domain Name is very similar to the other domain names owned by the Complainant.
5.2 The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:
The Complainant submits that the Complainant's registration of the numerous DANONE trademarks preceded the registration of the Disputed Domain Name. The Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's DANONE trademark, or to seek registration of any domain name incorporating said mark. The Respondent does not seem to go by the name “danone”.
The Complainant also contends that the Respondent did not answer the Complainant's cease and desist letter and did not demonstrate any right or legitimate interest regarding the Disputed Domain Name.
5.3 The Disputed Domain Name was registered and is being used in bad faith:
The Complainant submits that the DANONE trademark is well-known throughout the world, as noted in other WIPO UDRP decisions, and the Respondent could not have ignored it. Hence, the Respondent clearly registered the Disputed Domain Name in bad faith.
The Complainant contends that the Disputed Domain Name is being used in bad faith for several reasons. For instance the Respondent provided false and misleading information in connection with the registration of the Disputed Domain Name and failed to provide conventional information for one engaged in proper business activities e.g. means of communication. Further, as the Disputed Domain Name is so obviously connected with such a well-known product, its very use by someone with no connection with the product suggests opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) the Disputed Domain Name is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith A. Language of Proceedings
The Complaint was filed in English. Pursuant to paragraph 11 of the Rules, in the absence of any agreement between the parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Panel notes that the default language of the proceeding for this case would be Chinese, being the language of the relevant registration agreement in the absence of any express agreement to the contrary by the parties.
Under the Rules, the Panel has the authority to determine the language of the proceeding. The Complainant has submitted a request that English be the language of the proceeding in the circumstances of this particular case. The Respondent has received notice of the same in both English and Chinese but nevertheless has not submitted any response or objected to the same.
The Panel has considered the particular circumstances of this case carefully as well as the discretion given to her by paragraph 11(a) of the Rules. The Panel hereby determines that English shall be the language of administrative proceeding in this case. B. Identical or Confusingly Similar
Upon review of the evidence submitted by the Complainant and the trademark search results conducted at the official website of the China Trademark Office, the Panel is satisfied that the Complainant owns trademark rights in the DANONE trademark. Particularly, the Panel notes that the Complainant has registered the DANONE trademark in China.
The dominant and distinctive part of the Disputed Domain Name is , which is clearly identical to the Complainant's DANONE trademark. The word “food” is a common English word. The addition of the word “food” itself does not reduce the similarity between the Disputed Domain Name and the DANONE trademark in which the Complainant has trademark rights.
Further, as shown by the evidence submitted by the Complainant, its DANONE trademark is renowned and its main business is related to food. As such, when the public sees the Disputed Domain Name, they may be confused into thinking that the websites of the Disputed Domain Name is operated or approved by or otherwise associated with the Complainant.
It is also well-established that in considering whether a domain name is identical or confusingly similar to a registered trademark, the suffix of a domain name may be disregarded.
Accordingly, the Disputed Domain Name is confusingly similar to the DANONE trademark in which the Complainant has trademark rights. C. Rights or Legitimate Interests
The Respondent has failed to provide any evidence to demonstrate that it has rights or legitimate interests in the Disputed Domain Name. In such circumstances, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy if it has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455)
The Complainant confirms that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's DANONE trademark (the registration of which preceded the registration of the Disputed Domain Name).
The Panel notes that the name of the Respondent is “Beijing Yuchun Marketing Co. Zhiping Yan”, which does not contain the word “danone” or “danone food”. There is also no evidence suggesting that the Respondent has been commonly known by the Disputed Domain Name.
Based on the record and in the absence of any submission from the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name. D. Registered and Used in Bad Faith
The Panel notes that the mark DANONE is a coined term instead of a common word with any dictionary meaning; it is distinctive. The Panel has also been informed that the fame of the DANONE trademark and the rights of the Complainant has been confirmed in several previous WIPO UDRP decisions (See for instance Compagnie Gervais Danone v. Bethesda Properties LLC,WIPO Case No. D2007-1451; Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media, WIPO Case No. D2007-1630; Compagnie Gervais Danone v. yunengdonglishangmao (beijing) youxiangongsi,WIPO Case No. D2007-1918). Also, danone has been used by the Complainant as its trade name for years.
Based on the above, the Panel considers it highly unlikely that the Respondent was not aware of the Complainant and its famous DANONE trademark when it applied to register the Disputed Domain Name. Hence, the Panel is satisfied that the Complainant's evidence shows that the Respondent registered the Disputed Domain Name in bad faith.
Although paragraph 4(b) of the Policy sets out the particular circumstances which can prove the registration and use of a domain name in bad faith, it does not exclude other circumstances. The Panel finds that the Respondent was well aware of the Complainant when it applied to register the Disputed Domain Name but still proceeded to register the same. The Panel regards that the Respondent should also have been aware that such registration and use would likely generate confusion among the public as to the origin of the websites of the Disputed Domain Name and damage the legitimate interests of the Complainant. However, it still proceeded to register and use the same. The Respondent did not submit any evidence to prove the contrary.
The Panel thus concludes that the Respondent registered and used the Disputed Domain Name in bad faith.
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 transferred to the Complainant.
Chiang Ling Li
Sole Panelist
Dated: January 28, 2009
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