WIPO Domain Name Decision D2009-0080 for eviandetox.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited Case No. D2009-0080 1. The Parties

The Complainant is Société Anonyme des Eaux Minérales d'Evian (SAEME) of Evian, France, represented by Dreyfus & associés, France.

The Respondents are Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, both of Mumbai, India. 2. The Domain Name and Registrar

The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2009 by email and on January 27, 2009 in hardcopy. On January 22, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd., a request for registrar verification in connection with the disputed domain name. There was no reply and further requests were sent to Lead Networks Domains Pvt. Ltd., on January 26 and January 28, 2008. On January 28, 2009, Lead Networks Domains Pvt. Ltd., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 2, 2009. 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” 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 February 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 25, 2009.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 5, 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 following facts are taken from the Complaint.

The Complainant is a subsidiary of the French company Groupe Danone. Evian water is a mineral water from a source discovered in 1789 by the Marquis of Lessert. EVIAN is today one of the best selling trademarks of mineral water in the world, with 1.7 billion bottles sold every year, including 1.5 million in India. The trademark EVIAN is represented on five continents in 142 countries. The EVIAN trademark embraces beauty and health products.

The Complainant is the owner of trademarks that include the following.

International trademarks

 

- International trademark EVIAN + logo No. 696812, registered on July 6, 1998, renewed and covering goods in classes 3, 5, 14, 16, 18, 24, 25, 28, 32, 33 and 42;

- International trademark EVIAN Eau Minérale Naturelle + logo No. 755895 registered on March 14, 2001, covering goods in class 32;

- International trademark EVIAN + logo No. 757317 registered on January 29, 2001, covering goods in classes 3, 5 and 32;

- International trademark EVIAN + logo No. 764050 registered on May 18, 2001, covering goods in classes 3, 16, 18, 25 and 32;

- International trademark EVIAN No. 764063 registered on April 18, 2001 covering goods in class 38;

- International trademark EVIAN No. 855738 registered on June 6, 2005 covering goods in classes 41, 43 and 44;

- International trademark EVIAN + logo No. 860678 registered on June 6, 2005 covering goods in classes 41, 43 and 44.

Indian trademarks

- Indian trademark EVIAN No. 888 363, registered on November 26, 1999 covering class 18;

- Indian trademark EVIAN No. 888 361, registered on November 26, 1999 covering class 3;

- Indian trademark EVIAN No. 888 364, registered on November 26, 1999 covering class 25;

- Indian trademark EVIAN No. 888 362, registered on November 26, 1999 covering class 5;

- Indian trademark EVIAN No. 515 326, registered on August 18, 1989 covering class 32;

- Indian trademark EVIAN + logo No. 891 981, registered on December 15, 1999 covering class 32;

United States of America trademarks

- US trademark EVIAN No. 1155024 registered on May 19, 1981, renewed and covering goods in class 32;

- US trademark EVIAN No. 1778995 registered on June 29 1993, renewed and covering goods in class 25;

- US trademark EVIAN No. 1610010 registered on August 14, 1990, renewed and covering goods in class 32;

- US trademark EVIAN No. 2904034 registered on November 23, 2004, covering goods in classes 3 and 5;

- US trademark EVIAN No. 2821896 registered on March 16, 2004, covering goods in classes 3, 5 and 32;

- US trademark EVIAN No. 2822102 registered on March 16, 2004, covering goods in classes 3, 16, 18, 25 and 32;

- US trademark EVIAN No. 2770225 registered on September 30, 2003, covering goods in class 3.

European Community trademarks

- Community trademark EVIAN + logo No. 001911098 registered on October 18, 2000 covering class 32;

- Community trademark EVIAN No. 001422716 registered on November 18, 1999 covering classes 3, 5, 18 and 32;

- Community trademark EVIAN + logo No. 001390558 registered on November 9, 1999 covering classes3, 5 and 32.

The Complainant owns other domain names incorporating its EVIAN mark including , , , , and .

No significant facts are known about the Respondent. The disputed domain name was evidently registered on September 12, 2003. 5. Parties' Contentions A. Complainant

The Complainant contends that it is a well known international company purveying mineral water and submits documentary evidence that it is the owner of and has rights in the EVIAN trademarks listed in section 4 above.

The Complainant contends that the disputed domain name is confusingly similar to the EVIAN trademarks owned by the Complainant. The term “detox” appended to the EVIAN trademark in the disputed domain name does not diminish confusing similarity. Furthermore the word “detox” is used by the Complainant in conjunction with the trademark EVIAN.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way and has not been authorized to register or use the EVIAN trademark or any domain name incorporating the trademark.

It is contended that the Respondent has no prior rights or legitimate interests in the disputed domain name, the registration date of which post-dates those of numerous EVIAN trademarks. Having made enquiries, the Complainant asserts that the Respondent is unknown but there is no evidence that it is known as EVIAN. The Respondent “Private Whois Escrow Domains Private Limited” is a domain privacy service that has concealed the true ownership of the disputed domain name. Cease and desist letters sent by e-mail and post have been received by the Respondent but not answered. Given the secretive nature of the Respondent, it can be inferred that it has no legitimate interest in the disputed domain name.

 

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The fact that the famous trademark EVIAN is included in its entirety in the disputed domain name makes it impossible to argue that the Respondent did not have the Complainant in mind when it registered the domain name. Previous WIPO UDRP panels have recognized that knowledge of a Complainant's intellectual property rights at the time of the registration of a domain name is proof of bad faith registration.

The website of the disputed domain name redirects to a parking webpage providing numerous links to websites unrelated to the Complainant. Whatever word is typed into the search box provided, there is a reference to the Complainant in the list of results.

The Complainant says that the Respondent has provided false and misleading information in connection with the registration of the disputed domain name and has used the name of an unidentifiable business entity. It has failed to provide proper business contact information. The Respondent has registered a domain name obviously portraying the Complainant's well-known product.

The Complainant says, with documentary evidence, that it sent cease and desist letters to the Respondent by registered letter, fax and email, to which no reply was received.

By way of remedy the Complainant requests the transfer to it of the disputed domain name . B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identity of the Respondent or Respondents

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:

(i) the Respondent's domain name 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 in respect of its domain name; and

(iii) the Respondent's domain name has been registered and is being used in bad faith.

A Respondent is defined as the holder of a domain name registration against which a Complaint is initiated (paragraph 1 of the Rules). The Complainant initiated a Complaint against the registrant of record at the time, namely Private Whois Escrow Domains Private Limited, which gave the same physical address as the registrar. After the filing of the Complaint with the Center, the registrar named the registrant as Pluto Domain Services Private Limited. The Complainant filed an amendment to the Complaint stating that, according to the WhoIs database, the Respondent is Private Whois Escrow Domains Private Limited, and giving the Respondent's contact details as Pluto Domain Services Private Limited. Thus the Complainant has elected to initiate the Complaint against Private Whois Escrow Domains Private Limited in association with Pluto Domain Services Private Limited. The Panel accepts in this case that this is a reasonable course of action and its findings will be in respect of Private Whois Escrow Domains Private Limited and/or Pluto Domain Services Private Limited together and separately. B. Identical or Confusingly Similar

The Complainant is required to prove that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to the trademark.

The Complainant has submitted ample documentary to prove to the Panel that it has rights in the trademark EVIAN in India and internationally.

The disputed domain name is . The gTLD designation “.com”, being a technical part of the disputed domain name, does not enter into the consideration of confusing similarity under the Policy. What remains is naturally read as “Evian”, being the Complainant's trademark, and “detox”. It is well established in UDRP decisions that the attachment of ancillary words or letters does not usually diminish confusing similarity between a domain name and the trademark it contains. In the present instance the word additional to the trademark is “detox”, which is generally known as an abbreviation for “detoxify”, “detoxification”, or similar. The Complainant has promoted the association between its product and the concept of detoxification by advertising, for instance, “Evian detox the city” through the website “www..au”, and “detox with Evian” through the website “www.”. The Respondent's compilation projects the same association between EVIAN water and detoxification, enhancing the confusing similarity between the disputed domain name and the Complainant's trademark. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests

The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Complainant confirms that it has not in any way permitted the Respondent to use its trademark. The Complainant states on the basis of enquiry that the Respondent, whose identity is not clear, cannot be known by the disputed domain name and has not made any legitimate use of it.

The Complainant has thus made out a prima facie case to the effect that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent may contest in the terms of paragraph 4(c) of the Policy or otherwise. The Respondent has not replied to the Complaint or to a cease and desist letter and the Panel cannot find any evidence upon which the Respondent could claim rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(b)(ii) of the Policy. D. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

The Complainant's EVIAN trademark is world famous, and there can be little reasonable doubt here that the Respondent knew (or should have known) of the mark's existence when registering the disputed domain name. On November 21, 2008, the Complainant made a print of the WhoIs pages from DomainTools showing the registration details on record for the disputed domain name. Near the top of the display was the statement “Buy Now: This domain is listed for sale with no price at Sedo”. The record also stated that the same registrant owned about 84,202 other domains. The Panel finds it reasonable to infer from these circumstances that the Respondent registers or acquires domain names on a large scale for the purpose of sale for profit, and that it acquired the disputed domain name for the purpose of profiting commercially from the fame of the Complainant's well-known EVIAN mark, quite possibly including through sale to the Complainant or a competitor. The word competitor has been interpreted widely within the meaning of paragraph 4(b)(i) of the Policy (Mission KwaSizabantu v. Benjamin Rost,WIPO Case No. D2000-0279) and a holder of the disputed domain name without legitimate rights (including the present Respondent) might in the circumstances be classed as a competitor of the Complainant. The Panel finds bad faith registration and use proven in the terms of paragraph 4(b)(i) of the Policy.

The Respondent's domain name resolves to a website. Internet users seeking a website associated authentically with any trademark, if they do not know the URL, conventionally may use a search engine such as Google, or may try to guess the URL. A user whose Internet search for “Evian” (alone or in any combination) turned up might visit the website. Instead of reaching the Complainant's business they would be led to the Respondent's operation, and once there, may initially be confused into believing it to be endorsed by the Complainant. Having regard to all the evidence, together with the Respondent's lack of explanation, and the well-recognised model of such activity prevalent on the Internet, it may reasonably be concluded on balance that the Respondent has acquired and is operating the website for the purpose of current or ultimate commercial gain. The current gain would include through the generation of revenue by linking visitors to advertisers (“click-through”), of which the website screenprint shows evidence in the form of classified search facilities. The eventual gain could be through the sale of the website with the benefit of a track record of having attracted visitors, and the website screenprint shows evidence of such intent with the invitation “Make an offer”. The Panel finds faith proven additionally or alternatively in the terms of paragraph 4(b)(iv) of the Policy.

The Respondent's failure to reply to the Complainant's cease and desist letters of July 18, July 29 and August 6, 2008, is found to be a compounding factor in bad faith (Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632). 7. Matters to be referred to the attention of ICANN

Certain elements of the facts surrounding this and related disputes are respectfully submitted to the attention of the Internet Corporation for Assigned Names and Numbers (ICANN). The concerns are: late changes of registrant; delay in the receipt by the Provider of registrar verification of registrant; and frustration of the smooth working of the UDRP.

The Panel is concerned about any mechanism that may enable a Respondent, when it learns of a Complaint, to change its registration details in an attempt to obstruct the dispute resolution process. In two previous complaints heard by this Panel, the registrar was also Lead Networks Domains Pvt. Ltd., and the change of registrant details was associated with a long delay before receipt of the registrar's verification: 14 days in CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP,WIPO Case No. D2008-0687; and 11 days in Myxer Inc. v. Compsys Domain Solutions Private Limited,WIPO Case No. D2008-1178. In CanWest, this Panelist recommended that the facts of the delay be brought to the attention of ICANN.

In Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / Comdot Internet Services Pvt. Ltd., Laksh Internet Solutions Private Limited., Pluto Domain Services Private Ltd., Compsys Domain Solutions Private Limited,WIPO Case No. D2008-1675, the learned Panelist listed no fewer than 26 previous WIPO UDRP disputes in 2008 in which a delay of between three and 22 days (including an instance of no reply) was associated with a late change of registrant details and Lead Networks Domains Pvt. Ltd., was the registrar.

The eventual Respondent in the present case, Pluto Domain Services Private Limited, was the eventual Respondent in five of the previous cases mentioned in Western Union. The registrar in the present case replied after six days, which is three business days after allowing for a weekend and for January 26, 2009 being Republic Day in India. Nevertheless this exceeds the two business days contemplated by ICANN in the consultative document Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution Policy (“UDRP”) Complaint (December 2008).

The Panel notes that at the ICANN Meeting in Lisbon, Portugal, on March 25, 2007, some discussion centred on alleged attempts to defeat the functioning of the UDRP through the device of commencing a protracted appeals process through the Courts in a location remote from a Complainant's domicile. A similar problem has been reported in the journal of the International Trademark Association (UDRP Hijacking: Avoiding and Involuntary Passage to India; Susan O'Neill, INTA Bulletin 64(4), February 15, 2009). The Panel respectfully suggests that the prompt investigation of such reports, including the taking of appropriate compliance-related measures concerning ICANN-accredited registrars found to be involved in such conduct, may serve to reinforce confidence in the UDRP as an efficient and viable alternative to Court options. 8. 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.

Dr. Clive N.A. Trotman
Sole Panelist

Dated: March 19, 2009

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