WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Dannon Company Inc. v. Whois Privacy Protection Service, Inc. / Richard Chan Case No. D2009-0163 1. The Parties
Complainant is The Dannon Company Inc. of White Plains, New York, United States of America, represented by Dreyfus & associés, France.
Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Richard Chan of Sunnyside, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2009. On February 6, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 6, 2009, eNom 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 Complainant on February 12, 2009, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 13, 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 Respondent of the Complaint, and the proceeding commenced on February 16, 2009. The proceeding was suspended from February 23, 2009 until March 25, 2009 upon Complainant's request, the expectation being that the dispute would be resolved amicably. Having failed to settle the case, Complainant requested that the proceeding be re-instituted, and the proceeding was re-instituted on March 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 15, 2009.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on April 21, 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
A subsidiary of the French company Groupe Danone, Complainant The Dannon Company, Inc. (“Dannon”) was founded in 1919 by Isaac Carasso under the name “Danone.” During World War II, Carasso immigrated to the United States, changed the name to “Dannon Milk Products,” and in 1942 began to sell yogurt in the New York City area. In 1947, Dannon introduced yogurt with fruit on the bottom, and sales began to grow. In 1950, the company expanded its sales to Philadelphia and Boston. Today Groupe Danone is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition, with nearly 90,000 employees on five continents. It represents almost 20% of the international market in fresh dairy products and is present in 80 countries. Dannon is one of America's top two yogurt manufacturers.
Complainant's trademark, DANNON, has been used on labeling, packaging, and promotional literature and is prominently displaced in supermarkets around the world. Complainant is the owner of numerous DANNON trademarks registered in the United States, including registrations dated as early as January 24, 1984.
Complainant is also the owner of several domain names including the DANNON trademark, including , , , , and .
Other UDRP decisions have recognized the notoriety of the DANNON trademark. Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media,WIPO Case No. D2007-1630 (December 27, 2007); and Compagnie Gervais Danone and The Dannon Company Inc. v. Moniker 470909, TheGuidePublishers, Curt Cranfield,WIPO Case No. D2007-1731 (February 1, 2008).
Dannon sent a cease and desist letter to Respondent on October 2, 2008, but Respondent never answered, nor has Respondent filed an answer to this Complaint. 5. Parties' Contentions A. Complainant
Dannon contends that the disputed domain name contains Complainant's entire mark DANNON, and therefore is identical or confusingly similar to Complainant's mark, and that the addition of the generic term “blog” is not enough to distinguish the domain name from the DANNON mark.
Complainant states that Respondent is not affiliated with Complainant and is not authorized to use the DANNON mark, and therefore has no rights or legitimate interests to register or use the domain name. Complainant also states that the domain name is not being used in relation to any blog, and therefore American principles of free speech, and the European principle of freedom of expression to be critical of a trademark owner do not apply here.
Finally, Dannon contends that the disputed domain name was registered and is being used in bad faith because it is obvious that Respondent knew or must have known about the well-known DANNON mark when Respondent registered the domain name. Respondent has taken steps to hide its true identity by using a privacy shield to frustrate the purposes of the Policy. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the UDRP provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
Complainant clearly has rights in the DANNON mark, based on its long and extensive use and ownership of numerous trademark registrations worldwide, as well as several domain names. This is consistent with the previous UDRP panels' decisions concerning the DANNON mark. SeeWIPO Case No. D2007-1630 andWIPO Case No. D2007-1731, supra.
The disputed domain name consists of Complainant's DANNON mark and the generic word “blog.” It is well established that the inclusion of a generic term does not defeat the identity or confusing similarity created by use of Complainant's mark. Additionally, in previous UDRP decisions concerning the addition of “blog” to a complainant's mark, the panels found that the addition of the word “blog” to the complainant's trademark does not serve to distinguish the domain name from the complainant's trademark. See, e.g., Utrecht Manufacturing Corporation v. Web Management S.A.,WIPO Case No. D2007-1258 (October 20, 2007).
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant's registered mark, and that Complainant meets the first criterion of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Respondent is not affiliated or related to Complainant, nor is Respondent licensed or authorized to use the DANNON mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in his own favor. Complainant has shown that the disputed domain name is used by Respondent to direct Internet users to a web page containing nothing other than a search engine and links to other Internet web pages. In the circumstances, the use of the domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i). See e.g., Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan,WIPO Case No. D2004-0214 (May 10, 2004).
This Panel does not need to reach any decision concerning whether the addition of the term “blog” to Complainant's mark invokes rights of free speech or freedom of expression, because the domain name does not resolve to a blog.
The Panel finds that Respondent does not have any rights or legitimate interests in respect of the domain name and that Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The fame and reputation of a complainant's mark is persuasive in determining a respondent's bad faith intent. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Based on these facts, this Panel infers that Respondent was aware of Complainant's mark when Respondent registered the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant's rights and interests”.
The disputed domain name resolves to a website which displays Google search engine and various links to other websites, among other things, to “D”, which contains links to various commercial sites. It is now a well-known practice to display on a web page or search engine various links to other commercial websites: every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. See Deutsche Telekom AG v. WWW Enterprise, Inc.,WIPO Case No. D2004-1078. Therefore, in the Panel's view, it seems evident that Respondent has registered and used the disputed domain name with the intent to attract to his website Internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored link(s).
Further evidence of Respondent's bad faith is the fact that Respondent failed to respond to Complainant's cease and desist letter. See, e.g., Banque Transatlantique S.A. v. Dotscope,WIPO Case No. D2004-1100 (February 23, 2005).
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy. 7. Decision
Complainant has requested that the domain name be cancelled. 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.
Sandra A. Sellers
Sole Panelist
Dated: May 4, 2009
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