WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. Edward Brooks Case No. D2009-0330 1. The Parties
The Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associes, France.
The Respondent is Edward Brooks of New York, United States of America (“US”). 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 March 12, 2009. On March 12, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 12, 2009, 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” 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 March 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 22, 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, Compagnie Gervais Danone is a subsidiary of the French company Groupe Danone (“Danone”). Danone is a worldwide leading company in the fresh dairy products, bottled water, baby food and medical nutrition. Danone was founded in 1919 in Spain and evolved significantly in the 1950's, after manufacturing and marketing outside Europe. Danone employs over 90,000 people in five continents, markets in 80 countries and holds almost 20% of the international market in fresh dairy products.
Danone is a global leader in dairy products and in bottled water and one of US's top yogurt manufacturers. The Complainant's trademark DANONE has been used on labeling, packaging and promotional literature for its products and has been prominently displayed in supermarkets and grocery stores in various regions around the world.
Danone is the owner of various trademarks, national and international for the mark DANONE. For example, US trademarks nos. 2 827 606, 2 924 636, 3 335 419 and others, in many classes including in classes 30, 5, 29, 32, 16 and 41. Danone is also the owner of a number of international trademark registrations nos. 172 526 228, 184 639 073 and others. Some of the Complainant's trademarks for the DANONE mark were filed as early as 1953.
The Respondent registered the disputed domain name on July 1, 2008. The disputed domain name is resolved to a landing/parking page that directs Internet users to various sponsored links. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the trademarks owned by the Complainant, seeing that it fully incorporates the DANONE trademark.
The Complainant further argues that it is the owner of several domain names consisting of its DANONE trademark and in particular , , , , , , and . Furthermore, the Complainant argues that the disputed domain name is very similar to the Complainant's DANONE trademark and reproduces the Complainant's trademark in its entirety.
The Complainant also argues that the notoriety of the DANONE trademark has been recognized in prior WIPO UDRP decisions, such as Campagnie Geravis Danone, The Dannon Company, Inc. v. Greatplex Media,WIPO Case No. D2007-1630 and Campagnie Geravis Danone, The Dannon Company, Inc. v. Moniker 470909, TheGuidePublishers, Curt Cranfield,WIPO Case No. D2007-1731.
The Complainant argues that the prefix “blog” and the “.com” extension are commonly used in domain names, and that the term “blog” is a generic term indicating that the website to which such a domain name is resolved will contain web-based periodic publications, such that the public would expect the Complainant to use the disputed domain name for web-based publications about the Complainant and its services or products.
The Complainant further argues that the generic word “blog” does not serve to distinguish the domain name from the Complainant's trademark, and that the ability for such a descriptive word to distinguish the domain name from the Complainant's DANONE trademark is limited. The Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant further argues that the fact that the disputed domain name is well known since the Complainant is a worldwide leader in the field of fresh dairy products and bottled water; it appears that the Respondent knew the existence of the trademark which indicates the Respondent's bad faith in registration of the disputed domain name.
The Complainant further argues that the Respondent also used the disputed domain name in bad faith by intending to mislead Internet users to believe they are entering a Danone authorized site where they can gather information about the Complainant and its goods. The Complainant further provides that the disputed domain name directs Internet users to commercial sponsored links. Some of these links refer to the Complainant's competitors. The Complainant argues that the Respondent is profiting from the reputation and good will of the Complainant.
The Complainant further argues that the Respondent acted in bad faith when refusing to respond to the Complainant's cease and desist letters. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademarks over the DANONE mark in various jurisdictions. See US Trademark serial number 2827606 for the mark DANONE with registration date of December 17, 2002 owned by the Complainant.
In addition, the Complainant filed numerous applications for the registration of trademarks comprising the DANONE mark in several different countries. See US Trademark serial number 2951239 for the mark DANONE ACTIV with registration date of May 17, 2005 owned by the Complainant.
The only difference between the Complainant's trademark DANONE and the disputed domain name is that the disputed domain name comprises the term “blog” before the mark DANONE. The disputed domain name comprises the DANONE trademark in its entirety.
The commonly used term “blog”, is a contraction of the term “weblog”, and refers to a type of a web site, usually maintained by an individual with regular entries or commentaries or description of events. Such entries are commonly inserted in reverse-choronological order. See “”.
The addition of the generic term “blog” to the disputed domain name does not alleviate any likelihood of confusion because when reading the disputed domain name Internet users may expect a web site maintained by or on behalf of the Complainant. In similar cases, the addition of a generic term was considered insufficient to avoid confusion between a disputed domain name and the trademarks. See Utrecht Manufacturing Corporation v. Web management S.A.,WIPO Case No. D2007-1258 and Société Nationale des Chemins de Fer Francais v. ostrid company, Domain by Proxy, Inc.,WIPO Case No. D2008-0627.
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110 and Sampo plc v. Tom Staver,WIPO Case No. D2006-1135.
In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. See Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134 (“the mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed Domain Name”). See also National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a ,WIPO Case No. D2000-0118, and N.C.P. Marketing Group, Inc. v. Entredomains,WIPO Case No. D2000-0387.
The Panel finds that the Complainant has established such prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the DANONE trademark or a variation or a combination thereof, and that the Respondent is using the disputed domain name as a landing/parking page to divert Internet users from the Complainant's legitimate web site. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
In addition, as noted above, the disputed domain name is resolved to a website consisting a page displaying sponsored links which very likely generate revenues to the Respondent via the pay-per-click system and at the same time damaging the Complainant's trademark rights. The use of the disputed domain name via a redirection to the web page, where services of competitors of the Complainant are advertised and sponsored links are published, is not a legitimate or fair use of the disputed domain name. Such use has been held by previous UDRP panels to be not associated with any legitimate purpose. See Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, and F. Hoffmann-La Roche AG v. Titan Net,WIPO Case No. D2006-0424.
Accordingly, and in view of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
It is suggestive that the Respondent registered the disputed domain name in bad faith where the trademarks owned by the Complainant were registered long before the registration of the disputed domain name. The Complainant's submitted evidence, which show that the Complainant's trademark DANONE was registered and is well known in the food and beverages industry and that its trademark is well recognized publicly. It is unlikely that the Respondent did not recognize or was not familiar with the Complainant's trademark at the time of registration. See The Nasdaq Stock Market, Inc., v. H. Pouran,WIPO Case No. D2002-0770.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other online location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The use of the disputed domain name as a landing/parking page where Internet users can click on various sponsored links some of which direct the users to web sites offering services and goods not affiliated with the Complainant amounts to bad faith use of the disputed domain name. Such use is an intentional attempt to attract, for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's DANONE trademark. See Chinmoy Kumar Ghose v. ICDS and Maria Sliwa,WIPO Case No. D2003-0248; Lexicon Marketing Operating Luxembourg S.A.R.L v. Ingles Total S.A. de C.V.,WIPO Case No. D2006-0200 and F. Hoffman-La Roche AG v. Softech Ltd., DNS Administrator (barry2),WIPO Case No. D2007-1706.
On October 31, 2008, November 10, 2008 and November 14, 2008, the Complainant's counsel sent a cease and desist letter and two reminders to the Respondent. The Respondent failed to answer. The Respondent's failure to answer these letters is further indication in this particular case of bad faith registration and use of the disputed domain name. See RRI Financial, Inc v. Ray Chen,WIPO Case No. D2001-1242.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: May 4, 2009
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