WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. Whois privacy services provided by DomainProtect Case No. D2009-0454 1. The Parties
Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.
Respondent is Whois privacy services, provided by DomainProtect of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Instantnames LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 8, 2009, the Center transmitted by email to INSTANTNAMES LLC a request for registrar verification in connection with the disputed domain name. On April 15, 2009, Instantnames LLC 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 Respondent of the Complaint, and the proceedings commenced on April 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on May 11, 2009.
The Center appointed Torsten Bettinger as the sole panelist in this matter on May 15, 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
Complainant COMPANIE GERVAIS DANONE, a subsidiary of the French company GROUPE DANONE, is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition and the global leader in dairy products and number two in bottled water. Complainant employs nearly 90,000 people in all five continents.
Complainant has several well-known brands, including DANONE, which is used in commerce since 1919. Complainant's trademark DANONKI is specialized in the children food field, and offers a varied range of products such as fruit yoghurts.
Complainant owns a number of trademark registrations protecting the mark DANONKI in numerous countries worldwide, inter alia,
- International trademark No. 788998 DANONKI registered on August 30, 2002;
- Polish trademark No. 253496 DANONKI & device registered on January 20, 2006 and covering goods in classes 29, 30 and 32;
- Polish trademark No. 203352 DANONKI registered on October 2, 2002 and covering goods in classes 29, 30 and 32; and
- Polish trademark No. 338037 DANONKI & device applied for on March 11, 2008 and covering goods in classes 29, 30 and 32.
Additionally, Complainant is the owner of the domain names , , , and .
The disputed domain name was registered on September 2, 2008 and was first used in connection with a website containing numerous sponsored links.
Complainant sent a letter of cease-and-desist to the former registrant, EUROBOX Ltd, on December 9, 2008 asking to amicably transfer the disputed domain name. EUROBOX Ltd never answered the cease-and-desist letter.
Some time after the sending of the cease-and-desist letter, Complainant discovered that registrant had changed to the current registrant and that the disputed domain name pointed to an inactive website.
On April 21, 2009, Complainant received an offer from the Respondent stating that the domain name owner is willing to transfer the disputed domain name to the Complainant against payment of his out-of-pocket expenses of USD 300. 5. Parties' Contentions A. Complainant
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the disputed domain name is identical to its DANONKI Marks as it fully includes such marks. Furthermore, Complainant contends that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant's trademark and the disputed domain name.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that
- Respondent has no rights or legitimate interests in the name DANONKI;
- Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized by Complainant to register and use Complainant's DANONKI trademark or to seek registration of any domain name incorporating said mark;
- Respondent has no prior right with regards to the domain name;
- DANONKI has no special meaning in Russian or in any other language and therefore is no generic word;
- there is no evidence for Respondent's use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
- the use of the disputed domain name in connection with pay-per-click advertising links does not represent a use in connection with a bona fide offering of goods and services;
- Respondent is not commonly known by the disputed domain name; and
- Respondent's use of the domain name is neither noncommercial nor fair.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that
- Complainant and its trademark are well-known in Eastern Europe, where Respondent is located, that Respondent knew or must have known Complainant's trademark at the time it registered the disputed domain name;
- Respondent had no reason to choose the disputed domain name except to create an association with the DANONKI trademark in order to attract users to its website and to take advantage of Complainant's reputation;
- the disputed domain name was first used to direct Internet users to a pay-per-click website containing various commercial links, including links consisting of the words “Dino” (the dinosaur which is always associated to Danonki products and advertising in Eastern Europe), “kid” (which corresponds to Complainant's trademark main target, and “DANONE” (a trademark held by Complainant) and therefore used to divert Internet users to Respondent's website for commercial gain;
- the actual use of the domain name in connection with an inactive website is to be considered as use in bad faith because the domain name is identical with a famous trademark;
- it is very likely that the real owner of the disputed domain name is EUROBOX Ltd and that EUROBOX Ltd is a notorious cybersquatter. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The first question to be dealt with concerns the identity of Respondent. Although, under the circumstances of the case, EUROBOX Ltd might be still be the real owner of the disputed domain name protecting its identity through a privacy shield, the Registrant of the domain name, Whois privacy services never revealed the identity of the domain name owner. The Panel therefore treats “Whois privacy services, provided by DomainProtect” as the sole Respondent in this proceeding. A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-l480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D200l-0505).
The disputed domain name completely incorporates Complainant's DANONKI Marks and therefore is identical to such marks.
It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is identical to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among Panelists that if complainant makes a prima facie case that respondent has no rights or legitimate interests, and respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then respondent may lack a legitimate interest in the domain name.
Complainant asserted that Respondent has neither a license nor any other permission to use Complainant's trademark DANONKI. In view of the submitted supporting documents, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates Complainant's distinctive trademark DANONKI.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The disputed domain name was first used in connection with a parking website providing advertising links to third parties' websites and later directed to an inactive website. In the circumstances of this case, such use does not establish a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent registered and used the disputed domain name in bad faith.
Complainant provided evidence that its distinctive trademark DANONKI is widely known in Eastern Europe, where the Respondent is located. It is therefore highly unlikely that Respondent registered the domain name unaware of Complainant's rights in its DANONKI Marks.
Respondent did not yet actively use the disputed domain name. However, it is well established that passive holding of a domain name may equal acting in bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC;WIPO Case No. D2002-0131).
The Panel concludes that it does. The particular circumstances which lead to this conclusion are:
(i) Complainant's trademark is used for many years. It is therefore apparent that Respondent has registered the domain name in order to create an association with the mark as a means of attracting users to his future website.
(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. The registration of a domain name incorporating a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
(iii) Respondent has neither responded to Complainant's letters nor to the Complaint and has not denied Complainant's contentions;
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate and constitute an infringement of Complainant's rights.
Respondent's default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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 Complainant.
Torsten Bettinger
Sole Panelist
Dated: June 4, 2009
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