WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. ONEANDONE/ Mariam Mohanna Case No. D2009-0730 1. The Parties
The Complainant is Compagnie Gervais Danone of Paris, France represented by Dreyfus & Associés, France.
The Respondents are Mariam Mohanna of Beirut, Lebanon, self-represented;
ONEANDONE of Chesterbrook, Pennsylvania, United Sates of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2009. On June 4, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 5, 2009, 1&1 Internet AG 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 June 10, 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 amended Complaint on June 12, 2009. The Center verified that the Complaint together with the amended 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 June 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2009. The Response was filed with the Center on July 8, 2009.
On July 10, 2009, the Complainant submitted supplemental filings replying to Respondent's Response. In response, on July 21, 2009 the Respondent filed supplemental filings. On July 21, 2009, the Panel informed the Parties that, per paragraph 12 of the Rules, the Panel would not ask for nor consider supplemental filings by either Party.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 17, 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.
Decision Date Extensions
Per paragraph 10(c) of the Rules, on July 31, 2009 the Panel extended the due date of this Decision from July 31, 2009 to August 7, 2009. On August 9, 2009, the Panel extended the due date of this Decision to August 14, 2009. 4. Factual Background
The Complainant owns the trademark DANONE, which is known world-wide for milk products. The Respondent is an individual in Lebanon who registered the disputed domain name, , on October 29, 2008. The Respondent also uses a Pennsylvania, United States of America address.
The Complainant registered the domain name on December 15, 2004.
The Respondent initially used the disputed domain name only to connect to other commercial websites. The Complainant contacted the Respondent in early January 2009 and asked that the disputed domain name be cancelled. Afterwards, the Respondent posted a “coming soon” notice at the disputed domain name web site and stopped the commercial web site links.
The Complainant's trademark DANONE is suggestive of the Arabic word for thought.
The amended Complaint and Response briefed this Case well enough for the Panel not to need supplemental filings. 5. Parties' Contentions A. Complainant
- The Complainant is the global leader in dairy products and number two in bottled water.
- The Complainant owns numerous DANONE trademarks that have been used on labeling, packaging and promotional literature for its products and that have been prominently displayed in supermarkets and grocery stores in various regions around the world.
- DANONE is especially famous in the United States, where the Respondent is located.
- The Complainant owns the domain name .
- When the Complainant discovered the disputed domain name on January 9, 2009, the Complainant noticed it was used to connect to various sponsored websites, including the Complainant's.
- The Complainant could not find a definition for “danone” in Arabic.
- The Complainant is the owner of several international DANONE trademarks.
- The predominant part of the disputed domain name, is DANONE, the registered trademark of the Complainant. The mere addition of the gTLD “.com” is irrelevant as it is also well established that the generic top level domain name is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the Complainant's trademark and the disputed domain name.
- Furthermore, the disputed domain name is the exact translation into English of the domain name held by the Complainant.
- Many UDRP cases specify that an exact translation of a trademark can create a confusing similarity between the disputed domain name and the Complainant's trademark.
- 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 Complainant's rights in the DANONE trademark predate the Respondent's registration of the disputed domain name by a considerable length of time.
- To the best of the Complainant's knowledge, the Respondent has so far neither used, nor made any demonstrable preparation to use, the disputed domain name or a name corresponding to this domain name in connection with a bona fide offering of goods or services.
- The page toward which the disputed domain currently directs does not constitute legitimate use. The Complainant noticed this new page after the Respondent received the Complainant's cease and desist letter. It seems rather obvious that the Respondent tried to create the appearance of legitimate interest to justify the registration of the disputed domain name.
- The disputed domain name previously directed towards a pay-per-click website. The Respondent's use of the disputed domain name served the purpose of generating revenues.
- Several panels have previously stated that DANONE is a well-known trademark.
- Panels have specified that the fame of the DANONE trademark is sufficient to prove bad faith registration and use of it as a domain name.
- It is obvious that the Respondent knew or should have known about the Complainant's trademark at the time it registered the disputed domain name. The Respondent's knowledge of the Complainant's trademark when registering a domain name containing said trademark constitutes bad faith registration.
- Although the Respondent explains that it wanted to create a website dealing with the gap between Occidental and Arabic peoples, the disputed domain name directed towards a classic parking page. The Respondent's aim was only to create an association with the DANONE trademark in order to attract users to its web site.
- Panels have previously stated in numerous decisions that using famous trademarks to attract Internet users to a website for commercial gain constitutes bad faith use.
- Although privacy shields might be legitimate in some cases, it is difficult to understand why a pay-per-click advertiser needs to protect its identity except to make it difficult for a brand owner to protect its trademarks against infringement, dilution and cyber squatting. B. Respondent
- “Danoneetvous” is not a trademark. is a domain name owned by the Complainant.
- “Danoneandyou”, as explained by the Respondent in her exchanges with the Complainant, refers to:
The word “danone” which means, in Lebanese Arabic, “their point of view”; and
The words “and you” in English.
- The purpose of the web site is to create a bridge between the Arab and the Occident cultures by showing how close they really are despite all the usual clichés, and choosing a bilingual name serves perfectly that purpose.
- is meant to be a non-commercial website with no links to any commercial activity.
- Web browsers support only Latin characters and because of this situation, Respondent was obliged to transliterate the Arabic word to create her domain name and the result was .
- The logo is written in both Arabic and English, so that the word “danone” never appears on the web site except in the domain name.
- The Respondent is not at all affiliated with the the Complainant's trademark, and the choice of the domain name is not linked in any way to the Complainant's DANONE products.
- It is relevant to note that the Respondent is a Lebanese person who lives in Lebanon, and Lebanese citizens are the primary target of her action.
- The Respondent does not benefit from the pay-per-click parking page that appeared before the cease and desist letter.
- The Respondent is making a legitimate, non-commercial use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue. The Respondent is preparing an online awareness action. On October 29, 2008, the name of the action was settled with the confirmation of the availability of the corresponding domain name online. Two months and a half later, a period during which the Respondent was working on the preparation of the website, the Respondent received the first email from the Complainant.
- Placing the “coming soon” page after receiving the cease and desist letter aimed at eliminating any assumption of an “intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue.”
- In Lebanon, Danone products are not at all publicized. Moreover, the Danone company has no official representative/distributor in Lebanon for its dairy products. Given the lack of marketing efforts, is totally unknown in Lebanon and Respondent did not and had no reason to know that website.
- The Respondent developed the web site of Amel Association, a well-known Lebanese non-profit NGO with special status with the United Nations that was established more than 30 years ago. The Respondent also developed the non-profit website of Ardsouthleb, a program for empowering women by training them to produce natural soap and medical plants which are then sold abroad through specialized organizations. The previous activities of the Respondent for not-for-profit organizations show the Respondent's personality and beliefs and are effective proof of the Respondent's good faith in creating a not-for-profit web site that aims to narrow the gap between Orient and Occident. 6. Discussion and Findings
In order to prevail in this proceeding, the Complainant must show per paragraphs 4(a)(i-iii) of the UDRP that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in the disputed domain name;
- the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has exhibited a number of its DANONE trademark registrations in the European Union, the United States and Lebanon (international trademarks no.172526 first registered on October 31, 1953 in classes 1, 5 and 29; no. 639073 registered on January 6, 1995 in classes 1-42 inclusive; United States trademark no. 2924636 registered February 8, 2005 in international classes 5, 29, 30; Lebanese Republic trademark no. 67380 registered November 15, 1995 in classes 5, 29, 30, 31, 32, 42). The disputed domain name, , contains the addition of the English phrase “and you”, apparently used in its ordinary sense. The phrase “and you” does not change the prominence of the Complainant's trademark in the disputed domain name .
The Respondent argues the Complainant's DANONE trademarks do not extend to the disputed domain name , but it is well-settled under the Policy that generic or everyday phrase add-ons do not cancel out trademark rights when the trademark is still prominent and recognizable as it is here. (See for example Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565; and Alstom v. FM Laughna,WIPO Case No. D2007-1736).
The Panel thus finds the disputed domain name, , is confusingly similar to the Complainant's DANONE trademark, and that the Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not have permission to use the Complainant's DANONE trademark, and both Parties agree there is no affiliation or connection between the Respondent and the Complainant. This constitutes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, and it is incumbent on the Respondent to come forward and show that she does have these rights and legitimate interests. (See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; Document Technologies, Inc. v. International Electronics Communications, Inc.,WIPO Case No. D2000-0270).
In point of fact, the Respondent has indeed come forward to make the claim under paragraph 4(c)(iii) of the Policy that she is using the disputed domain name for noncommercial purposes. The Respondent contends she plans to use the disputed domain name to further understanding between the West and the Arab world. The Respondent explains that she chose the disputed domain name, , because “danone” means “their thoughts” in Lebanese Arabic, and then added “and you” in English so as to have both the Arab world and the West present in the same domain name.
The Panel can see that the trademark DANONE may be said to contain the Arabic root for thought (although not in the way Lebanon's trademark office transcribed Danone into Arabic letters). The Panel is willing to accept, arguendo, that some Lebanese say “danone” to mean “their thoughts”. However, the phrase “their thoughts and you” makes no sense to this Panel, and certainly not in the context of an alleged “coming soon” web site that purports to improve understanding between the Arab world and the West. When the Panel observes that the disputed domain name is an identical translation from French to English of the Complainant's long pre-existing domain name, and that the disputed domain name web site was used to connect to commercial web sites until the Respondent received the Complainant's cease-and-desist communications, the Panel can only conclude that the Respondent was not making a noncommercial use of the disputed domain name per paragraph 4(c)(iii) of the Policy.
The Respondent contends she did not receive payment for the several months when the disputed domain name led to commercial websites. However, the circumstances of this Case lead the Panel to infer this is not true, for at a minimum the Respondent had the power to determine where the economic benefit from the commercial traffic was directed. Why else would someone register a domain name and then allow it to be used to direct to commercial web sites, including the Complainant's? (see for example Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc.,WIPO Case No. D2008-0627 where the panel stated that use of the disputed domain to connect to commercial websites was a bad faith offering of goods and services; and Educational Testing Service (ETS) v. International Names Ltd.,WIPO Case No. D2007-0449).
The Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant contends the Respondent registered the disputed domain name, , in violation of paragraph 4(b)(iv) of the Policy inasmuch as the Respondent used the disputed domain for several months to connect to commercial web sites for economic gain. The confusing similarity between the disputed domain and the Complainant's DANONE trademark allowed the Respondent to benefit from the notoriety of the Complainant's trademark.
The Respondent objects that it did not benefit economically from the disputed domain name's use to direct internauts to commercial web sites. The Respondent also objects it was the domain name registrar rather than the Respondent who initially controlled how the disputed domain name was used. However, as discussed above, the consensus is that economic benefit for the Respondent can be inferred under the premises. (See HRB Innovations Inc., Express Tax Service Inc. v. Calvin Brown,WIPO Case No. D2008-1072; Société des Produits Nestlé SA v. Wolf Internet Services LDC, Wolfgang Sauer,WIPO Case No. D2008-1626; Ideal Products, LLC v. Manila Industries, Inc., NAF Claim No. FA 819490: “Respondent cannot duck its responsibility for the [web]site by saying that others choose the content.”). What is more, the Respondent did not stop this practice until put on notice by the Complainant in early January 2009, over two months after registering the disputed domain name.
The Panel notes again that the Respondent argues that the disputed domain name, , is the Respondent's way of saying “their thoughts” (in Lebanese Arabic dialect) and “and you” in English. The Respondent states this was her idea for a web site that would promote understanding between the West and the Arab world. There is no evidence this is what the Respondent had in mind when she registered the disputed domain name. And the phrase “their thoughts and you” is practically nonsensical as a web site to increase West/Arab understanding.
The Panel observes yet again that the disputed domain name, in English, is an exact translation of the Complainant's domain name, whose registration preceded the disputed domain name by some four years. The Respondent claims not to have known of the Complainant because its products are not marketed in Lebanon as the Complainant itself noted. However, the French language, media and culture are widely present in Lebanon. When one adds to this the world-wide strength of the DANONE trademark, the Panel finds it difficult to imagine the Respondent did not know of and have in mind the Complainant and its trademark at the time the Respondent registered the disputed domain name. On the balance of probabilities, or the preponderance of the evidence, the Panel finds the Respondent's contentions about a web site to improve West/Arab understanding to be a scarcely credible post facto rationalization.
The Panel also agrees with the Complainant that the DANONE trademark is well-known globally, and that its use without permission in a domain name is per se an indication of bad faith. (For cases noting the strength of the Danone trademark, see Compagnie Gervais Danone v. Christopher Koda,WIPO Case No. D2008-1639; and Compagnie Gervais Danone v. Bethesda Properties LLC,WIPO Case No. D2007-1451. And see F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956; and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Ltd.WIPO Case No. D2000-0163).
The Panel thus finds the Complainant has met its burden of proof to show the Respondent has 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 as specifically requested by the Complainant, the domain name, , be cancelled.
Dennis A. Foster
Sole Panelist
Dated: August 16, 2009
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