WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. PrivacyP/Private Registration Case No. D2009-0809 1. The Parties
Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.
Respondent is PrivacyP/Private Registration of Moergestel, Netherlands and Panama City, Panama, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2009. On June 19, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Name. On June 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 30, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 2009 and further amendment on July 7, 2009. The Center verified that the Complaint together with the amendment thereto 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 July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 10, 2009.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 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
Complainant, Companie Gervais Danone, is a subsidiary of the French company, DANONE, which was founded approximately 90 years ago in 1919. Complainant is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition, employing nearly 90,000 people in all five continents. Complainant represents almost 20% of the international market in fresh dairy products and is present in 80 countries.
Complainant's brand, ACTIVIA, was launched in 1987 in France, in 2002 in Japan and in 2005 in The People's Republic of China. The probiotic culture in the ACTIVIA product is unique to DANONE. The ACTIVIA product is one of Complainant's most successful dairy products. In 2008, 1,150,000 tons of ACTIVIA products were sold throughout the world – the equivalent of 9 billion pots. ACTIVIA is available in more than 70 countries, including the Netherlands where Respondent is located.
Complainant has submitted evidence to show that it is the holder of numerous registered trademarks for the DANONE (dating from 1953) and ACTIVIA (dating from 1999) marks in countries throughout the world. Additionally, Complainant and its subsidiaries are also the owners of the following domain names: ; ; ; ; ; ; and .
The Domain Name was created on November 1, 2008. As of the date of this decision, the Domain Name resolves to a landing page with links to various yogurt and probiotic products. 5. Parties' Contentions A. Complainant
(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Complainant states that the predominant part of the Domain Name corresponds to Complainant's ACTIVIA and DANONE trademarks. Complainant often represents both trademarks together in newspapers, magazines, on the Internet, and in TV commercials. The international trademark No. 812046 represents both marks together. As a consequence, the public and more particularly Internet users are very likely to believe that it was registered by Complainant. The extension “.com” is not to be taken into consideration when examining the identity or confusing similarity between Complainant's trademark and the Domain Name. As a consequence, Respondent's Domain Name is highly similar to Complainant's ACTIVIA and DANONE marks.
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name:
Complainant contends that Respondent is not currently known, nor has been known, by the name “Activiadanone”. Respondent is not affiliated with Complainant, nor has Respondent been authorized by Complainant to register and use Complainant's ACTIVIA and DANONE trademarks or to seek registration of any domain name incorporating these marks. Furthermore, Respondent has so far not proved to be the holder of prior rights or to have any legitimate interest in the Domain Name. The marks ACTIVIA and DANONE are well-known and widely used by Complainant. Complainant's rights in these marks predate Respondent's registration of the Domain Name by a considerable length of time. The Domain Name is so identical to the well-known trademarks of Complainant that Respondent cannot reasonably pretend it was intending to develop a legitimate activity.
Moreover, to the best of Complainant's knowledge, Respondent has so far neither used nor made any demonstrable preparation to use the Domain Name or a name corresponding to the Domain Name in connection with bona fide offering of goods or services. The Domain Name links towards a website with the presence of what appears to be pay-per-click advertising links. Respondent's use of the Domain Name serves the purpose of generating revenue via advertised pay-per-click products and links. It has been held in previous UDRP decisions that such use does not represent a use in connection with a bona fide offering of goods and services. For all these reasons, Complainant contends that Respondent has no rights or legitimate interests with respect to the Domain Name.
(3) The domain name was registered and is being used in bad faith:
As mentioned above, Complainant and its trademarks DANONE and ACTIVIA are widely known throughout the world. Indeed, concerning the DANONE mark, UDRP panels have previously noted that it is a well-known trademark extensively used in worldwide trading activities. See Compagnie Gervais Danone v. Bethesda Properties LLC,WIPO Case No. D2007-1451; Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi,WIPO Case No. D2007-1918; Compagnie Gervais Danone v. Zhenglingyan, Lingyan Zheng,WIPO Case No. D2008-1955; Compagnie Gervais Danone v. Australian Internet Investments Pty Ltd., WIPO Case No. D2008-1418; Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media,WIPO Case No. D2007-1630. One panel has determined that the fame of the DANONE trademark is sufficient to prove bad faith registration and use of the disputed domain name in that case (Compagnie Gervais Danone v. Christopher Koda,WIPO Case No. D2008-1639). Moreover, concerning the ACTIVIA trademark, in Compagnie Gervais Danone contre Isaac Simon,WIPO Case No. DFR2007-0030, the panel highlighted the notoriety attached to this mark as well. In CompanieGervais Danone v. Laurie Cheoux,WIPO Case No. D2008-1678, the panel noted that the ACTIVIA trademark has been extensively advertised.
Complainant thus urges that it is obvious that Respondent knew or must have known of Complainant's trademarks at the time it registered the Domain Name. A respondent's knowledge of a complainant's trademark when registering a domain name containing the trademark constitutes bad faith registration.
Moreover, Respondent had no reason for combining both of Complainant's trademarks together in the Domain Name except to create an association with Complainant's marks in order to attract users to its website. By using the Domain Name, Respondent is taking advantage of Complainant's reputation. In addition, a trademark search at the date of registration of the Domain Name would have revealed Complainant's trademark registrations and this is further evidence of Respondent's registration in bad faith. Moreover, simple searches via Google or any other search engine using respectively the keyword DANONE and ACTIVIA show that all first results relate to Complainant's products or news. Even if Respondent had entered the keyword “Activiadanone” in the search engine, it would have been directed towards a website belonging to the Brazilian subsidiary of DANONE.
Therefore, in this day and age of the Internet, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of Domain Name. Last, but not least, previous panels have found that the use of a WhoIs privacy service is a factor indicating bad faith under the Policy. All above mentioned circumstances confirm that the Domain Name was registered in bad faith.
When Complainant first discovered the registration of the Domain Name, it directed toward a pay-per-click website containing various commercial links. When an Internet user enters “danone” or “activia” in the search engine of the website, they are directed towards a second parking page which contains the links “Eaux Danone”, “Activia de Danone”, “Yaourtiere à 247,99 euros”, “Danone”, “Smoothie, Frappé, Blender” which either reproduce Complainant's trademarks or refer to Complainant's trading activity. Complainant also noticed the link “Volvic”, which corresponds to a trademark VOLVIC belonging to a subsidiary of DANONE. Some of the links also direct to Complainant's websites, which proves that Respondent was aware of Complainant's trademark rights in DANONE and ACTIVIA and wanted to take advantage of these marks' fame.
Thus, Complainant argues that it is obvious that Respondent chose these links to divert Internet users to its website. Many users attempting to consult Complainant's website have certainly ended up at the website of Respondent. The latter is therefore profiting from the reputation and goodwill of Complainant. It may reasonably be concluded that Respondent was operating the click-through or pay-per-click device whereby the operators of other websites pay a commission to Respondent for traffic redirected to them.
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. Consequently, in view of the above, Complainant asserts that Respondent both registered and used the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the Domain Name in issue is identical or confusingly similar to Complainant's mark; and
(ii) 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent's rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. In this case, however, Respondent has not submitted a Response. A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that Complainant has fully met its burden. The Domain Name is confusingly similar to Complainant's well-known DANONE and ACTIVIA trademarks because it incorporates the entirety of these marks, while combining them together in the Domain Name. The combination of these terms together in the Domain Name only heightens the potential for confusion. As a result, the Panel finds that Respondent's Domain Name is confusingly similar to Complainant's ACTIVIA and DANONE marks, and therefore the condition of paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests
The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use the DANONE or ACTIVIA trademarks. See Telstra Corporation. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant's trademark).
As noted above, the DANONE and ACTIVIA marks are well-known and widely used by Complainant, whose rights in these marks predate Respondent's registration of the Domain Name. The Panel agrees that the Domain Name is so closely identical to the well-known trademarks of Complainant, that Respondent could not reasonably pretend it was intending to develop a legitimate activity. Instead, the Domain Name links to a website containing pay-per-click advertising links. This use of the Domain Name, taking advantage of the goodwill and reputation in Complainant's marks, does not represent a use in connection with a bona fide offering of goods and services. See Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589; Chanel Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; Nikon, Inc. and Nikon Corporation v. Technilab Inc., WIPO Case No. D2000-1774).
In the light of the above analysis, Complainant has established prima facie evidence that none of the circumstances establishing legitimate interests or rights applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts to Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683). Because Respondent failed to submit an answer to the Complaint, and given that the allegations of Complainant establish a prima facie case, the Panel accepts as true the allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As mentioned above and recognized by other UDRP panels, Complainant's DANONE and ACTIVIA trademarks have acquired worldwide reputation and are well-known, identifying fresh dairy products marketed by Complainant. The Panel thus agrees with Complainant that it is highly likely that Respondent registered the Domain Name in November 2008 with knowledge of Complainant's marks. Respondent appears to have intentionally registered the Domain Name, entirely incorporating Complainant's marks while combining them into a single Domain Name. There is no plausible reason for why Respondent would have otherwise registered the Domain Name. Moreover, when viewing Respondent's website, one can observe that it attracts Internet users by creating a likelihood of confusion with Complainant's marks. The Panel confirmed that the Domain Name resolves to a website containing pay-per-click advertising links.
This is evidence of Respondent's bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any Response from Respondent, there is no attempt at any rebuttal. In the case Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397, the panel found as follows: “In the present case, the Panel finds that, since Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant's trademark rights. The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith.” (Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397). The same analysis applies here. See also Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; The Body Shop International plc v. A-Team/ Lasse Nygaard,WIPO Case No. DAS2003-0001; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services,WIPO Case No. D2000-0177. 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 cancelled.
Christopher S. Gibson
Sole Panelist
Dated: September 6, 2009
Full & Egal Universal Law Academy