WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone and The Dannon Company, Inc. v. PRIVATE WHOIS Case No. D2009-1233 1. The Parties
Complainants are Compagnie Gervais Danone and The Dannon Company, Inc. of Paris, France and New York, United States of America, represented by Dreyfus & associés, France.
Respondent is PRIVATE WHOIS of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2009. On September 17, 2009, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. The Registrar, Bargin Register Inc. did not provide its registrar verification reply to the Center as requested but instead in its email communication of October 2, 2009 and a subsequent email communication of October 7, 2009 indicated that the disputed domain name was transferred to Complainants' account prior to the filing of this dispute. The Center sent an email communication to Complainants on October 2, 2009 inviting Complainants to provide a brief written statement indicating whether they wished to continue with the proceedings, including to the appointment of a panel to decide the merits of the case, along with a brief explanation as to why, and also to indicate who Complainants believed should be regarded as the appropriate respondent both for the purpose of Notification of Complaint and substantive determination of the merits by any subsequently appointed panel. Complainants filed their submissions and /or amendment to the Complaint indicating inter alia, that they wished to continue with the Complaint, on October 6, 2009. The Center verified that the Complaint together with the submission and/or 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 proceedings commenced on October 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 2, 2009.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on November 10, 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
Complainants Compagnie Gervais Danone and The Dannon Company Inc. (Complainants) are subsidiaries of the French company Danone. The mark DANNON has been in use since 1942 in the United States. Complainants own numerous registrations worldwide for DANONE and DANNON including:
DANONE (International Trademark) Reg. No. 750,755 registered January 29, 2001;
(International Trademark) Reg. No. 849,889 registered October 29, 2004;
DANONE (United Kingdom) Reg. No. 699,705 registered July 11, 1951;
DANNON (United States) Reg. No. 1265165 registered January 24, 1984; and
(United States) Reg. No. 3,412,771 registered April 15, 2008.
As of 2008, Complainants were the world's second largest producer of packaged water and its water sales amounted to Eur2.9 billion.
Complainants are the owners of the following domain names: , , and
Complainants sent a cease-and desist letter by e-mail to Respondent on June 30, 2009 asking that the disputed domain name be transferred. 5. Parties' Contentions A. Complainants
Complainants contend that the domain name is confusingly similar to its famous DANNON and DANONE marks; that Respondent lacks any rights or legitimate interests in the domain name, and that the domain name was registered and used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. However, the domain name appears to have been “pushed” on to an account of which Complainant's counsel has control. 6. Discussion and Findings
a)Respondent has defaulted in this proceeding. Paragraph 14 of the Rules provides in the event of default that the Panel “[may] draw such inferences therefrom as it considers appropriate.” Paragraph 15(a) of the Rules instructs the Panel that “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 or principles of law that it deems applicable.” Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Time Equipment Corp. v. Stage PresenceWIPO Case No. D2003-0850 (December 23, 2003); Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog,WIPO Case No. D2003-0829 (February 26, 2003); Mondich v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004 (February 16, 2000). This case is unusual compared to other UDRP proceedings in that the domain name appears to have been “pushed” into an account controlled by Complainants without Complainants' consent. As a result, the Panel has considered whether it may be unnecessary to continue these proceedings. Rule 17 states: “If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.” At the request of the Panel, Complainants have addressed this point in a supplemental submission, providing points and authorities showing justifiable grounds for issuing a decision. A. Identical or Confusingly Similar
The record shows that the disputed domain name is confusingly similar to a mark owned by Complainants. The addition of the generic word “waters” is in sufficient to avoid confusion, as it is an apt descriptive term for some of the products sold by Complainants. Therefore the Panel finds that the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainants have made a prima facie showing that Respondent lacks any rights or legitimate interests in the domain name. Respondent has not rebutted this showing and has confirmed this conclusion by its actions in transferring the domain name to an account controlled by Complainants. The Panel finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
It also appears that the domain name was registered and used in bad faith. Complainants' mark DANNON is well-known and distinctive. There is no support in the record for any good faith basis for registering and using the domain name. Rather, the only conceivable basis for Respondent's action is a deliberate attempt to obtain commercial gain through pay-per-click advertising links based on the confusion with Complainants' mark. The Panel finds that the third element of paragraph 4(a) of the Policy is satisfied. 7. Decision
For these 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 the Complainant.
Mark Partridge
Sole Panelist
Dated: December 22, 2009
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