WIPO Domain Name Decision D2009-1361 for proactivia.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. Daniel Wang Case No. D2009-1361 1. The Parties

Complainant is Compagnie Gervais Danone, France, represented by Dreyfus & associés, France.

Respondent is Daniel Wang, Canada. 2. The Domain Name and Registrar

The disputed domain name, , is registered with R. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2009. On October 14, 2009, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On October 14, 2009, R transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 23, 2009. The Center verified that the Complaint together with the 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 the Respondent of the Complaint, and the proceedings commenced on October 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2009. The Response was filed with the Center on November 15, 2009.

The Center appointed Mark Partridge as the sole panelist in this matter on November 24, 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.

On November 20, 2009, Complainant filed a supplemental report in response to Respondent's Response. On December 1, 2009, Respondent filed a supplemental report in reply to Complainant's November 20, 2009 submission.

On December 10, 2009, the Panel issued the Panel Order No. 1 and the due date for the decision was extended to January 1, 2010. 4. Factual Background

Complainant's main brand, DANONE, originated around 1919 in Barcelona, Spain, when it was launched for yogurts.

Activia is one of Danone's dairy products. The probiotic culture in Activia is exclusive to Danone and consists of the Actiregularis strain, a friendly bacterium that remains active in the digestive system. Activia was launched in 1987 in France, in 2002 in Japan, in 2004 in Canada, and in 2005 in China.

In 2006, Activia became also the first probiotic brand of yogurts sold in the United States. In 2008, 1,150,000 tons of Activia products were sold throughout the world. Activia is presently available in more than 70 countries.

Activia was launched in Quebec, Canada in June 2004 and in the rest of Canada in January 2005. Market share by the end of 2005 was 5.2%. A 2007 Canadian Advertising Success Stories (CASSIES) study revealed that in June 2007, Activia increased its market share to 14.9 points and had an overall brand awareness of 58.2%.

Complainant is the holder of several International Registrations for ACTIVIA trademarks, including the following:

- ACTIVIA n° 725041 registered on October 13, 1999 and covering goods in classes 29, 30 and 32;

n° 752427 registered on November 28, 2000 and covering goods in classes 29, 30 and 32;

- ACTIVIA n° 759380 registered on May 18, 2001 and covering services in class 38;

n° 893078 registered on June 7, 2006 and covering goods in classes 29, 30 and 32; and

n° 893712 registered on May 18, 2006 and covering goods in classes 29, 30 and 32.

Complainant is also the holder of the following ACTIVIA Canadian trademark registrations:

- ACTIVIA No. TMA578578, registered on March 31, 2003;

No. TMA616573, registered on August 11, 2004; and

No. TMA704345, registered on January 10, 2008.

Additionally, Complainant and its Canadian affiliate are also the owner of the following domain names:

- registered on October 23, 2003;

- registered on April 14, 2003;

- registered on January 14, 2008 and owned by Danone Canada Inc., the Canadian subsidiary of Complainant; and

- registered on June 19, 2007.

Respondent registered the disputed domain name on March 19, 2009. Initially, the disputed domain name directed to a parking page displaying various commercial links, including links to Complainant's web site and the web sites of Complainant's competitors. Prior to Respondent's submission of his Response, the parking page was changed to read “Future Website of Nutriceuticals by Proactivia ‘Be Proactive with your Health.'” Respondent contends that he did not register the domain name to sell it to Complainant. Respondent also contends that the Registrar was responsible for the click-through advertisements on the parking page and that he did not receive any revenue generated from the parked page.

Complainant sent a cease-and-desist letter dated May 13, 2009 to Respondent based on its prior trademarks rights asking Respondent to transfer the disputed domain name to Complainant. On June 10, 2009 after Complainant's second reminder, Respondent responded to Complainant, stating that Complainant's products were not known to him, that he registered the disputed domain name and three other domain names for the purpose of commercializing products based on the artificial sweetener, Stevia, and that he was the co-founder of a Canadian company that contained the name “Proactive” in 1994. The three other domain names Respondent registered at the time he registered the disputed domain name are: , and . Complainant replied to Respondent, contending there was no obvious link between Stevia or Respondent's alleged company, including the term “proactive” and the registration of a domain name containing the trademark ACTIVIA. Further emails and reminders were sent to Respondent asking him to transfer the disputed domain name to Complainant, to which Respondent never replied. 5. Parties' Contentions A. Complainant

Complainant contends that:

1) The disputed domain name is identical or confusingly similar to Complainant's ACTIVIA trademarks because it incorporates in whole Complainant's ACTIVIA mark. The mere addition of the letter “pro” to the word “activia” is insufficient to avoid confusion with Complainant's trademark, “pro” refers to the probiotic nature of ACTIVIA, and the “pro” prefix should not to be taken into consideration when examining the identity or similarity between Complainant's trademarks and the disputed domain name; and

2) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no affiliation with Complainant and is not authorized by Complainant to register its trademarks or any domain names incorporating the trademarks. Further, Respondent has not produced sufficient evidence of future anticipated use of the disputed domain name; and

3) The disputed domain name was registered and is being used in bad faith. Respondent should have known of Complainant's trademarks and rights to ACTIVIA, and the disputed domain name directs towards a pay-per-click website containing various commercial links. B. Respondent

Respondent contends that:

1) The disputed domain name is not confusingly similar to Complainant's ACTIVIA trademarks;

2) Respondent has a legitimate interest in the disputed domain name based on his submitted evidence of future anticipated use of the disputed domain name; and

3) The disputed domain name was not registered and is not being used in bad faith because of Respondent's anticipated and demonstrated use of the disputed domain name, the fact that the pay-per-click parking page was implemented by the Registrar, and the fact that Respondent never received revenue from the parking page. 6. Discussion and Findings

Both Complainant and Respondent made additional filings that were not requested under paragraph 12 of the Rules. These filings repeated the submissions already put forward by the parties and addressed issues irrelevant to this proceeding.

Additional submissions were requested by the Panel and have been received, directed at Respondent's claim of legitimate interest in the disputed domain name.

The issue to be decided in the light of the competing submissions of the parties is whether the Panel should require that the disputed domain name be cancelled or transferred. The Policy provides that such a remedy may be ordered if the Panel finds (1) that the disputed domain name is identical or confusingly similar to the trademark; (2) that Respondent has no rights or legitimate interests in the domain name; and (3) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy expressly provides that Complainant must prove all three elements. Thus, if Complainant fails to prove any one of the three elements, it fails in its application under the Policy.

Further, paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and paragraph 4 of the Policy provides that “…the complainant bears the onus of proof.” As the proceeding is a civil one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to cancel or transfer the domain name. A. Identical or Confusingly Similar

To satisfy Policy paragraph 4(a)(i), Complainant must first establish rights in a mark. Complainant owns trademark registrations, including international trademark registrations, in the trademark ACTIVIA.

Here, the disputed domain name is not identical to Complainant's mark, but is it confusingly similar? The Panel notes that the gTLD “.com” is irrelevant to this analysis since all domain names require top-level domains. See Gerling Beteiligungs – GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223; DZ Bank AG v. Bentz,WIPO Case No. D2006-0414).

The additional of other words to another's mark will normally be insufficient to avoid a finding of confusing similarity if the added matter is an apt term relating to the complainant's mark or business. Complainant argues here that the addition of the word “pro” to its mark is apt since ACTIVIA is a probiotic culture. Respondent argues that the name is derived from “proactive” and “stevia”, and has nothing to do with the trademark ACTIVIA.

In comparing terms, it is appropriate to give most weight to the most salient or distinctive portion of the terms. Here, the most salient portion of each term at issue is “activia”. However, the Panel recognizes that the addition of “pro” in the disputed domain name may call to mind the word “proactive” and may thus create an impression for some that is distinguishable from Complainant's ACTIVIA mark. Whether the disputed domain name is confusingly similar to Complainant's mark, therefore, is a close question. The Panel is swayed by fact that Complainant's mark is a coined, distinctive term, and that Respondent has incorporated that mark in full in his domain name and is confusingly similar.

The Panel therefore concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

The second element that Complainant must make out is that Respondent has no rights or legitimate interests in the disputed domain name. In its analysis of paragraph 4(a)(ii) of the Policy, Complainant in its Complaint begins by asserting that Respondent has no rights or legitimate interests in the disputed domain name. The Policy, and specifically paragraph 4(a)(ii), requires that Complainant establish a prima facie case supporting this assertion. Based upon the allegations in the Complaint, the Panel concludes that Complainant has established a prima facie case.

Therefore, the burden shifts to Respondent to prove that he has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, NAF Case No. FA 741828 (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); See also AOL LLC v. Jordan Gerberg, NAF Case No. FA 780200 (“Complainant must make a prima facia (sic) showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).

The Policy provides that if Respondent satisfies any one of three given criteria, he will have shown that he has rights or legitimate interests in the disputed domain name. The three criteria or circumstances are as follows:

(i) before any notice to Respondent of the dispute, his use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant's trademark.

The preceding circumstances are not exclusive. Thus, Respondent may rely on other circumstances in addition to the three specified ones to prove that he has rights or legitimate interests in the disputed domain name.

Respondent concedes that he is not affiliated with Complainant in any way, nor has Respondent been authorized by Complainant to register and use Complainant's ACTIVIA trademarks or to seek registration of any domain name incorporating said marks Nonetheless, Respondent contends that at the time he registered the disputed domain name, he intended to use “Proactivia” as the name of a line of nutriceutical products based on natural ingredients, including the artificial sweetener, “Stevia”.

In support of his bona fide intentions to use the disputed domain name, Respondent submitted the following evidence:

- Respondent's representation that he cofounded a company called “Proactive” in 1994 and the submission of what appear to be business stationary, a business card, folder, letterhead (with the date “March 18, 1995”), and voided check, all displaying use of the “Proactive” business name. (Annexes 13-16 to the Response).

- Respondent's representation that he attended the Stevia Conference in Paraguay during the period of March 12-13, 2009 to explore the opportunity to use Stevia in natural medicines. At the conference, Respondent learned of Stevia's initiative called Truvia, which reportedly is a joint venture between Cargill and the Coca-Cola Company. In supplemental submissions, Respondent has provided a copy of his name tag for attendance at the conference and correspondence with the office of Flora Wang, the Director of Taiwan Trade Center in Paraguay regarding the conference and opportunities relating to “stevia”.

- Respondent's representation that while in Asunsión, Paraguay for business during the period of March 7-17, 2009, he came across the company, Proactiva Training & Consulting (Annex 17 to the Response), which gave him the idea to combine the word “proactive” and “Stevia.”

- Respondent's representation that when considering the Proactivia name, he searched the web sites of the United States Patent and Trademark Office and the Canadian Intellectual Property Office's and found no other PROACTIVIA marks. In support, Respondent submitted print-outs for the searches conducted on those web sites dated November 12, 2009. (Annexes 18-19 to the Response).

- Evidence that Respondent registered the domain name at the same time he registered the disputed domain name on March 19, 2009. (Annex 23 to the Response). Further evidence that Respondent also registered the domain names and nine days later on March 28, 2009. (Annex 24 to the Response). Respondent states that the registrations were all intended to further the proposed Proactive business venture. These additional domain names do not appear to be part of a scheme to trade on Complainant's mark.

- Respondent has also provided labels for the bottles for four products to be launched in Canada (Annex 21 to the Response), although he acknowledges that these labels were created after he received an objection from Complainant. (Also of note, the labels state “by Healynx.” The WhoIs report for indicates that Respondent it the owner of the domain name, which he registered on August 11, 2009).

The Panel finds that Respondent has presented evidence showing demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Namely, Respondent has provided evidence demonstrating how he came up with the “Proactivia” name, as well as competent evidence showing his preparations to use the disputed name in connection with his line of natural medicines containing “Stevia”. Critical steps to implement this plan occurred prior to any objection from Complainant, while some occurred after. Respondent has shown a track record as an entrepreneur of legitimate businesses. His plans to start a natural line of medicinal products include attendance at a conference in Paraguay and the registration of several related domain names.

Although Complainant mounts a challenge to the sufficiency of Respondent's showing, and the Panel agrees that Respondent would have been well-served by being more forthcoming in his submissions, it nevertheless appears from the record more likely than not that Respondent had plans to use the disputed domain name for a bona fide offering of goods, and not as part of a plan to infringe Complainant's rights. In the Panel's assessment in view of the provided evidence, the most plausible explanation for Respondent's registration of the disputed domain name a few days following the conference in Paraguay, combined with the registration of other domain names relating to “stevia”, is Respondent's plan to use the domain names for a bona fide purpose.

There is no indication of record that Respondent is a speculator in domain names. Respondent's reported plan to develop a “proactivia” line of natural medicines also explains his passive holding of the disputed domain name since March 2009. See Meredith Corp. v. CityHome, Inc.,WIPO Case No. D2000-0223 and Photodex Corporation. v. C and Michael Bannen,WIPO Case No. D2001-0952 (Panels accepting business development periods of eight months and two and a half years respectively as consistent in the circumstances with preparation for use of a domain name and legitimate interests).

Complainant argues that Respondent has not made a sufficient showing of a demonstrable plan because he has presented no evidence of a business plan, proposed technology, financing, timetable or the like, relying on DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939. In that case, however, the domain name was identical to the Complainant's mark, and the Respondent offered nothing in support of his plan but an “inchoate idea.” Here, Respondent apparently travelled from Canada to Paraguay to pursue a new business venture, engaged in correspondence with the Taiwan trade office in Paraguay, selected a different (but similar) name, and prepared labels (albeit after an objection was made), in furtherance of his plan.

It is a close question here whether Respondent has shown a sufficient demonstrable plan, which proves a legitimate interest, or merely an inchoate idea, which does not, but the Panel is persuaded by the specific circumstances-including the details of the Respondent's entrepreneurial interests, his involvement with the Paraguay conference, his business communications, the selection of several names relating to “stevia”, the differences in the names at issue, and the plausibility of selecting the disputed domain name based on similarity to the word “proactive”-that Respondent has made a sufficient showing of his legitimate interest in the domain name prior to objection from Complainant. It may be that a court, with opportunity to cross examine evidence, could reach a different conclusion. But the present dispute does not strike this Panel as a typical or clear case of cybersquatting of the sort the Policy is best equipped to address.

Based on the record, the Panel finds that Complainant has not demonstrated that Respondent has no rights or legitimate interests in the disputed domain name, and in particular the Panel accepts that the Respondent has prepared to use the disputed domain name in connection with a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy. As Complainant has failed to prove the second element of the Policy. C. Registered and Used in Bad Faith

The record indicates that Respondent registered the disputed domain name as part of a plan to make bona fide use of the PROACTIVIA name in connection with natural medicines, and not for a bad faith purpose of trading on or trafficking in Complainant's mark ACTIVIA. The use of the name for pay-per-click advertising by the registrar is generally considered evidence of bad faith use if the disputed domain name is a deliberate infringement of the complainant's mark and the respondent has no legitimate right or interest in the name. That, however, does not appear to be the case here. As a result, the Panel finds that Complainant has failed to prove that Respondent registered and used the disputed domain name in bad faith. 7. Decision

For all the foregoing reasons, the Complaint is denied.

Complainant has not satisfied the Panel that Respondent had no rights or legitimate interest in the disputed domain name, nor that the disputed domain name was registered in bad faith. Consequently, Respondent shall not be required to transfer the disputed domain name, , to Complainant. Although the record in this case does not establish a violation of the Policy, nothing in this decision is meant to preclude an action for trademark infringement should the facts and law warrant such a claim in a judicial forum.

Mark Partridge
Sole Panelist

Dated: January 4, 2010

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