WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyP Case No. D2009-1659 1. The Parties
The Complainants are Compagnie Gervais Danone of Paris, France and Bonafont S.A de C.V of Mexico City, Mexico, represented by Dreyfus & Associés, France.
The Respondent is PrivacyP of Moergestel, Netherlands. 2. The Domain Name and Registrar
The disputed 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 December 3, 2009. On December 7, 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 disputed domain name. On December 9, 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 disputed domain name, which appeared to match those of one of the Complainants. The Center sent an email communication to the Complainants on December 10, 2009 and provided them with the registrant name and contact information that was disclosed by the Registrar, and asked the Complainants to confirm whether they had obtained actual control over the disputed domain name. The Center further invited the Complainants to submit any comments regarding proper identity of the Respondent in this case and the possible continuation of the proceedings. The Complainants filed an additional submission on December 15, 2009 indicating that they were not in control of the disputed domain name and requested that the proceedings be continued. The Center verified that the Complaint together with the additional submission 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 December 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2010.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 13, 2010. 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
The Complainant Compagnie Gervais Danone is a French Corporation, and the Complainant Bonafont S.A de C.V (“Bonafont”) is an affiliated Mexican company, which is also part of the Danone Group.
Danone began its business in 1919 in Barcelona, Spain, making and selling yoghurt under the trademark DANONE. Danone merged with Gervais in 1967, to become Compagnie Gervais Danone. By 1973, Gervais Danone merged with BSN to form BSN-Gervais Danone, France's largest food and beverage group with consolidated sales in 1973 of approximately 1.4 billion Euros. The Complainant, Compagnie Gervais Danone, is a leading producer of fresh dairy products, bottled water, baby food and medical nutrition, and employs nearly 90,000 people in five continents.
The Complainant Bonafont was founded in 1992 to develop the bottled water market in Mexico. The Complainant's BONAFONT branded bottled water is currently Mexico's number 1 bottled water brand.
The Respondent registered the domain name on October 30, 2008, which currently reverts to a website containing links to other websites, some of which lead to pornographic sites. 5. Parties' Contentions A. Complainants (a) Identical or Confusingly Similar
The Complainants contend that the domain name is confusingly similar to the Complainants' trademark BONAFONT.
The Complainants own several trademark registrations for BONAFONT, namely Mexican Registration Nos. 420754 (August 28, 1992), 439313 (August 10, 1993), 942260 (June 30, 2006); International Trademark Registration No. 969857 (June 25, 2008); U.S. Registration No. 3,520,690 (October 21, 2008); Brazilian Registration No. 829547509 (February 19, 2008) and CTM Registration No. 006844575 (April 18, 2008).
The Complainants contend that the domain name is essentially identical to the Complainants' trademark BONAFONT, except for the addition of the letters “www” before the mark BONAFONT and the “.com” designation. The Complainants submit that the “.com” designation should not be taken into consideration when examining the identity or similarity of trademarks and domain names. Furthermore, the addition of the letters “www” directly before the trademark BONAFONT is considered to be “dotsquatting”. The Complainants contend that previous panels have decided that the addition of the letters “www” do not have any material effect on a finding of similarity or identity. Accordingly, the Complainants contend that the domain name is confusingly similar to the Complainants' trademark. (b) Rights or Legitimate Interests
The Complainants contend that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Respondent is not commonly known by the domain name, and has not been licensed or otherwise permitted to use the trademark as a domain name or otherwise. The Complainants also contend that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services. The Complainants submit that the Respondent is using the disputed domain name in connection with the operation of website that offers links to other websites, some of which are pornographic sites. (c) Registered and Used in Bad Faith
The Complainants contend that the domain name was registered and is being used in bad faith based on the following factors: (i) Respondent was aware of the Complainants' rights in the BONAFONT trademark at the time the Respondent registered a confusingly similar domain name; (ii) the trademark BONAFONT has no meaning in the Spanish or Portuguese language, and is in fact a coined word; (iii) the Respondent intentionally registered a domain name that included the letters “www” without a dot before the trademark, as a deliberate attempt to divert Internet traffic intended for the Complainants to the Respondent's website; and (iv) the Respondent registered and is using a confusingly similar domain name in connection with the operation of a website which provides links to other websites, some of which are pornographic sites. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainants have established their trademark rights in BONAFONT as evidenced by the trademark registrations submitted with the Complaint, namely Mexican Registration Nos. 420754, 439313 and 942260; International Trademark Registration No. 969857; U.S. Registration No. 3,520,690; Brazilian Registration No. 829547509 and CTM Registration No. 006844575.
The Panel is also prepared to find that the domain name is confusingly similar to the Complainants' trademark BONAFONT. The addition of the letters “www” before the word BONAFONT, without the period, does not serve to distinguish the domain name from the Complainants' trademark. Omitting the period in between the letters “www” and a domain name is a common typing error, and accordingly the addition of these letters as a prefix does not serve to reduce confusion between a trademark and a domain name. Furthermore, the addition of the “.com” designation also does not serve to distinguish the domain name from the Complainants' trademark.
Therefore, the Panel finds that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the disputed domain name.
The Respondent was not known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods and services.
The Panel also accepts that the Complainants never authorized, licensed or permitted the Respondent to use the BONAFONT trademark.
In light of the Respondent's failure to file any response on this point, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainants have operated a substantial and successful business in Mexico, bottling water under the trademark BONAFONT since 1992. The Complainants' BONAFONT products are the top selling brand in Mexico for bottled water. The word BONAFONT has no meaning in the Spanish or Portuguese language, and is in fact a coined word. Accordingly, the Panel is prepared to find that the Respondent must have known of the Complainants' trademark when it registered the disputed domain name and did so with the intention to trade on the reputation of the Complainants.
The Respondent has registered and is using the domain name in connection with a website which offers links to other websites, some of which are pornographic sites. The use of the prefix “www” added to the trademark itself is a strong indiciation of bad faith, showing that the Respondent intended to take advantage of a common typing error on the part of Internet users. The Respondent is clearly attempting to divert Internet traffic intended for the Complainants' website by capitalizing on this typographical error, and by so doing, the Respondent is interfering with the legitimate commercial business of the Complainants.
For all of these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Therefore, the Complainants have satisfied the third requirement of paragraph 4(a) of the Policy. 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 the Complainants.
Christopher J. Pibus
Sole Panelist
Dated: January 22, 2010
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