WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. ChenShaoPing Case No. D2010-0202 1. The Parties
The Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.
The Respondent is ChenShaoPing of Yiwu, the People's Republic of China, represented by himself. 2. The Domain Name and Registrar
The disputed domain name is registered with T, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 11, 2010, the Center transmitted by email to T, Inc. a request for registrar verification in connection with the disputed domain name. On February 25, 2010, T, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 25, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceeding. On February 26, 2010, the Complainant submitted its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Center verified that 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 March 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2010. The Response was filed with the Center on March 22, 2010.
The Center appointed Dr. Colin Yee Cheng Ong as the sole panelist in this matter on April 19, 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
4.1 The Complainant's main brand DANONE was said to have been founded in 1919 in Barcelona, Spain and this brand was launched for yoghurts. Danone then opened in France in 1932 and merged with Gervais in 1967. It finally merged again with BSN in 1973 to form France's largest food and beverage group with consolidated sales in 1973 of approximately 1.4 billion euros.
4.2 The DANONE trademark has been registered by the Complainant as a trademark in various forms in various countries. The Complainant has annexed to its Complaint a long list of the trademarks, which include the following (all of which appear to be simple word marks):
- International trademark DANONE N° 172526, filed on October 31, 1953 renewed and covering goods in classes 1, 5 and 29.
- International trademark DANONE N° 228184, filed on February 2, 1960 renewed and covering goods in classes 1, 5, 29, 30, 31, 32 and 33.
- International trademark DANONE + logo, N° 482337, filed on January 23, 1984 renewed and covering goods in classes 5, 29, 30 and 32.
- International trademark DANONE + logo, N° 639073, filed on January 6, 1995 renewed and covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42.
- International trademark DANONE N° 649535, filed on December 1, 1995 renewed and covering goods and services in classes 5, 29, 30, 31, 32 and 42.
- International trademark DANONE N° 667644, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N° 667645, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N° 667646, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N° 667837, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N° 668079, filed on February 3, 1997 renewed and covering goods in classes 5, 29, 30, and 32.
- International trademark DANONE N° 750755 registered on January 29, 2001 and covering services in class 38.
- International trademark DANONE N° 849889, filed on October 29, 2004 and covering goods in classes 5, 29, 30, 32, 35, 38 and 43.
The Complainant has also annexed to its Complaint a long list of the domain names among which included the following:
- registered on December 14, 1995;
- registered on December 21, 1995;
- registered on November 21, 2007;
- registered on November 29, 2007;
- registered on November 27, 2007;
- registered on May 4, 2004;
- registered on April 11, 2000;
- registered on April 24, 2008.
The Complainant's counsel has claimed that the Complainant is the global leader in dairy products, European leader in medical nutrition and number two in bottled water and baby food. The Complainant also contends that it is a worldwide company leading in fresh dairy products employing more than 89,499 people throughout the world and that its DANONE trademark is the world's top brand for fresh dairy products and represents almost 20% of the international market. Furthermore, the Complainant claimed that the trademark DANONE is present in 40 countries worldwide. 5. Parties' Contentions A. Complainant
5.1 The Complainant discovered that the disputed domain name was registered on December 4, 2008 by ChenShaoPing, an individual who is located in China. The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) The disputed domain name is highly similar to the Complainant's DANONE trademark with the mere adjunction of word “groupe”.
(ii) Further, the Complainant has argued that the mere adjunction of the word “groupe” is not sufficient to distinguish the disputed domain name from the Complainant's DANONE trademark. The Complainant had argued that the term “groupe” is a common French word and numerous WIPO UDRP decisions have precisely recognized that adding generic words is insufficient to give any distinctiveness to the domain name in dispute. Examples that were cited included Alstom v. FM Laughna,WIPO Case No. D2007-1736 and Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565. The Complainant further argued that the addition of “groupe” to “danone” could increase the likelihood of confusion between the disputed domain name and the Complainant's trademark DANONE. Further, the addition of generic elements like “groupe” is insufficient to create a distinguishable sign from the original such that the issue of likelihood of confusion may be avoided (Compagnie Gervais Danone v. Yao Renfa,WIPO Case No. D2008-0582).
5.2 The Complainant contends that the Respondent has no legitimate rights and interests in the disputed domain name for the following reasons:
(i) 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.
(ii) The Respondent is not currently known, nor has been known by the name Danone or Groupe Danone.
(iii) The terms “danone” or “groupe danone” have no special meaning in Chinese, which is the language of the Registrant, or in any other language. The Complainant argued that the fact that the Registrant registered “Groupe Danone” means that it is well-aware that the company is French and that this was its company name (otherwise, it would have registered “Danone Group”).
(iv) In the exchanges of emails between the Complainant and the Respondent, the latter never took the chance to explain why it chose to register a domain name bearing the name Danone and never gave proof of its legitimate rights or interests. The Complainant claimed that if the Respondent been truly interested in the domain name, it would have vigorously defended its rights in its answers.
5.3 The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
(i) The Complainant and its trademarks are widely known in the whole world. A finding of bad faith can be made where the Respondent “knew or should have known” of the Complainant's trademark rights, and nevertheless registered a domain name incorporating a mark, in which it had no rights or legitimate interests.
(ii) DANONE is a well-known trademark. It is obvious that the Respondent knew or must have known about the Complainant's trademarks 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 (ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362,).
(iii) The mere addition of the word “groupe”, being a generic term, linked with the Complainant's main activity indicates that the Respondent had the Complainant in mind while registering the disputed domain name.
(iv) The Complainant submitted that a simple search via Google or any other search engine using the keywords “danone” or “groupe danone” show that all first results relate to the Complainant's products or news.
(v) That the fact that a trademark search at the date of the registration of the domain name would have revealed the Complainant's trademark registrations in China can be considered another proof of the Respondent's registration in bad faith (ALSTOM V. STOCKMARKET DOMAINS,WIPO Case No. D2008-1542).
(vi) That the Respondent does not appear to be making a bona fide offering of goods or services from the website. The disputed domain name directs towards a parking page displaying information about the registrar.
(vii) According to paragraph 4(b)(ii) the disputed domain name was registered for “holding” purposes and has not been used for bona fide offering of goods and services. Furthermore, the disputed domain name is not used for personal interest or for the presentation of products or activity (OSRAM GmbH v. Yuri A Ivanov,WIPO Case No. D2009-0692).
(vii) The Complainant offered to pay the registration fees in order to recover ownership of the disputed domain name. However, the Respondent made it clear that the refund of the registration fees was an “inacceptable” offer. The Complainant states that this clearly constitutes out of pocket expenses and was a further proof of its bad faith (citing Martha Stewart Living Omnimedia. Inc. v. Josh Gorton,WIPO Case No. D2005-1109).
The Complainant requests a decision that the disputed domain name be transferred to the Complainant. B. Respondent
5.4 On March 22, 2010, the Respondent sent an email in reply in the Chinese language to the Center and copied to the Complainant's legal representative. The reply was rather simple and the Respondent first submitted that he seldom uses his email box and that his document layout knowledge is limited. The Respondent claimed that he did not know any other language other than Chinese and that he could only use Internet translation tools to get a general idea as to what was said in communications from the Complainant.
5.5. The Respondent claimed that he was not using the disputed domain name for commercial use and that he was willing to sell the domain name for a reasonable fee. The Respondent claimed that after Chinese New Year, on March 3, 2010, he found six emails in English with character and the emails were dated from February 2, 2010 to February 26, 2010. The Respondent claimed that there were four emails with (Notification of Complaint) on March 3, 2010, but he regretted that until now he still could not completely understand the content of the aforesaid emails (which the Panel notes were sent in both Chinese and English) and that he also could not open the appendices or attachments to the email.
5.6. The Respondent then submitted that in regards to the Complaint about the fact that the trademark was the same or similar, he could not agree to the Complaint. The Respondent submitted that he had followed domain related register procedures and that he specifically passed through international convention and decided to “first com, first register” principle.
5.7. The Respondent claimed that he had had “never used, naturally cannot affect and harm anyone (including the person who complained)”. The Respondent claimed that he did not have any “intention to use for business profit to mislead consumer or smear cause dispute trademark or service as mark intention.”. He also claimed that since he registered the domain name, he never offered to sell or to let or to transfer the domain name to any party and that he would always abide by the law.
5.8. Finally, the Respondent requested for an administration expert to “turn down the complain and defend me so I can have the lawful rights to own .” 6. Discussion and Findings Language
The Complaint was filed in the English language. On February 25, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed domain name is Chinese.
On February 26, 2010, the Complaint submitted a request that English should be the language of proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
Although the Chinese language is the language of the registration agreement for the domain name, the Complainant asserts that English should be the language of the proceeding.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, considering the composition of the domain name and the Panel's assessment of the circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11 (a) of the Rules, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panel's discretion, Chinese language documents submitted, have been reviewed by the Panel and added to the Respondent's case.
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.1 The Panel has reviewed the Complaint together with its annexes and Response, and in the light of this material, the Panel finds as set out below.
6.2 First, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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. A. Identical or Confusingly Similar
6.3 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.4 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.5 The Complainant has appended to the Complaint a long list of trademarks and domain names that incorporate the DANONE trademark. It is quite clear that the Complainant is the owner of a large number of trademarks and domain names in various jurisdictions that simply comprise the word “danone”. A number of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the disputed domain name is confusing similar to a number of trademarks in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the mere adjunction of word “groupe” is not a distinguishing feature and does not dispel a finding of confusing similarity.
6.6 In the circumstances, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 At the heart of the Complaint is the Complainant's contention that the Respondent has taken the name of the Complainant with a view to attracting Internet users to its website, where it has a passive use of the website. The Panel accepts that such activity does not provide the Respondent with a legitimate interest in the disputed domain name.
6.8 According to paragraph 4(b) (ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the prevailing consensus view among the panels that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
6.9 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001).
6.10 Further, as another panel had held in the case of Owens Corning v. NA,WIPO Case No. D2007-1143, if a respondent wants to argue that it has a legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).
6.11 In addition, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical the Complainant's mark.
6.12 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interest in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
6.13 The Panel accepts the Complainant's contention that the Respondent registered the disputed domain name in the knowledge of the Complainant's business and its use of the DANONE name. This is inherently probable given the undisputed fame of the Danone name worldwide and the composition and subsequent use of the disputed domain name
6.14 Given this finding, the Panel also infers and accepts the Complainant's undisputed contention that the Respondent registered the disputed domain name with a view to diverting Internet users with an interest in Danone food products to its website for its own commercial gain.
6.15 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant's mark as to the source of a website.
6.16 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add an additional point before drawing this decision to a close.
6.17 First, the use by the Respondent of the disputed domain name in connection with a domain parking service appears to provide yet further evidence of bad faith use in this case (see for example, Amanresorts Limited and Amanresorts International Pte Ltd v. Domain Admin c/o Dynadot Privacy, WIPO Case No. D2008-1973). 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 disputed domain name be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: May 14, 2010
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