WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone & The Dannon Company Inc. v. Ho Nim Case No. D2010-0469 1. The Parties
The Complainants are Compagnie Gervais Danone of Paris, France and The Dannon Company Inc. of New York, United States of America represented by Dreyfus & Associes, Paris, France.
The Respondent is Ho Nim of Pudong, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Above.Com Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2010. On March 26, 2010 the Center transmitted by email to Above.Com Pty Ltd a request for registrar verification in connection with the disputed domain name and on March 29, 2010 Above.Com Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details. 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 April 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2010.
The Center appointed Hariram Jayaram as the sole panelist in this matter on May 4, 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
Compagnie Gervais Danone is incorporated under French Law and The Dannon Company Inc. is incorporated under United States law and they are both subsidiaries of the French company Danone.
Compagnie Gervais Danone has registered the following international trade marks:
- International Trade Mark Registration No.228184 DANONE for goods and services falling under classes 1,5,29,30,31,32 and 33, registered on February 2, 1960;
- International Trade Mark Registration No.639073 DANONE for goods and services falling under 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 registered on January 6, 1995 designating inter alia China;
- International Trade Mark Registration No.849889 for goods and services falling under classes 5, 29, 30, 32, 35, 38 and 43 , registered on October 29, 2004 designating inter alia China;
The Dannon Company Inc. has registered the following trade marks in the United States:
- Trade Mark Registration No.1265165 DANNON for goods and services falling under class 29 registered on January 24, 1984;
- Trade Mark Registration No.3412771 for goods and services falling under classes 25, 29, 32 and 35 registered on April 15, 2008.
The Dannon Company Inc. has also registered numerous domain names consisting of the word “Dannon” as the second-level domain, among which are the following:
- registered on February 7, 1995
- registered on April 19, 2002
The Respondent is the registrant of the disputed domain name with effect from October 12, 2009. 5. Parties' Contentions A. Complainants
The Complainants' main brand for Danone originated around 1919 in Barcelona, Spain when it was launched for yogurts. At that time, Danone yogurt was the result of the collaboration between Isaac Carasso and Elie Metchikof, the director of Pasteur Institute. Danone quickly internationalized and started to commercialize its products in France. Around 1932, Danone opened its factory for fresh dairy products at Levallois-Perret, France. During the World War II, Daniel Carasso migrated to the United States. In 1942, he founded the first American yogurt company, Dannon Milk Products, Inc., in the Bronx, New York. He changed the name Danone to Dannon to make the brand sound more American. In 1947, a breakthrough came when Dannon introduced yogurt with strawberry fruit on the bottom. This innovation appealed to Americans who found the sweetness of the fruit to be the perfect complement for the tart taste of yogurt. The company grew rapidly and in 1950, it moved to a larger facility in Long Island while expanding its sales area to Philadelphia and Boston. Dannon then introduced a low fat yogurt designed to appeal to health enthusiasts and dieters. While Dannon was growing in the United States, Daniel Carasso was leading Danone to rapid development in Europe. To accelerate its diversification and world expansion, Danone merged with Gervais, the leading fresh cheese business in France in 1967 and with BSN, the leading glass container and beverages company in 1973. The resulting company, Bsn Gervais Danone, became one of the world's largest food manufacturers present in 30 countries worldwide. In 1994, Bsn Gervais Danone changed its name to Groupe Danone. The Complainants are now worldwide leading companies in fresh dairy products, bottled water, baby food and medical nutrition. They employ nearly 90,000 people in all five continents. The Complainants' trade marks DANONE and DANNON are also the world's top brands for fresh dairy products and represent 20% of the international market. The trade mark DANONE is present in 80 countries worldwide. The Complainants' trade marks DANONE and DANNON have been used on labeling, packaging and promotional literature for their products and have been prominently displayed in supermarkets and grocery stores in various regions around the world. Danone is the number 1 for baby nutrition and for bottled water in the area of Asia-Pacific and particularly in China. Asia represented half of the divisional sales in terms of value and 60% of the volume for bottled water sales which benefited from an excellent performance in China. The strong demand in Asia is linked to the Group's strategy of innovating in functional waters. The disputed domain name directs towards a parking website containing various commercial links.
The predominant part of the disputed domain name is “dannon” which also happens to be the Complainants' registered trade mark. The said part is also highly similar to the trade mark DANONE. The mere adjunction of the gTLD “.com” is irrelevant as it is well established that the generic top level domain name is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the Complainants' trade mark and the disputed domain name. In addition, the mere adjunction of the word “mania” is not sufficient to distinguish the disputed domain name from the Complainants' DANNON trade mark. Indeed, the term “mania” is a common English word and adding generic words is insufficient to give any distinctiveness to the domain name in dispute. Since “mania” means intense enthusiasm, interest, or desire, it is obviously intended to lead Internet users to believe that the disputed domain name is dedicated to consumers who like the DANONE trade mark and products. This increases the likelihood of confusion with the said well-known trade mark. As a consequence, the disputed domain name is highly similar to the Complainants' trade marks DANNON and DANONE. By registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainants' trade marks. It is very likely that the disputed domain name could mislead Internet users into thinking it is in some way associated with the Complainants.
The Respondent is not affiliated with the Complainants in any way nor have the Complainants authorized the Respondent to register and use the Complainants' DANNON and DANONE trade marks or to seek registration of any domain name incorporating the said marks. The Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent has never used the term DANNON in any way before or after the Complainants started their business. The registration of numerous DANNON and DANONE trade marks preceded the registration of the disputed domain name by many years. The Respondent is not currently nor previously known by the name DANNON. The Respondent cannot reasonably pretend that it was intending to develop a legitimate activity since the disputed domain name is so similar to the Complainants' well-known trade mark. The term DANNON has no special meaning in Chinese, which is the language of the Registrant, or in any other language. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name directs towards a search engine proposing sponsored links. This confirms that the Respondent has no legitimate interests in the disputed domain name and that it is trying to increase confusion with the Complainants' activities. The Complainants discovered that the disputed domain name was registered in October 2009 by a person named L. Lan of Shanghai. Before commencing these UDRP proceedings, the Complainants sent a cease-and-desist letter by mail and e-mail on December 8, 2009 to L. Lan based on their trade mark rights and asking the latter to amicably cancel the disputed domain name. Despite several reminders, L. Lan did not respond. In the beginning of February 2010, the Complainants noticed that the registrant's name changed on the Whois database. The disputed domain name now appears to be held in the name of Ho Nim also of Shanghai. Taking into account the time of the change of the registrant's name and the high similarity between the addresses, it is obvious that the registrant of the disputed domain name is still the same and it is simply registered under another identity. In view of the seriousness of the infringement of their trade marks, the Complainants are forced to start this present proceeding in order to obtain the cancellation of the disputed domain name. The registrant's name has changed after the cease-and-desist letter was sent but it has no influence on the rights or legitimate interests of the Respondent since neither of the two registrants (if there are two) have any right or legitimate interests in the disputed domain name.
With regard to registration in bad faith, it is obvious that the Respondent knew or must have known the Complainants' trade marks DANNON and DANONE at the time the Respondent registered the disputed domain name. The Complainants' trade marks are well-known throughout the world. The Respondent could not have ignored the Complainants' international reputation at the time of the registration of the disputed domain name. In light of the reputation of the DANNON and DANONE trade marks, the reproduction/imitation by the Respondent of these trade marks and the combination of these trade marks with a generic term, clearly indicates that the Respondent in all likelihood knew about the existence of the Complainants' trade marks. The Complainants believe that the website associated with the disputed domain name confirms that the Respondent knew or must have known the Complainants' trade marks and activities. For instance, the website directs towards several links in the field of food, which is the Complainant's field of activity. The Complainants are convinced that the disputed domain name is still registered by the first registrant since the addresses of the two pretended registrants are identical. It is unlikely that two different people living at the very same address registered the same domain name within the period of a few weeks. This change of name is only an attempt to mislead the Complainants' about the Respondent's real identity. L. Lan is actually not new to UDRP proceedings. He/she has been the respondent in other UDRP proceedings wherein the disputed domain names were transferred from him/her to the respective complainants. The disputed domain name directs towards a pay-per-click website containing various commercial links. The disputed domain name directs users to pages proposing commercial links related to DANNON and DANONE for such field of activities as yogurt, water, natural spring water and bottled water. It appears that the Respondent registered the disputed domain name in order to create traffic taking advantage of the notoriety of the Complainants' trade marks. It clearly indicates that the Respondent registered the disputed domain name in order to make a profit from the commercial links. It is evidence of use of the disputed domain name in bad faith since the Respondent uses the disputed domain name to operate the click-through or pay-per-click device for which the operators of other websites pay a commission to the Respondent for the traffic redirected to them. The disputed domain name is directed towards or it is likely to be directed towards pornographic links in the near future. The Respondent likely received some commercial advantage from offering the adult-oriented content. Internet users interested in the Complainants may become confused as to the Complainants' affiliation and sponsorship of the disputed domain name and the resolving website. The pornographic nature of the links tarnishes the DANNON and DANONE trade marks at issue. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred to
them:
- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint. A. Identical or Confusingly Similar
The Complainants are the owners of the trade marks DANONE and DANNON. The said trade marks are well-known by their extensive use for yogurt, water, natural spring water and bottled water. The First Complainant, Compagnie Gervais Danone has secured International Trade Mark registrations for DANONE. The Second Complainant, The Dannon Company Inc. has secured registrations in the United States for DANNON. Apart from the gTLD “.com”, the disputed domain name comprises the word “Dannon” combined with the word “mania”. The word “Dannon” is not only identical to the Second Complainant's registered trade mark DANNON but is also phonetically the same besides being confusingly similar to the First Complainant's registered trade mark DANONE. The addition of the generic term “mania” is not sufficient to distinguish the said disputed domain name from the Complainants' trade marks.
In Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395, the complainant's trade mark was NUTELLA and the disputed domain name was . The panel noted that it:
“… is aware of the fact that the term MANIA is frequently added to other terms to indicate a particular propensity towards the object identified by the term to which MANIA is added. Hence, under this connotation, the term MANIA is often used and considered as a synonym of positiveness and therefore of good quality of the object to which MANIA is associated. In the example made by the Complainant, COCACOLAMANIA expresses great enthusiasm for COCA-COLA and thus the high level of quality of this beverage. The same should apply for NUTELLAMANIA. In the light of the aforementioned considerations, the Panel believes that the addition of the term MANIA to NUTELLA is not sufficient to avoid a likelihood of confusion between the disputed domain name and Complainant's trademark NUTELLA.”
The Panel agrees with the observations made in the above decision and finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel takes note of the various allegations of the Complainants in their Complaint and in particular that there is no affiliation between the Complainants and the Respondent; no authorisation has been given by the Complainants to the Respondent to use or register the disputed domain name incorporating the Complainants' DANNON and DANONE trade marks; the Respondent has not been commonly known by the disputed domain name; the Respondent has no prior rights or legitimate interests in the disputed domain name; by choosing a domain name which is similar to the Complainants' trade marks and which resolves into a website offering sponsored links, the Respondent is diverting consumers to the said website for its own commercial gain; there is no bona fide offering of goods and services by the Respondent.
The allegations of the Complainants remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith, the Panel has reservations on the Complainants' allegation that the disputed domain name resolves or is likely to resolve to a website with sponsored links of a pornographic nature. The documents furnished to the Panel do not constitute clear evidence to this effect. However, the Panel notes with favour the allegation of the Complainants that the Respondent knew of the Complainants' trade marks because the disputed domain name resolved into a website which offered competing sponsored links for products such as yogurt, water, natural spring water and bottled water, i.e. products sold extensively by the Complainants under the trade marks DANONE and DANNON. Given the fact that the Complainants' trade marks are well-known, the adoption and registration of the Complainants' well-known trade marks as an essential part of the disputed domain name for its use for a website with links to websites related to the sale of the same products, cannot be said to be other than registration and use in bad faith.
In an earlier decision involving the same Complainants against another respondent, i.e. Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media, WIPO Case No. D2007-1630, the panel held that it
“… is satisfied that the Respondent registered the disputed domain name with the Complainant in mind. The disputed domain name includes the Complainant's distinctive mark [‘] DANNON ['] as well as the generic term [‘] yogurt ['] which obviously denotes … the products for which the Complainant is well-known. Furthermore the Respondent has used the disputed domain name for a website with affiliate links to dairy-related websites. The Respondent has not come forward to deny the Complainant's assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.”
The Panel agrees with the observations made in the above decision and finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name be cancelled, as prayed by the Complainants.
Hariram Jayaram
Sole Panelist
Dated: May 18, 2010
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