WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Gervais Danone v. Amit Kumar Case No. D2010-0563 1. The Parties
The Complainant is Compagnie Gervais Danone of Paris, France represented by Dreyfus & associés of France.
The Respondent is Amit Kumar of Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 14, 2010, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 14, 2010, GoD, Inc., transmitted by e-mail 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 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2010. The Response was filed with the Center on May 18, 2010.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 27, 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.
On May 25, 2010, Complainant submitted a supplemental filing responding to certain information set forth in the Response. 4. Factual Background
Complainant states that it is a subsidiary of the French company Danone and that it is “a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition.” Complainant further states that it employs “nearly 90,000 people in all five continents.” Complainant further states that “ACTIVIA is one of the most successful dairy products of Danone and that the brand “has established itself as the leader in the [a]ctive health yogurts market” – selling 1.15 million tons of Activia products worldwide in 2008.
Complainant states that it is the owner of “several” international trademark registrations for ACTIVIA, as well as at least four registrations in India, including the following: Nos. 882,535 and 882,536, registered on October 20, 1999. Copies of relevant trademark registration certificates were included as annexes to the Complaint. These trademarks are hereafter referred to as the “ACTIVIA Trademark.”
The Disputed Domain Name was created on September 16, 2009, and (as supported by an annex to the Complaint) is being used in connection with a website for “Activia India,” which is described on the website as a “Leading International Marketing Company.” The website contains a green background that is similar to a green background used on Complainant's website for its Activia products.
Complainant states that it attempted twice to contact Respondent about the Disputed Domain Name in writing (copies of which were included as annexes to the Complaint) but that Respondent never replied.
Respondent states1 that it “started its operation much before 18/06/09, although it open [sic] its official E-mail account by name on the portal of Y on 18/06/09. The name was chosen bonafidely [sic] to match the similarity with its sister concerns ACTIVIA ENTERPRISE VENTURES INC., a Philippine based company as its branch extension in India.” 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the ACTIVIA Trademark because it contains the trademark in its entirety plus a geographic name that “is not likely to add any distinctive value” and “[i]ndeed, internet users will believe that it is Complainant website dedicate to India, which certainly create confusion between Respondent and Complainant.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent is not affiliated with Complainant in any way”; an investigation conducted for Complainant (the report of which was provided as an annex to the Complaint) revealed that “there is no company corresponding to the denomination Activia India exists”; and web pages on Respondent's website using the Disputed Domain Name contain information about cereal products – not marketing services, as the home page indicates, which “leads to doubt the actual existence of the company Activia India.”
- The Disputed Domain Name was registered and is being used in bad faith because the ACTIVIA Trademark is “well-known” and Respondent's use of a green background and inclusion of cereal products on its website using the Disputed Domain Name “only aims to deceive Indian Internet users who seek information on the product ACTIVIA marketed by Complainant in border countries” and “confuses Internet users on the nature of the services offered and the identity of their provider.” B. Respondent
Respondent contends, in relevant part, as follows:
- The Disputed Domain Name is not confusingly similar to the ACTIVIA Trademark because “the domain name of respondent is is combination of two words Activia and India while trademark of complainant is only activia” and “[t]he visual representation of respondent's logo and trademark of the complainant give a complete different look and can be easily discriminated by an ordinary prudent man without putting any stressing on his mental faculty.”
- Respondent has rights or legitimate interests in respect of the Disputed Domain Name because “the respondent prior to adopting the name domain name bonafidely [sic] do the search for the availability for the name” and discovered that “there is no company in India registered with any registered company having name of Activia or ,” “the trademark of complainant cannot be said to be well-known trade mark in India which is the workstation of the respondent” and the Registrar “shows the availability of this name for registration of the domain name.”
- The Disputed Domain Name was not registered and is not being used in bad faith because “respondent has not registered this domain name with any intention to sell or transfer the said domain name for monetary or any other material consideration”; “the respondent has been using this domain name after bonafiedly [sic] searching the availability of this name as domain name and also the availability of this name as the name of a company”; and “the respondent has been using this name under the bonafide [sic] belief that it will cause no loss and injury to anyone.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the ACTIVIA Trademark, and Respondent does not dispute the validity of the ACTIVIA Trademark. Further, previous panels under the Policy have found the same. See, e.g., Companie Gervais Danone v. WhoisGuard / WhoisGuard Protected and S / Mohd Suhaimy Abu Bakar,WIPO Case No. D2009-0354 (transfer of ); and Compagnie Gervais Danone v. Transure Enterprise Ltd / Privacy,WIPO Case No. D2009-1019 (transfer of ).
As to whether the Disputed Domain Name is identical or confusingly similar to the ACTIVIA Trade Mark, the relevant comparison to be made is with the second-level portion of each domain name only (i.e., “activiaindia”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The Panel agrees with Complainant's argument that “generic or descriptive terms ha[ve] no distinctive value when judging similarity between a domain name and a trademark.” This is especially true with respect to domain names that, as here, contain a complainant's trademark plus a geographic identifier. See, e.g., Six Continents Hotels, Inc., v. EnterSports Inc.,WIPO Case No. D2008-1951 (a geographic name “serve[s] to add to such confusion rather than distinguish the mark and the domain name”).
Accordingly, the Disputed Domain Name is confusingly similar to Complainant's ACTIVIA Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant alleges, inter alia, that Respondent is not affiliated with Complainant in any way”; an investigation conducted for Complainant (the report of which was provided as an annex to the Complaint) revealed that “there is no company corresponding to the denomination Activia India exists”; and web pages on Respondent's website using the Disputed Domain Name contain information about cereal products – not marketing services, as the home page indicates, which “leads to doubt the actual existence of the company Activia India.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Specifically, the Policy provides that a respondent can demonstrate rights or legitimate interests by showing, among other things:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
Here, however, Respondent's arguments do not satisfy any of the illustrations set forth in the Policy, and the Panel finds nothing in the record to indicate that the Respondent has acquired any rights or legitimate interests in respect of the Disputed Domain Name other than by its recent registration of same, which does not in and of itself create any rights or legitimate interests under the Policy.
Accordingly, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears to allege that bad faith exists pursuant to paragraph 4(b)(iv) given that the Disputed Domain Name is used in connection with a website that contains information about cereal products – products that are closely related to those offered by Complainant under the ACTIVIA Trademark. See, e.g., Arla Foods amba v. Jucco Holdings,WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith”).
Therefore, the Panel is convinced that Complainant has proven the third element 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 transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: June 10, 2010
1 Although the Response was filed after the deadline, Respondent informed the Center that “the concerned official of the respondent was on visit to remote area in India where the accessibility of inter net [sic] was not possible hence mail forwarded in this regard were not in the knowledge of the respondent officials.” Accordingly, and given that the delay was not significant and that the Response was filed prior to the appointment of the Panel, the Panel accepts the Response. However, the Panel declines to accept Complainant's supplemental filing given that the filing does not “show its relevance to the case and why it was unable to provide that information in the complaint.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2. The Panel's powers hereunder are exercised pursuant to paragraph 10 of the Rules.
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