The Complainants are Compagnie Gervais Danone of Paris, France, and The Dannon Company Inc. of White Plains, New York, United States of America, represented by Cabinet Dreyfus & Associés, Paris, France.
The Respondent is Lianhua Tang of Longhuzhen, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Ignitela, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2015. On January 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 6, 2015, the Registrar 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 January 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on February 27, 2015. 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 first Complainant is a company incorporated under French law. Its main brand “DANONE” was launched for yogurt products in Barcelona, Spain around 1919. The second Complainant is incorporated in Delaware in the United States of America. Since about 1942 the second Complainant have supplied dairy products in the United States under the name “DANNON”. Both Complainants are subsidiaries of the French subsidiaries of the French group “Danone”.
Today the group Danone makes up 26 percent of the world market in fresh dairy products and is present in 140 countries and has chosen to focus its business development on six priority countries, including in particular China where it has invested since 1987 and has a workforce of 10,000.
The first Complainant is, inter alia, the owner of the following trademark (hereafter the “DANONE mark”):
- Chinese Trademark DANONE (word mark) No. 216985 of March 22, 1984 covering goods in class 29 for milk, dairy products and substitutes thereof.
The second Complainant is, inter alia, the owner of the following trademark (hereafter the “DANNON mark”):
- United States trademark DANNON (word mark) No. 3142249, filed on November 3, 2005 and registered on September 12, 2006, covering goods in classes 29 and 32, for, inter alia, yogurt and yogurt-based beverages and fruit-based beverages with yogurt.
The Respondent registered the disputed domain name on March 18, 2014, which resolves to a website in Chinese. 5. Parties’ Contentions A. Complainant
The disputed domain name reproduces entirely the DANNON mark, and is similar to the DANONE mark, with the association of the generic term “yogurt”, which term is generic and adding it to the Complainants well-known trademarks does not prevent the risk of confusion between the Complainants trademarks and the disputed domain name. On the contrary, the addition of the generic term “yogurt” may lead Internet users to believe that the disputed domain name will direct them to a website proposing the dairy products of the Complainants. This type of combination leads the public to believe that the disputed domain name is somehow connected to the owners of the registered trademarks. Accordingly, the disputed domain name is confusingly similar to the DANNON and DANONE marks in which the Complainants have rights.
The Respondent is neither commonly known by the name “dannon” or “danone”, nor in any way affiliated with the Complainants, nor authorized or licensed to use the DANNON and DANONE marks, or to seek registration of any domain name incorporating said marks. Further, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of the DANNON and DANONE marks preceded the registration of the disputed domain name for years. Moreover, since the disputed domain name in dispute entirely incorporates the DANNON mark and is confusingly similar with the DANONE mark, the Respondent cannot reasonably pretend he was intending to develop a legitimate activity through the disputed domain name. And the Respondent did not demonstrate use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name resolves to a Chinese website which relates to the sale of toys. Therefore it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of disputed domain name. For these reasons the Complainants alleged that it undoubtedly established that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The DANNON and DANONE marks being well-known trademarks throughout the world, it is impossible that the Respondent was unaware of the Complainants and did not have the DANNON and DANONE marks in mind when he registered the disputed domain name. In addition, the fact that the Respondent linked the DANNON mark to the generic term “yogurt” demonstrates that the Respondent had knowledge of Complainants’ rights in the DANNON and DANONE marks and of Complainants’ field of activity when he registered the disputed domain name. A quick DANNON or DANONE trademarks search would have revealed to the Respondent the existence of the Complainants and their trademarks. The Respondent’s failure to do so is a contributory factor to its bad faith. Moreover, supposing that the Respondent was not aware of the possibility of searching trademarks online before registering the disputed domain name, a simple search via a search engine using the keyword “dannon” or “danone” shows that all of the first results relate to the Complainants’ products or news. Consequently, in view of the abovementioned circumstances, the Complainants claim that it established that the Respondent registered the disputed domain name in bad faith.
In absence of any license or permission from the Complainants to use their widely known trademark in the disputed domain name, no actual or contemplated bona fide or legitimate use of the disputed domain name can reasonably be claimed. Moreover, it is likely that the Respondent registered the disputed domain name to prevent the Complainants from reflecting its trademarks in the disputed domain name. According to the Complainants there is no doubt that many Internet users attempting to visit the Complainants’ website have ended up on the web pages set up by the Respondent. As the disputed domain name is confusingly similar to the Complainants trademarks, a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainants’ site to the Respondent’s site. The disputed domain name resolves to a Chinese website that relates to the sale of toys. The Complainants noticed that the litigious website comprises of elements of other websites which are also owned by the Respondent. Therefore, the Complainants claim that it appears that the Respondent’s intention is to free ride on the reputation of the DANNON and DANONE marks and attract Internet users to its various websites. Finally, the Respondent has not replied to any cease-and-desist letters and reminders the Complainants sent. Such behavior has already been considered as an inference of bad faith by previous panels under the UDRP. According to the Complainants, all aforementioned circumstances confirm that the disputed domain name is also used in bad faith.
The Complainants request the Panel that the disputed domain name be cancelled. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
The Respondent did not reply to the Complainants’ contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. A. Identical or Confusingly Similar
It is well established that the generic Top-Level Domains (“gTLDs”) may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD “.com”.
The Panel finds that the disputed domain name is confusingly similar to the DANNON and DANONE marks. The Respondent has taken the DANNON mark in its entirety – which mark in itself is a variation of the DANONE mark – and merely added the generic word “yogurt”. The added word is insufficient to differentiate the disputed domain name and the DANNON and DANONE marks, and actually enhances the connection given the goods for which the marks are registered and used, and the nature of the Complainants’ business.
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainants must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
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 authorization has been given by the Complainants to the Respondent to use or register the disputed domain name incorporating the DANNON and DANONE 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 trademarks and products of Complainants, and the disputed domain name resolving to a website which offers toys and seems to direct Internet users to other websites of the Respondent, the Respondent is diverting consumers to the website under the disputed domain name for its own commercial gain so that 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
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the DANNON and DANONE marks in mind as such marks had already been registered for many years, are well-known and not generic. Moreover, the Respondent added only the term “yogurt” to said marks, which term is not obvious except for a person who is familiar with the Complainants and the use of their trademarks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with the Complainants in mind.
The fact that the Complainants had a cease and desist letter and reminders sent to the Respondent, to which the Respondent did neither reply nor or take the requested remedial action to cease all activities and use of the disputed domain name, as well as that the Respondent did not reply to the Complaint, further contribute to the Panel’s finding of bad faith registration and use of the disputed domain name.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 7. Decision
For 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.
Alfred Meijboom
Sole Panelist
Date: March 6, 2015
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