The Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.
The Respondent is zhengyongjun of Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2015. On January 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 7, 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 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2015.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 5, 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 Complainant is a global leader in dairy products. It owns numerous trademark registrations in the DANONE trademark around the world. The DANONE trademark has become well known to consumers.
The Respondent is an individual named Zhengyonjun. On August 12, 2014, the Respondent registered the Domain Name that reverts to a parking web page. The Domain Name comprises the prefix “hk”, the word “danone” and the generic Top-Level Domain (“gTLD”) “.com”.
On September 22, 2014, the Complainant sent a cease and desist letter to the Respondent, whereby the Complainant advised the Respondent about its rights in the DANONE trademark and notified the Respondent that his actions constituted a trademark infringement and requested that the Respondent cancelled the Domain Name in eight days since the date of the letter. The Respondent did not reply to the letter. The Complainant sent the Respondent two reminders of its request, but received no response. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is identical of confusingly similar to its DANONE trademark. The Complainant claims it owns numerous trademark registrations in the DANONE trademark across the world. The Complainant further claims that previous UDRP panels considered the Complainant’s trademarks to be well known. The Complainant asserts that the Domain Name incorporates the Complainant’s DANONE trademark in its entirety and adds the letters “hk”, which are the ISO code for Hong Kong. The Complainant argues that the combination of the DANONE trademark with the “hk” geographical term does not sufficiently distinguish the Domain Name from the DANONE trademark to avoid confusion. According to the Complainant, the Domain Name comprising the geographical term “hk” and the DANONE trademark is likely to lead Internet users to believe that the Domain Name will either lead them to website endorsed by the Complainant or that the Domain Name is connected to the owner of the DANONE mark in that geographic location. The Complainant argues that the extension “.com” should be excluded from consideration because it is well established that a gTLD such as “.com” cannot avoid finding of confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interest in the Domain Name because the Respondent is neither commonly known by the name “Danone”, nor is affiliated with the Complainant. The Complainant asserts that it neither authorized, nor licensed the Respondent to use the DANONE trademark or to register the Domain Name incorporating the DANONE mark. The Complainant claims that the Respondent has no prior rights or legitimate interests in the Domain Name because registration of the DANONE trademark precedes the registration of the Domain Name for years. The Complainant argues that because Domain Name is similar to its well-known DANONE trademark, the Respondent cannot have intended to develop a legitimate activity through the Domain Name. The Complainant claims that because the Domain Name resolves to an inactive page and the Respondent has made no reasonable preparations to use the Domain Name, the Respondent can show no intention of non-commercial or fair use of the Domain Name. Finally, the Complainant claims that because the Respondent never answered to Complainant’s cease and desist letter, it can be assumed that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant asserts that the Domain Name was registered and is being used in bad faith. The Complainant argues that it is implausible that the Respondent was unaware of the DANONE trademark when he registered the Domain Name because DANONE is a well-known trademark. According to the Complainant, incorporation of the well-known DANONE mark in its entirety into the Domain Name shows the Respondent’s opportunistic bad faith. Even if the Respondent had not known of the DANONE trademark, he had an obligation to ascertain that registration of the Domain Name would not infringe on anybody’s rights. Had the Respondent conducted a quick Internet search, he would have found out about existence of the Complainant and its DANONE trademark. The Complainant argues that the Respondent’s knowledge of the Complainant’s trademarks during registration of the Domain Name proves the Respondent’s bad faith. The Complainant asserts that because the Respondent, who had no rights or legitimate interests in the DANONE mark, knew or should have known about the Complainant’s rights, bad faith can be found. The Complainant claims it is likely that the Respondent registered the Domain Name to prevent the Complainant to reflect its trademark in the Domain Name. The Complainant argues that passive holding of the Domain Name does not preclude finding of bad faith where, like here, the trademark has a strong reputation and is widely known and where the Respondent provided no evidence of good faith use of the Domain Name. The Complainant asserts that Respondent’s failure to respond to the Complainant’s cease and desist letter is an inference of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence1 each of the following UDRP elements2 :
(i) the Domain Name registered by the Respondent 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
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The Complainant demonstrated its rights in the DANONE trademark by submission of copies of multiple trademark registrations for the DANONE trademark, such as Chinese trademark registration No. 216985 dated December 15, 1984 and an international trademark registration No. 849889 dated October 29, 2004.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s DANONE trademark. The test for confusing similarity should be a comparison between the mark and the domain name.3 To satisfy this test, the trademark would need to be recognizable within the domain name, with adding common, dictionary, descriptive, or negative terms […] typically being insufficient to prevent threshold Internet user confusion.4
The Domain Name comprises the prefix “hk”, the word “danone” and the gTLD “.com”. It is confusingly similar to the Complainant’s trademark because the Complainant’s trademark is incorporated in its entirety.5 Adding merely a geographic term, like the prefix “hk”, which stands for Hong Kong, China, cannot avoid a finding of confusing similarity.6 It is also well established that adding the gTLD “.com” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.7
Therefore, the Panel finds that the Complainant has satisfied the first UDRP element by proving that the Domain Name is confusingly similar to the trademark DANONE in which the Complainant has rights. B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant must make out a prima facie8 case showing that the Respondent has no rights or legitimate interests in the Domain Name.9
Under the preponderance of the evidence standard used in UDRP proceedings, an asserting party must typically establish that it is more likely that the claimed fact is true.10 The Panel finds it is likely that Respondent does not have rights or legitimate interests in the Domain Name for several reasons. First, he is not commonly known by the name Danone. The WhoIs records show that the Respondent’s and Respondent organization’s name is Zhengyonjun. Second, the Complainant neither authorized, nor licensed the Respondent to use the DANONE trademark or to register the Domain Name incorporating the DANONE mark. In absence of any license or permission from a complainant to use a well-known mark, no bona fide or legitimate use could be claimed.11 Third, the Respondent has not and cannot obtain rights or legitimate interests in the Domain Name. The Domain Name reverts to an inactive web page. Passive use of a domain name “would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ […] or from ‘legitimate noncommercial or fair use’ of the domain name [...]”12 Even if the Respondent uses the inactive Domain Name, such use will not result in creation of rights or legitimate interests in the inactive Domain Name because the inactive Domain Name is confusingly similar to the Complainant’s trademark and any use of the inactive Domain Name may enable the Respondent to make unfair profit or divert consumers from the Complainant.13
The Panel, therefore, finds that the Complainant made out the prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name. It is a consensus view of UDRP panelists that “[o]nce [a] prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”.14 If the respondent fails to offer such appropriate allegations or evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. 15 By defaulting, the Respondent failed to satisfy his burden of production. Therefore, the Panel finds that the Complainant satisfied the second UDRP element. C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.16
The Panel finds that the Respondent registered and is using the Domain Name in bad faith. It is well-established that passive holding of the domain name “does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”17 Here, the Respondent acted with “opportunistic bad faith” because the Respondent, who has no connection with the well-known DANONE trademark, registered the Domain Name, which incorporates the well-known DANONE trademark.18 It is implausible that the Respondent did not know about the Complainant’s rights in the DANONE trademark. The Respondent registered the Domain Name at least thirty years after the Complainant registered its DANONE trademark in China, the country of the Respondent’s residence.
The Panel, therefore, finds that the Complainant has established the third element of paragraph 4(a) of the UDRP. 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 Domain Name be cancelled.
Olga Zalomiy
Sole Panelist
Date: February 13, 2015
1 Paragraph 4.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 4(a) of the Policy.
3 Paragraph 1.2 of the WIPO Overview 2.0.
4 Id.
5 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
6 See, paragraph 1.9 of the WIPO Overview 2.0.
7 See, paragraph 1.2 of the WIPO Overview 2.0.
8 See, paragraph 2.1 of the WIPO Overview 2.0.
9 Paragraph 4(a)(ii) of the Policy.
10 Paragraph 4.7 of WIPO Overview 2.0.
11 Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.
12 Paragraph 2.6 of WIPO Overview 2.0.
13 See, Microchip Technology, Inc. v. Milo Krejcik and EDI Corporation, d/b/a A, WIPO Case No. D2001-0337.
14 Paragraph 2.1. of the WIPO Overview 2.0.
15 Id.
16 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
17 Paragraph 3.2 of WIPO Overview 2.0.
18 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
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