The Complainant is Compagnie Gervais Danone of Paris, France, represented by Calderón y de la Sierra y Cía., S.C., Mexico.
The Respondent is Daniel Narita of Lima, Peru. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 1, 2018. 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 part of the Danone Group, a French multinational food-products corporation. The Complainant has been producing and marketing dairy products since 1919. Currently, the Complainant’s company operates in more than 130 countries, among which, is Mexico, with more than 30 years of presence.
The Complainant is the owner of numerous trademark registrations for the trademark DANONE. Among others, the Complainant is the owner of the following Mexican trademark Registrations:
- Mexican Trademark Registration No. 546917 DANONE with a registration date of April 24, 1997,
- Mexican Trademark Registration No. 546919 DANONE with a registration date of April 24, 1997,
- Mexican Trademark Registration No. 546920 DANONE with a registration date of April 24, 1997,
- Mexican Trademark Registration No. 868884 DANONE (and Design) with a registration date of February 24, 2005,
- Mexican Trademark Registration No. 871726 DANONE (and Design) with a registration date of March 9, 2005,
- Mexican Trademark Registration No. 887670 DANONE (and Design) with a registration date of June 23, 2005.
The Complainant has also registered several domain names, including , registered on December 14, 1995; , registered on February 6, 2004; , registered on July 22, 2009; , registered on September 4, 2002; and , registered on November 18, 2013 reflecting its trademark DANONE.
The Disputed Domain Name was registered on August 18, 2017, long after the Complainant has registered the trademark DANONE.
The Disputed Domain Name resolves to a website in Spanish that imitates the look and feel of the Complainant’s website. All links on the website at the Disputed Domain Name redirect the Internet user to the Complainant’s official Mexican website, with the exception of a tab marked “Remate”, where the Respondent offers used cars for sale. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Disputed Domain Name uses the Complainant’s trademark in its entirety with the mere adjunction of the Spanish word “grupo”, which means “group” in English. The Complainant has argued that the term “grupo” is a descriptive term which has no distinctive power. Further, the addition of the term “grupo” is not sufficient enough to avoid any risk of confusion with the Complainant’s trademark.
The addition of a generic Top-Level Domain (“gTLD”) required for registration does not provide enough distinctiveness between the Complainant’s trademark DANONE and the Disputed Domain Name.
Rights or legitimate interests
The Complainant has not granted any licenses or other rights to the Respondent to use the trademark DANONE in the Disputed Domain Name or to register any domain name which incorporates the Complainant’s trademark. In addition, the Respondent name does not bear any resemblance with the Disputed Domain Name, nor is there any basis to conclude that the Respondent is commonly known by the trademark DANONE.
The Complainant deems it to be of particular importance that (except for the tab named “Remate”) the Respondent’s web page redirects users to the Complainant’s genuine website “www..mx”. Internet users who click on the “Remate” tab are led to a page where used cars are offered for sale.
The Respondent has no prior rights or legitimate interests in the Disputed Domain Name since the registration of the DANONE trademark by the Complainant preceded the registration of the Disputed Domain Name by several years.
Registration and use in bad faith
The trademark DANONE has a longstanding leading position on the market and, as such it is certain that the Respondent was aware of the Complainant’s reputation at the time the Respondent registered the Disputed Domain Name. It is the Respondent’s duty to verify that the registration of the Disputed Domain Name would not infringe the rights of any third party, since under the Policy he is taken to have given the warranty and representation at the point of registration. Therefore, it is not possible to conceive of any reason to legitimately register the Disputed Domain Name.
A basic keyword search on the Internet would have sufficed to disclose the existence of the Complainant and its trademark DANONE.
Besides, the Respondent is using the Disputed Domain Name for offering and promoting the Complainant’s products by redirecting to the genuine Complainant’s web page. The same has been designed in such a way to make Internet users think that they are visiting one of the Complainant’s websites for Mexico.
By further using the Disputed Domain Name to offer used cars for sale, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademark and websites in order to attract Internet users for his own commercial gain. The use by the Respondent of the Disputed Domain Name is causing confusion to the general public with a clear behaviour of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark DANONE. The DANONE mark is clearly the dominant element of the Disputed Domain Name. The Panel had no difficulty in finding that the Disputed Domain Name is confusingly similar to the trademark DANONE, as the additional element “grupo” is not enough to avoid confusing similarity with the Complainant’s trademark.
The Disputed Domain Name is confusingly similar to the Complainant’s trademark; the addition of the Spanish word “grupo” does not have distinctive power to change this finding.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(i) Before any notice to you of the dispute, your use of, 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 at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. In fact, according to the Complaint, the website advertises and offers to sale pre-owned cars allegedly belonging to the Complainant’s vehicle fleet, which according to the Complainant is false.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Complainant has prior rights in the trademark which precede the Respondent’s registration of the Disputed Domain Name by almost one century.
The Respondent has failed to show that he has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services. To the contrary, the Respondent appears to be creating a misleading impression of association with the Complainant in order to sell used cars.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has a worldwide reputation (see Compagnie Gervais Danone v. Christopher Koda,WIPO Case No. D2008-1639 and Compagnie Gervais Danone v. Zhenglingyan, Lingyan Zheng,WIPO Case No. D2008-1955) and has had a presence in Mexico for more than 30 years. It is unlikely that the Respondent did not know about the trademark DANONE when seeking the registration of the Disputed Domain Name and the website at the Disputed Domain Name indicates that the Respondent sought to target the Complainant’s trademark at that time. Thus, this Panel finds that the Respondent was aware of the Complainant’s DANONE trademark.
The Panel is of the view that this alone is evidence that the Complainant’s trademarks are well known and that the Respondent had evident knowledge of the Complainant’s trademarks when he registered the Disputed Domain Name. Furthermore, the Panel visited the Disputed Domain Name and was able to verify that the Respondent seems to be offering and promoting the Complainant’s products in his website and that the content simulates the official Mexican website of the Complainant. Besides, most of the Respondent’s website tabs redirect users to the Complainant’s genuine website “www..mx”, giving the idea that the Disputed Domain Name is somehow connected to the Complainant.
The Respondent’s use of the Disputed Domain Name to also purport to offer the sale of second-hand cars leads the Panel to conclude that the Respondent has intentionally created a likelihood confusion with the Complainant’s trademarks and website in order to attract Internet users for his own commercial gain by taking advantage of the Complainant’s reputation in connection with the trademark DANONE.
It is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademarks and websites in order to attract Internet users for his own commercial gain, as set out in paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 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 transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: May 4, 2018
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