The Complainant is Compagnie Gervais Danone and Danone US, LLC, France, represented by Dreyfus & associés, France.
The Respondent is junhong tao / taojunhong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2019. On August 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2019, 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 August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on September 13, 2019. 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 Complainants, Compagnie Gervais Danone and Danone US, LLC, both belong to the Danone group of companies (“Danone”). Danone is a leading global food and beverage company which produces fresh dairy products and plant-based products, waters, early life and medical nutrition. Danone’s products are sold in over 120 markets generating a revenue of EUR 24.7 billion in 2018, of which 66% of sales were made outside of Europe. The group employs more than 100,000 employees in over 55 countries around the world. The Complainants claim that their sales ranked number 1 in the United States of America (“United States”), number 2 in China, and number 3 in France in 2018.
The Complainant, Danone US, LLC, is the owner of United States trade mark registrations of DANNON, including United States Trade Mark Registration No. 3412771, registered on April 15, 2008 in class 29; and United States Trade Mark Registration No. 3142249, registered on September 12, 2006, in classes 29 and 32. The Complainant, Compagnie Gervais Danone, holds worldwide trade mark registrations of DANONE trade mark, including International Registration No. 228184, registered on February 2, 1960 in classes 1, 5, 29, 30, 31, 32, 33; and European Union Trade Mark Registration No. 006765051, registered on October 2, 2008 in classes 5, 29, 30, 32.
In addition, the Complainants own domain names containing the term “dannon”, such as , registered on February 7, 1995; , registered on December 8, 2007, and domain names containing the term “danone”, such as , registered on December 14, 1995; , registered on December 20, 1995; , registered on May 4, 2004.
The Respondent is junhong tao / taojunhong, China.
The disputed domain name was registered on October 5, 2018. The disputed domain name currently does not resolve to any website, but previously directed Internet Users to a gambling website in the Chinese language. 5. Parties’ Contentions A. Complainant
The Complainants contend that the disputed domain name is identical or confusingly similar to their DANNON and DANONE trade marks. The disputed domain name wholly encompasses the DANNON trade mark and is confusingly similar with the DANONE trade mark.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with the Complainants in any way nor has been authorized by the Complainants to use their trade marks or register domain names containing their trade marks. Moreover, the Respondent is not commonly known by the disputed domain name and the Respondent’s use of the disputed domain name is not legitimate noncommercial fair use or use in connection with a bona fide offering of goods or services.
The Complainants finally contend that the disputed domain name was registered and is being used in bad faith. The Complainants registered the DANNON and DANONE trade marks long before the registration date of the disputed domain name, and these trade marks are well-known around the world. The Registrant knew or should have known of the Complainants’ DANNON and DANONE trade marks when registering the disputed domain name. By using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trade marks as to source, sponsorship, affiliation, or endorsement. Moreover, it is likely that the Respondent registered the disputed domain name to prevent the Complainants from reflecting their trade marks in the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant, Danone US, LLC owns United States trade mark registrations of DANNON claiming, amongst others, dairy products in class 29 and fruits juices and fruits drinks in class 32. The Complainant, Compagnie Gervais Danone, holds worldwide registrations of the DANONE trade mark, claiming, amongst others, lactic ferments in class 1, nutritional additives for medical purposes in class 5, milk products in class 29, chocolate-based beverages in class 30 and drink preparations in class 32.
The Panel finds that the dominant component of the disputed domain name is “dannon” which incorporates the DANNON trade mark in its entirety. The repeated letter “n” and the omission of the letter “e” in the DANONE trade mark, does not sufficiently alter the appearance or pronunciation of the disputed domain name from the DANONE trade mark to make them distinguishable. See Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073.
It is well established that “.net” as a suffix of generic Top-Level Domains (“gTLD”) is disregarded in assessing the identity or similarity between the disputed domain name and the Complainants’ DANNON and DANONE trade marks.
Therefore, the Panel finds that the disputed domain name is identical to the Complainants’ DANNON trade mark and is confusingly similar to the DANONE trade mark. Thus, the Complainants have satisfied the first element under paragraph 4(a) of the Policy. 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. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Complainants contend that the Respondent is neither affiliated with the Complainants in any way nor has been authorized by the Complainants to use their trade marks or register domain names containing their trade marks. The Complainants further contend that the Respondent is not commonly known by the disputed domain names and the Respondent’s use of the disputed domain name is neither making a legitimate noncommercial nor fair use nor in connection with a bona fide offering of goods or services.
Pursuant to the Policy, the Panel is satisfied that the Complainants have made out, prima facie, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Thus, the burden shifts to the Respondent to prove its rights or legitimate in respect of the disputed domain name. However, the Respondent failed to submit a reply to rebut the Complainants’ contentions.
The Complainants’ contentions remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainants satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainants own trade mark registrations of DANNON and DANONE. The earliest registration listed predates the registration date of the disputed domain name by almost 60 years. Through extensive use and advertising, products bearing the Complainants’ DANNON or DANONE trade marks are sold and known throughout the world, including China, where the Respondent is apparently located. Moreover, the terms “DANNON” and “DANONE” are not merely names. Search results using the key words “DANNON” and “DANONE” on the Baidu and Google search engines direct Internet users to the Complainants and their DANNON and DANONE products, which indicates that an exclusive connection between the DANNON and DANONE trade mark and the Complainants has been established. As such, the Respondent either knew or should have known of the Complainants’ DANNON and DANONE trade marks when registering the disputed domain name, or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No.D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No.D2011-0874.
Section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 3.0”) states that “given that the use of a domain name for per se illegitimate activity[…], such behavior is manifestly considered evidence of bad faith.”. The disputed domain name is currently inaccessible. The Complainants have submitted webpages showing that the disputed domain name previously resolved to a Chinese gambling website. This is an indication that the Respondent intentionally traded on the goodwill of the Complainants’ DANNON and DANONE trade marks to conduct illegitimate activity and attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ DANNON and DANONE trade marks.
Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, previous direction of the disputed domain name to a gambling website, and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Therefore, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy. 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.
Rachel Tan
Sole Panelist
Date: September 25, 2019
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