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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sociйtй Anonyme des Eaux Minerales d’Evian and Sociйtй des Eaux de Volvic v. Beroca Holdings B.V.I. Limited

Case No. D2008-0416

 

1. The Parties

The Complainants are Sociйtй Anonyme des Eaux Minerales d’Evian and Sociйtй des Eaux de Volvic, of Evian and Volvic, respectively, France (the “Complainants”), represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Beroca Holdings B.V.I. Limited, of London, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain names <evian.mobi> and <volvic.mobi> are registered with EuroDNS S.A.

 

3. Procedural History

The Complaint was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2008. On March 19, 2008, the Complaint was received in hard copy.

At the Center’s request for registrar verification of March 18, 2008, concerning the disputed domain names, EuroDNS S.A. transmitted its verification response to the Center by e-mail on March 19, 2008, confirming, inter alia, that the Respondent is listed as the Registrant of the disputed domain name and providing the contact details for the Registrant and the technical and administrative contact.

In response to a notification by the Center that the Complaint was administratively deficient on March 26, 2008, the Complainants filed an amended Complaint on April 4, 2008.

The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, 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 sent the Complaint and a formal Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on April 9, 2008, by courier, fax and e-mail, using the contact details listed in the Registrar’s WHOIS database. In accordance with the Rules, Paragraph 5(a), the due date for response was April 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2008.

The Center appointed Dr. Foteini Papiri as the Sole Panelist in this matter on May 9, 2008. The Panelist 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. Thus, the Panel finds that it was properly constituted.

The registration agreement for the domain names at issue has been done and executed in English by Respondent and Registrar and, following the Center’s notification of administrative deficiency of the Complaint, the Complainants have submitted their Complaint in English. In the absence of any special circumstances for the Panel to determine otherwise, as provided in the Rules, Paragraph 11, the language of this proceeding is English.

The Panel, sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Policy, the Rules and the Supplemental Rules, and that payment of the fees was properly made.

The Panel has not received any requests from Complainants or Respondent regarding further submissions, waivers or extensions of deadlines.

 

4. Factual Background

Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and to the extent that the Complainants’ contentions and documents enclosed with the Complaint have not been contested, the Panel finds the following facts as having been sufficiently established:

Complainants are subsidiaries of the French company GROUPE DANONE.

The first Complainant, Sociйtй Anonyme des Eaux Minerales D’Evian, is the owner of numerous EVIAN-related trademarks, among which the following:

- United Kingdom mark EVIAN No. 1132278 registered, filed on April 18, 1980, in class 32;

- United Kingdom mark EVIAN No. 1226701 registered, filed on September 19, 1984, in class 32;

- United Kingdom mark EVIAN No. 1302145 registered on December 19, 1988, in class 25;

- United Kingdom mark EVIAN No. 2117232 registered on June 27, 1997, in class 32;

- United Kingdom mark le BRUMISATEUR. EVIAN No. 2133302B registered on May 28, 1999, in class 3;

- United Kingdom mark EVIAN @CTION No. 2228639 registered on September 22, 2000, in class 32;

- United Kingdom mark EVIAN No. 2199821 registered on March 16, 2001, in classes 3 and 5;

- United Kingdom mark EVIAN No. 2132366 registered on October 12, 2001, in classes 9, 14, 16, 18, 21 and 28;

- United Kingdom mark EVIAN ESPRIT No. 2398808 registered on February 3, 2006, in class 32;

- Community trademark EVIAN MILLENIUM No. 001217785 registered on July 4, 2000, in class 32;

- Community trademark EVIAN No. 001911098 registered on December 4, 2001, in class 32;

- Community trademark EVIAN No. 001390558 registered on June 20, 2002, in classes 3, 5 and 32;

- Community trademark EVIAN No. 001422716 registered on September 18, 2006, in classes 3, 5, 18 and 32;

- International trademark EVIAN No. 696812 registered on July 6, 1998, in classes 3, 5, 14, 16, 18, 24, 25, 28, 32 and 42;

- International trademark EVIAN MILLENIUM No. 724153 registered on November 19, 1999, in class 32;

- International trademark EVIAN VOLVIC DEVELOPPEMENT No. 728610 registered on February 17, 2000, in class 32;

- International trademark THE EVIAN TOUR No. 750230 registered on November 21, 2000, in classes 3, 9, 11, 16, 18, 25, 28, 32, 35, 38 and 41;

- International trademark EVIAN No. 757317 registered on January 29, 2001, in classes 3, 5 and 32;

- International trademark EVIAN No. 764063 registered on April 18, 2001, in class 38;

- International trademark EVIAN EAU MINERALE NATURELLE No. 755895 registered on March 14, 2001, in class 32;

- International trademark EVIAN No. 764050 registered on May 18, 2001, in classes 3, 16, 18, 25 and 32;

- International trademark EVIAN MASTERS No. 770860 registered on October 10, 2001, in classes 16, 18, 25 and 28;

- International trademark EVIAN MASTERS No. 800056 registered on February 26, 2003, in classes 18, 25 and 41;

- International trademark L’EVIAN. LIVE YOUNG No. 2270988 registered on July 22, 2005, in classes 32, 35 and 41.

Copies of the aforementioned trademark registrations were provided in Annex 15 of the Complaint.

The second Complainant, Sociйtй des Eaux de Volvic, is the owner of numerous VOLVIC-related trademarks, among which the following:

- United Kingdom mark VOLVIC No. 1034718 registered, filed on August 30, 1974 in class 32;

- United Kingdom mark EAU MINERALE NATURELLE VOLVIC No. 1499420 registered on November 25, 1994, in class 32;

- United Kingdom mark VOLVIC No. 2018408 registered on April 9, 1996, in class 32;

- United Kingdom mark VOLVIC TOUCH OF FRUIT No. 2194397 registered on June 2, 2000, in class 32;

- United Kingdom mark VOLVIC TIP & TAP No. 2226113 registered on March 29, 2002, in classes 20 and 32;

- United Kingdom mark VOLVIC REVIVE No. 2345277 registered on January 28, 2005, in class 32;

- United Kingdom mark VOLVIC SPLASH No. 2367128 registered on March 18, 2005, in class 32;

- United Kingdom mark VOLVIC ALL DAY No. 2408694 registered on June 2, 2006, in class 32;

- United Kingdom mark VOLVIC ON THE GO No. 2410592 registered on June 30, 2006, in class 32;

- United Kingdom mark VOLVIC SHAKE AWAKE No. 2398806 registered on August 4, 2006, in class 32;

- United Kingdom mark VOLVIC FRUIT CRUSH No. 2400194 registered on August 18, 2006, in class 32;

- United Kingdom mark VOLVIC FRUIT STORM No. 2417394 registered on September 15, 2006, in class 32;

- United Kingdom mark VOLVIC SPLASH No. 2408758 registered on December 15, 2006, in class 32;

- United Kingdom mark VOLVIC FRUIT CHILL No. 2399373 registered on June 1, 2007, in class 32;

- United Kingdom mark VOLVIC FRUIT TOUCH No. 2399375 registered on June 1, 2007, in class 32;

- United Kingdom mark VOLVIC FOCUS No. 2398804 registered on June 8, 2007, in class 32;

- Community trademark VOLVIC No. 000026799 registered on September 3, 1998, in class 32;

- Community trademark VOLVIC AUX EXTRAITS ORANGE NATURELS DOUCE D’ЙCORCE DE FRUITS SERVIR FRAIS 1,5L No. 000997221 registered on February 22, 2000, in class 32;

- International trademark VOLVIC ZEST CITRON No. 836310 registered on July 8, 2004, in class 32;

- International trademark VOLVIC No. 940444 registered on September 11, 2007, in class 32.

Copies of the aforementioned trademark registrations were provided in Annex 16 of the Complaint.

The Complainants have considerably invested in the extensive marketing of products bearing the EVIAN and VOLVIC trademarks respectively, including, but not limited to sports, charitable events and campaigns (Complaint, Annexes 5, 7, 8 and Annex 9 respectively). As a result of the Complainants’ success, EVIAN products are today present in 125 countries (Complaint, Annex 5 and 6) and VOLVIC products are today present in more than 65 countries (Complaint, Annex 10).

The Complainants are the owners of numerous domain name registrations, incorporating the EVIAN and VOLVIC name respectively.

The first Complainant, Sociйtй Anonyme des Eaux Minerales D’Evian, is the registrant of the following domain names (Complaint, Annex 17):

- <evian.fr>, registered on January 22, 1996;

- <evian.com>, registered on May 14, 1997;

- <evian.dk>, registered on October 6, 1998;

- <evian.nl>, registered on December 20, 1999;

- <evian.biz>, registered on March 27, 2002;

- <evian.ro>, registered on March 29, 2002;

- <evian.pl>, registered on April 18, 2002;

- <evian.us>, registered on April 19, 2002;

- <evian.eu>, registered on July 8, 2006;

- <evian.ie>.

The second Complainant, Sociйtй des Eaux de Volvic, is the registrant of the following domain names (Complaint, Annex 18):

- <volvic.co.uk>, registered on May 19, 1997;

- <volvic.net>, registered on July 6, 1998;

- <volvic.fr>, registered on May 29, 2001;

- <volvic.com>, registered on December 14, 2004;

- <volvic.ro>, registered on March 25, 2002;

- <volvic.pl>, registered on April 18, 2002;

- <volvic.us>, registered on May 16, 2002;

- <volvic.eu>, registered on June 24, 2006.

Over the years, consumers have come to recognize the EVIAN and VOLVIC marks as indicating a product or service originating with the Complainants and the EVIAN and VOLVIC marks enjoy wide recognition and reputation in relation to beverages.

According to WHOIS database records furnished by the Complainants, the record for both disputed domain names <evian.mobi> and <volvic.mobi> was created on September 26, 2006 (Complaint, Annex 1).

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that: (1) the domain names <evian.mobi> and <volvic.mobi> are identical or confusingly similar to the marks in which the Complainants have rights; (2) the Respondent has no rights or legitimate interests in respect of the domain names; (3) the domain names were registered and are being used in bad faith.

In particular, the Complainants contend that they have each used the marks EVIAN and VOLVIC in connection with their respective businesses for many years. As the Complainants contend that the EVIAN and VOLVIC marks respectively are incorporated in the disputed domain names, the domain names are at least confusingly similar to the Complainants’ respective registered trademarks.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainants contend that the Respondent is not generally known under the domain names, does not possess rights in the marks EVIAN and/or VOLVIC, does not use the domain names for any legitimate, non-commercial or equitable purpose or in connection with a bona fide offering of goods and services and the Complainants have not licensed or otherwise authorized the Respondent to register the domain names or use the aforementioned marks.

The Complainants also contend that the domain names were registered in bad faith, as it is highly unlikely that the domain names, incorporating the EVIAN and VOLVIC marks respectively, were registered without prior knowledge of the marks. The Complainants contend that the Respondent did not respond to their cease-and-desist letter. The Complainants also contend that the Respondent’s conduct has been under examination in numerous extra-judicial procedures, where the transfer of the disputed domain names has been the result. Therefore, the Complainants contend that the Respondent has used the domain names in bad faith, even though the domain names have been inactive.

B. Respondent

The Respondent did not reply to the Complainants’ contentions and has not made submissions whatsoever. Under Paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under Paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to “draw such inferences therefrom as it considers appropriate”. No exceptional circumstances have been brought to the Panel’s attention. Accordingly, the Panel makes the findings below primarily on the basis of the material contained in the Complaint.

 

6. Discussion and Findings

This dispute is properly within the scope of the Policy, and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain names that are the subject of this Complaint were registered, incorporates the Policy.

The Respondent is required to submit to a mandatory administrative proceeding in accordance with Paragraph 4(a) of the Policy, because the Complainants assert, in compliance with the Rules of Procedure, that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Under Rules, Paragraph 10(a), the Panel is allowed, inter alia, to independently visit the Internet in order to obtain additional light in this default proceeding. On January 19, 2007, the Panel attempted to visit Respondent’s web sites at the URLs “www.evian.mobi” and “www.volvic.mobi”, using the Internet Explorer browser. The domain names <evian.mobi> and <volvic.mobi> did not resolve to an active web site.

A. Identical or Confusingly Similar

The present dispute over the domain names <evian.mobi> and <volvic.mobi> is put forward by multiple Complainants: Sociйtй Anonyme des Eaux Minerales d’Evian and Sociйtй des Eaux de Volvic, which are collectively designated by the Complainants’ representative as members of the GROUPE DANONE.

Although neither the Policy nor the Rules provide for multiple Complainants concerning multiple domain names, there is no provision explicitly excluding a single Complaint brought by multiple related parties in respect of multiple disputed domain names. In fact, under certain circumstances it may be appropriate to accept a Complaint brought by multiple Complainants in respect of multiple domain names, rather than request the resolution of the dispute in separate, parallel procedures for each Complainant. The Panel concurs with the view expressed by other Panels that “When a complainant (or, as in this case, a group of closely related entities) are seeking redress against a single respondent and their complaint is based on the same set or similar sets of facts and on the same legal basis, it seems appropriate to allow them to proceed in this way.”¹

In light of the fact that the provisions of the Policy and the Rules do not exclude a single Complaint brought by multiple related parties in respect of multiple disputed domain names nor do they provide guidance as to when associated companies or affiliates can, should, or must, join in a Complaint and in light of the fact that such a Complaint has not been contested by the Respondent, the Panel accepts the designation of both companies as Complainants.

The first limb of the test under the Policy requires that the disputed domain name be identical or confusingly similar to a trademark or service mark in which Complainant has rights.

The Panel will accordingly proceed to examine the question whether the Complainants have rights in the trademarks and whether the disputed domain names are identical or confusingly similar to these trademarks.

The Complainants have produced ample evidence of extensive trademark registrations in the United Kingdom, as well as Community and international registrations, in respect of both the EVIAN and the VOLVIC trademarks, owned by the first and the second Complainant respectively, as set out above under Paragraph 4.

In view of the above, the Panel is satisfied that the first Complainant has demonstrated that it has rights in the registered trademark EVIAN and that the second Complainant has demonstrated that it has rights in the registered trademark VOLVIC.

In respect of the question whether the disputed domain names are identical or confusingly similar to these trademarks, it is important to point out that it is established practice to disregard the top-level part of the domain names, when assessing whether the domain names are confusingly similar to the mark at issue, as such elements are dictated by the very nature of the DNS and the inclusion of a gTLD or a ccTLD is necessary to distinguish one namespace from others.

The domain name <evian.mobi> incorporates the first Complainant’s registered trademark EVIAN in its entirety and the domain name <volvic.mobi> incorporates the second Complainant’s registered trademark VOLVIC in its entirety.

The Complainants have used the mark EVIAN and VOLVIC in connection with a wide variety of goods and services respectively. As a consequence, the public has come to perceive goods and services that are offered under these marks or a variation of the same as emanating from or being endorsed by or affiliated with each Complainant respectively. Therefore, consumers and the wider public expect the domain names <evian.mobi> and <volvic.mobi> to resolve to web sites owned by, operated by or affiliated with each of the Complainants. The Respondent has not contested Complainants’ contentions as to either Complainants’ rights in either the mark EVIAN or the mark VOLVIC.

The Administrative Panel finds that the domain names <evian.mobi> and <volvic.mobi> are identical with the EVIAN and VOLVIC mark respectively, in which each Complainant has proven to have rights respectively, pursuant to Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants have a strong presence in the beverage industry and the Complainants’ first use of the EVIAN and VOLVIC marks by far predate the domain name registrations. Because numerous EVIAN and VOLVIC trademark registrations, as set out above, were issued before the registration of the disputed domain names,² the Panel finds that both Complainants have prior trademark rights.

Neither Complainant ever granted, tacitly nor otherwise, the Respondent any license, rights, permission or authorization to use the EVIAN or VOLVIC marks or incorporate these in any domain name registration. There is no business link between the Complainants and the Respondent, the Respondent is not related in any way to the Complainants and there is no sponsorship, endorsement or affiliation between them that would justify the Respondent registering domain names that wholly incorporate the EVIAN or VOLVIC marks.

The Respondent does not appear to have any corporate, partnership or fictitious business name or business listing registration under the disputed domain names, nor has it claimed any rights with respect to the domain names. The Respondent also failed to demonstrate legitimate interests or bona fide offering of goods or services in respect of the disputed domain names.

In any case, the result of the test independently conducted by the Panel did not show any evidence as to independent rights or legitimate interests of the Respondent in the domain names pursuant to Paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services. Furthermore, there is no evidentiary support that the Respondent, as an individual, business, or other organization, has been commonly known by the domain names or that it is making a legitimate non-commercial or fair use of the domain names.

Therefore, the Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of either of the domain names at issue, pursuant to Paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove registration and use of the disputed domain names in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.

The Complainants contend that the domain names were registered in bad faith, as it is highly unlikely that the domain names, incorporating the EVIAN and VOLVIC marks respectively, were registered without prior knowledge of the marks. The Complainants also contend that, although the domain names have been inactive, use of the domain names in bad faith is substantiated, inter alia, due to the fact that the Respondent did not respond to the Complainants’ cease-and-desist letter and the Respondent has been involved in numerous extra-judicial proceedings resulting in the transfer of the disputed domain names under those proceedings.

In terms of registration of the domain names in bad faith, the Complainants submitted evidence that both disputed domain names were registered on September 26, 2006. The Complainants have also produced evidence of not only trademark registrations for both the EVIAN and VOLVIC marks predating the domain name registrations wholly incorporating the registered trademarks, but also extensive advertising, marketing and sales activities of products bearing both the EVIAN and VOLVIC marks in the United Kingdom and elsewhere (Complaint, Annexes 3, 5-10 and 12) again predating the domain name registrations wholly incorporating the registered trademarks, to an extent that it is only reasonable to infer that the Respondent had actual knowledge of the marks at issue or at least could easily have obtained information as to the wide use of the EVIAN and VOLVIC marks and products. The Respondent failed to submit a Response, contesting this element.

The Respondent’s failure to reply to the Complainants’ cease-and-desist letter of September 18, 2007 (Complaint, Annex 14) does not of and in itself constitute proof of bad faith, however, when taken into account in connection with other circumstances surrounding this particular case creates a series of questions as to Respondent’s conduct.

In this context and in terms of use of the domain names in bad faith, although the disputed domain names are inactive, the Complainants have discharged their burden of proof, as they have brought forward a number of cases involving the Respondent to this proceeding, resulting in the transfer of the disputed domain names. The disputed domain names in those cases were registered by the same Respondent and with the same Registrar and in Dr. August Oetker Nahrungsmittel KG v. Beroca Holdings B.V.I. Limited WIPO Case No. D2007-1664, N. M. Rothschild & Sons Limited, Baron Philippe de Rothschild SA, Sociйtй Civile de Chвteau Lafite Rothschild v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-1055, Spearmint Rhino Companies Worldwide, Inc. v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-1051, Kuoni Reisen Holding AG v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-0216, Kurt Geiger Limited v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-0195, Advance Magazine Publishers Inc. v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-0026 and MGM Mirage v. Beroca Holdings B.V.I. Limited c/o Wayne Nicholas, NAF Case 31948 the disputed domain names were registered on September 26, 2006, the exact same date the disputed domain names under the present proceeding were registered. Because of the fact that Respondent has registered the domain names at issue under this proceeding in order to prevent the owners of the trademarks or service marks from reflecting the marks in corresponding domain names and has engaged in a pattern of such conduct, the Administrative Panel is satisfied that the circumstances surrounding Respondent’s conduct are indicative of registration and use of the domain names in bad faith according to Paragraph 4(b)(ii) of the Policy. The Respondent failed to submit a Response, contesting this element.

For all the aforementioned reasons, the Administrative Panel finds that the Complainants have proven Paragraph 4(a)(iii) under the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain names are fulfilled, according to the remedies available under Paragraph 4(i) of the Policy.

The Complainants have requested transfer of the domain names to the Complainants.

 

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 domain name <evian.mobi> be transferred to the first Complainant and that the domain name <volvic.mobi> be transferred to the second Complainant.

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Dr. Foteini Papiri
Sole Panelist

Dated: May 23, 2008