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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. DomainPark Limited

Case No. D2008-0587

1. The Parties

The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is DomainPark Limited, Berlin, Germany.

2. The Domain Name and Registrar

The disputed domain name is <danoneindonesia.com>. It is registered with Rebel.com Services Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2008. On April 16, 2008, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On the same day, Rebel.com Services Corp 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”), 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 April 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2008.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on May 26, 2008. 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. The decision due date was subsequently extended.

4. Factual Background

The Complainant is a French corporation. Its main brand DANONE was launched for yoghurt products in Barcelona, Spain around 1919. In the early 1930s, the Complainant opened a factory for fresh dairy products at Levallois-Perret, France.

In 1967, the Complainant merged with another company to form Gervais Danone. In 1973, that company merged with BSN to form BSN-GERVAIS DANONE, France’s largest food and beverage group with consolidated sales in 1973 of approximately 1.4 billion Euros.

Today the Complainant is an international market leader in fresh dairy products and employs more than 89,000 people throughout the world. Danone products are sold in 40 countries. The Complainant has used the Danone name on labeling, packaging and promotional literature and the marks have been prominently displayed in supermarkets and grocery stores.

The Complainant is a market leader in Germany for water.

The Complainant owns numerous DANONE trademarks worldwide including the following:

- German trademark DANONE n° 39655939.5 registered on May 10, 1997 in class 29;

- German trademark DANONE n° 39733502.4 registered on November 10, 1997 in class 29;

- German trademark DANONE n° 39982923.7 registered on October 12, 2000 in classes 3, 16, 18, 21, 25, 28, 35, 36, 41, 42;

- Community trademark DANONE ACTIV n° 001725902 registered on November 20, 2001;

- Community trademark DANONE NATIONS CUP n° 004984662 registered on April 12, 2007;

- Community trademark TRUST BY DANONE THE DANONE WAY OF DOING BUSINESS n° 003855731 registered on November 9, 2007;

- International trademark DANONE n° 849889 registered on October 29, 2004 in classes 5, 29, 30, 32, 35, 38, 43 protected in particular in the Community Union.

The Complainant is also the owner of several domain names, including amongst other <danone.fr>, <danone.com> and <danone.eu>.

The disputed domain name was registered on January 6, 2006.

As of February 6, 2008 and April 4, 2008, the disputed domain name resolved to a website providing commercial links, including links to competitors of the Complainant. The website also contains an indication that the domain name is for sale.

On March 20, 2008, the Complainant sent a cease-and-desist letter to the Respondent. The Respondent did not answer this letter.

5. Parties’ Contentions

A. Complainant

As regards the first condition under the Policy, the Complainant submits that the domain name is identical or at least similar to the Complainant’s trademarks. The Complainant points out that the domain name includes the DANONE trademark in its entirety and contends that the adjunction of the word “indonesia”, which is a geographical term, is insufficient to give distinctiveness to the domain name. In addition, the Complainant states that the DANONE brand is well established in Indonesia and that the adjunction of this geographic indication could lead consumers to think that the domain name belongs to the Complainant.

Concerning the second condition under the Policy, the Complainant alleges that the Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register the DANONE trademark, or to seek the registration of any domain name incorporating such mark. The Complainant further submits that its trademarks are not descriptive and have a high degree of distinctiveness, which has been recognized in previous WIPO decisions.

Finally, as regards the third condition under the Policy, the Complainant considers that it is obvious that the Respondent knew or must have known the Complainant’s trademark DANONE at the time it registered the domain name. In this respect, the Complainant states that this trademark is well-known worldwide and is a famous mark and contends that according to the Center’s unbroken line of precedents, the Respondent’s knowledge of the Complainant’s trademark when it registered the domain name constitutes evidence of the Respondent’s bad faith in the domain name registration. The Complainant also submits that the use of the domain name to provide sponsored links directing Internet users to websites of competitors of the Complainant, and the mention on the website to which the domain name resolves that the latter is for sale, are an indication of the Respondent’s bad faith.

The Complainant requests the transfer of the domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and

(iii) The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided satisfactory evidence that it is the owner of numerous trademarks consisting of or containing the word DANONE, registered throughout the world, including in Germany and as Community Trademarks.

Concerning the second issue, the Panel finds that the domain name is confusingly similar to trademarks owned by the Complainant. Numerous prior panels have held that when a domain name wholly incorporates a complainant’s registered mark, this may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).

This is especially the case where the elements that are added to the Complainant’s trademark are not distinctive (see Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246; Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717). In the present case, the Panel considers that the word “indonesia”, which is added to the Complainant’s trademark in the domain name, is not distinctive. This term is a geographic indication, which in the Panel’s view is insufficient to give distinctiveness to the domain name (see Accor v. Everlasting Friendship Trust, WIPO Case No. D2005-0626; Koninklijke Philips Electronics NV v. Keith Lang, WIPO Case No. D2000-1736). This is especially the case when, as in the present matter, the Complainant uses its trademarks in the geographic zone mentioned in the domain name.

Therefore, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

It is difficult for a complainant to prove such a negative fact. Therefore, UDRP panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements

(i) before any notice to you [Respondent] of the dispute, your use of, or 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 [Respondent] (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 [Respondent] 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 mark at issue

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons.

First, there is no evidence that the Respondent owns any trademark, or any other right, corresponding to the domain name or to the word “danone.” In addition, there is no indication that the Complainant has licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. Further, there is no evidence that the Respondent has been commonly known by the domain name at any time prior to this dispute.

In addition, the Respondent only uses the domain name in connection with a website containing sponsored links. This use cannot be considered to be use or preparations to use the domain name in connection with a bona fide offering of goods or services. The absence of intent to use the website can also be inferred from the fact that the website contains an explicit statement that the domain name is for sale.

Finally, the Respondent has not replied to the Complainant and there are no elements on record evidencing the Respondent’s rights or legitimate interests.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b)(i) and (iv) provide as an instances of registration and use in bad faith

(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel is satisfied that these circumstances are fulfilled in this case.

First, the website to which the domain name resolves expressly states that the domain name is for sale. The Panel notes that the offer for sale was already present on the website on February 6, 2008, i.e., one month after registration. The Panel finds that this is evidence that the domain name was registered primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name.

Second, based on the evidence produced by the Complainant, the Panel considers that the DANONE trademark is a well-known mark and has a worldwide reputation in connection with the products sold by the Complainant. It is thus highly likely that the Respondent was fully aware of the existence of the Complainant and its rights in the DANONE trademarks at the time it registered the domain name.

Third, the Complainant has produced documents showing that the domain name resolves to a website featuring commercial links, including links to websites offering products competing with the Complainant’s products. The Panel agrees with numerous prior panels that have held that using a domain name confusingly similar to a complainant’s mark to link to a website of the complainant’s competitor constitutes bad faith under the Policy (see, e.g., National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2005-0537). The Panel also finds, based on the evidence on record, that the Respondent has registered and used the domain name to intentionally attract, for commercial gain through pay per click domain name parking pages, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of such web site or location.

For these reasons, the Panel considers that the domain was registered and used in bad faith.

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, <danoneindonesia.com>, be transferred to the Complainant.

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Fabrizio La Spada
Sole Panelist

Date: June 30, 2008