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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Dann Shin

Case No. D2008-1041

1 The Parties

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

The Respondent is Dann Shin, Honolulu, Hawaii, United States of America.

2. The Domain Name and Registrar

The disputed domain name <danone-iourgurt.org> is registered with FastDomain, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 11, 2008, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the domain name at issue. On July 23, 2008, FastDomain, Inc. transmitted by email to the Center its verification response confirming that:

(a) the domain name is registered with the FastDomain Inc. as the registrar;

(b) the Respondent is listed as the registrant;

(c) the Respondent’s contact details are as recorded in the WhoIs search;

(d) the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applies to the registration and use of the domain name; and

(e) the registration agreement is in English.

The Center verified that the Complaint satisfied the formal requirements of 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 July 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2008. The Respondent sent three informal communications to the Center on July 29 and July 30, 2008. The Respondent emailed a further communication to the Center on August 15, 2008.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 9, 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.

4. Factual Background

The Complainant is a member of the Danone corporate group. The Danone group traces its origins to the production and marketing of yoghurt since the 1920s. Today, its products fall into 4 categories: fresh dairy products, beverages, baby food, and medical nutrition. It now operates in 40 countries.

According to the Complaint, Danone is ranked first worldwide in the sale of dairy products and is best known for its yoghurt products. Group sales across all products were 14 billion euros in 2006; of which about 7.9 billion euros were derived in the fresh dairy products division. In 2006, in its first year of sales in the United States of America, the group’s DANNON ACTIVIA yoghurt brand achieved sales of US$130 million.

The Complaint provides details of 18 registered trademarks owned by the Complainant. These include

International trademark DANONE No. 172526, registered on October 31, 1953 renewed and covering goods in classes 1, 5 and 29;

International trademark DANONE No. 228184, registered on February 2, 1960 renewed and covering goods in classes 1, 5, 29, 30, 31, 32 and 33.

U.S. trademark DANONE No. 2827606, filed on March 30, 2004 and covering goods in classes 32.

The domain name was registered on January 16, 2008. At the time of this dispute, the domain name did not resolve to an active website. The Complaint claims that it has always been inactive. The Respondent does not dispute this.

5. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(i) The 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Before addressing these matters, it is necessary to deal with a procedural matter raised by the informal communications received by email at the Center from a “dann shinmoto”. Mr. Shinmoto’s name is similar, but not identical, to the registrant’s name given in the WhoIs details confirmed by the registrar as correct. The emails were received from an email address which was not one of the email addresses listed in the WhoIs records for the domain name.

The thrust of the informal communications is adequately conveyed by the third email, on July 30 2008:

“I’m just letting you guys know that I’ve just received a package with info about a domain name danone. Don’t really know what’s this about, but I believe that this account was made and was cancelled on February 2008 due to an identity fraud with paypal. I wish this to resolved issue and hope this never happens again. My question to you is how can innocent people protect themselves against crime like this and have to deal with WIPO and DREYFIS & associes, When we didn’t even know what going on in the first place?”

Presumably, the crime which the author refers to is that disclosed in the allegations about identity fraud. Neither the author of the emails nor the registrar has disclosed what steps were taken to cancel the domain name in February 2008 or why the domain name continues to be registered.

As the domain name is still registered, however, it is appropriate for the Complaint to be heard and determined, assuming it has been properly served.

In this context, it is important to note that the sixth bullet point of the registrar’s terms of service may be read as obliging the registrant to maintain accurate contact information.

The email communications from the Center to the registrant’s email address recorded in the WhoIs records were undeliverable. The Center’s attempts to fax the Complaint to the fax number for the registrant given in the WhoIs record also failed. However, the copy of the Complaint which was couriered was delivered to the registrant’s address given in the WhoIs record. The emailed and couriered copies sent to the technical contact, a person different from the Respondent, were also delivered.

It is apparent that, while the name used by the author of the emails is not identical to the name of the registrant, the author of the emails does in fact occupy the premises at the address recorded in the WhoIs record and has responded to service of the Complaint. Accordingly, the Panel will proceed on the basis that the Complaint has been duly served.

This does not mean that the Panel accepts or rejects the allegations made by the author of the emails. If, as he alleges, he is not the registrant in fact, the registrant is in breach of the registrar’s terms of service and cannot, by that artifice, render himself unamenable to the Policy. Further, that is a factor that can be taken into account below. See, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights in a mark and, if so, is the disputed domain name identical or confusingly similar to that mark?

The Complainant has proved its ownership of at least 18 registered trademarks around the world based on DANONE, including the three identified above for DANONE alone, covering classes relevant to dairy products in general and yoghurt in particular.

The domain name is not, of course, precisely identical to these trademarks, having added “-iourgurt” and the gTLD. The gTLD, being functional, may be disregarded in this context.

It is well-established that the addition of a generic or descriptive term to a trademark does not usually take a domain name outside the scope of confusing similarity. In this case, the additional term exacerbates or compounds the risk of confusion since, as the Complainant points out, many people will pronounce the second element phonetically as “yoghurt”.

Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s proved trademarks.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are

(i) before any notice to you 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 (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 mark at issue.

In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor, and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience, the Panel refers only to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.

The Complainant states that the Respondent is not affiliated with it in any way and that it has not authorized the Respondent to use its trademarks or any domain name incorporating those trademarks.

The domain name has no obvious connection with either the Respondent’s name as recorded in the WhoIs records nor as identified in the informal email communications referred to above.

The domain name was registered well after the Complainant had acquired its trademark rights. There is no evidence that the domain name has been put to any use nor is there any evidence of preparations to use the domain name in good faith before any notice of the dispute.

In these circumstances, the Complainant has raised a clear prima facie case that the Respondent does not have any rights or legitimate interests in the domain name.

The author of the informal email communications does not seek to rebut the Complainant’s assertions; on the contrary, he disclaims any entitlement. If the author of the informal email communications is not in fact the registrant, the registrant’s own conduct has precluded himself from being in a position to respond or, alternatively, that person has not made any attempt to justify his or her conduct.

Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides

(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you 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; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you 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.”

Given the longstanding, widespread and extensive use of the Complainant’s trademark and the incorporation of the phonetic equivalent of “yoghurt” in the disputed domain name , it is obvious that whoever registered the domain name knew of the Complainant’s trademark, DANONE, and its principal dairy product. In the absence of any demonstrated right or interest in the domain name, there is a strong inference that it has been registered in bad faith, all the more so having regard to the phonetic similarity of the misspelled addition “-iourgurt”.

It has long been recognized that a passive holding of a domain name can constitute registration and use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As in that case, the present case concerns a well-known trademark. The domain name in fact reinforces the connection with the product for which the trademark is particularly well-known. Moreover, on the basis of the claims by the author of the informal communications, it would appear that the domain name has been registered by someone giving false contact details in breach of the registration agreement. There is no evidence of any attempt to use the domain name in good faith.

All of these factors point to a strong conclusion that the domain name has been registered and is being used in bad faith. See also Banco Bilbao Vizcaya Argentaria S.A. v. N/A, WIPO Case No. D2003-0996.

It should also be noted that the author of the informal communications, by email to the Center dated August 15, 2008, requested cancellation of the domain name.

In these circumstances, therefore, the Panel finds that the domain name has been registered and is being used in bad faith.

7. Decision

In this case, the Complainant has expressly requested cancellation of the domain name if it be successful.

Accordingly, 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 <danone-iourgurt.org> be cancelled.

Warwick A. Rothnie
Sole Panelist

Date: September 23, 2008