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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Pavel DeDik, sk-magistral

Case No. D2008-1083

1. The Parties

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

Respondent is Pavel DeDik, sk-magistral, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <actimel.mobi>, <danette.mobi>, and <danissimo.mobi> (the “Domain Names”) are registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2008. On July 18, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 19, 2008, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a Complaint deficiency notification by the Center, Complainant filed an amendment to the Complaint on July 31, 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”), 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 Respondent of the Complaint, and the proceedings commenced on August 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 25, 2008.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 5, 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.

In communications to the Center dated July 21, 2008 and July 28, 2008, Respondent requested that any communications with it be held in Russian. Accordingly, on August 1, 2008 the Center informed the parties that the language of the proceeding was the language of the Registration agreement, i.e. Еnglish, and that any furthers considerations would be under the Panel’s discretion. In this regard, the Panel notes that in accordance with Paragraph 11 of the Rules, the language of the proceeding is English.

4. Factual Background

Complainant is a leading global company in fresh dairy products and bottled water. It is present in 40 countries, and employs nearly 90,000 people.

Complainant’s products are well-known in many countries. Actimel is a probiotic drink containing the unique culture L.casei Imunitass, while Danette and Danissimo are desserts. Danette is present in more than a dozen countries and Actimel is present in 30 countries. The three products are sold in the Russian Federation.

Complainant owns numerous DANETTE, ACTIMEL and DANISSIMO trademarks protected throughout the world, including in the Russian Federation. Its trademarks are well-known in relation to food products. In particular, Complainant owns the following trademarks:

- International Trademark DANETTE No.569704 registered on May 6, 1991, valid for the territories of 47 countries, for goods in International classes 29 and 30;

- International Trademark ACTIMEL No.628856, registered on October 20, 1994 for the territories of 31 countries, for goods in International classes 29, 30 and 32; and

- International Trademark DANISSIMO No.690784, registered on March 6, 1998 and valid for the territories of 30 countries, for goods in International classes 29 and 30.

The Domain Names were registered on August 13, 2007.

5. Parties’ Contentions

A. Complainant

Complainant states that the Domain Names are identical to the trademarks owned by Complainant. It is established practice to disregard gTLDs as “.mobi” when determining whether a domain name is confusingly similar. The remaining elements reproduce Complainant’s trademarks in their entirety.

According to Complainant, Respondent is not affiliated with it, and has not been authorized by Complainant to register and use Complainant’s trademarks, or any domain name incorporating such trademarks. Respondent is not known by the Domain Names, and has no prior rights or legitimate interests in them. The registration of Complainant’s trademarks preceded the registration of the Domain Names.

Respondent’s webpage indicates that it is in the business of construction and maintenance. Respondent seems to be using the Domain Names only to attract Internet users to its website, where it offers to sell them.

Complainant contends that the registration of the three Domain Names could hardly be considered a coincidence. Rather, Respondent registered them, all consisting entirely of Complainant’s trademarks, because the three products of Complainant bearing these trademarks are sold in the Russian Federation. Therefore, Respondent clearly had Complainant in mind when registering the Domain Names and intended to profit from the reputation of Complainant. In numerous cases under the Policy, panels have recognized that the knowledge of the complainant’s intellectual property rights, including their trademarks, by the respondent at the time of the registration of a domain name is evidence of bad faith registration.

In Complainant’s submission, Respondent is attempting to make a profit off of Complainant’s goodwill by confusing customers into thinking that they will arrive at a website operated by Complainant. When Internet users type any of the Domain Names, they are directed to a page that offers them for sale. Such acts amount to bad faith use, and may tarnish Complainant’s reputation.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following to justify the transfer of the Domain Name:

(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of Complaint to Respondent, in compliance with Rules, Paragraph 2(a), and Respondent was given a fair opportunity to present its case.

By Rules, Paragraph 5(b)(i), it is expected of a respondent to: “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, Paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […].

In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided sufficient evidence and has thus established its rights in the DANETTE, ACTIMEL and DANISSIMO trademarks, registered in many countries.

It is a common practice under the Policy to disregard gTLDs such as the “.com” section of domain names for the purposes of the comparison under Policy, paragraph 4(a)(i).

The remaining part of the Domain Name <danette.mobi> contains only the word “danette”, <actimel.mobi> - only the word “actimel”, and <danissimo.mobi> - only the word “danissimo”. These words are identical to Complainant’s trademarks DANETTE, ACTIMEL and DANISSIMO. Therefore, the Panel finds that the Domain Names are identical to trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.

Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

It is well established that once a complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.

Respondent, although given a fair opportunity to do so, has chosen not to present to the Panel any arguments in its defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any legitimate reason for the registration or use of the disputed Domain Names, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.

In fact, the only sources of information about Respondent are the Whois information, provided by the Registrar, the content of the website at the Domain Names, and the communications by Respondent to the Center dated July 21, 2008 and July 28, 2008.

The Whois information contains no evidence that Respondent is commonly known by the Domain Names.

Respondent’s communications to the Center dated July 21, 2008 and July 28, 2008 contain an explicit statement that Respondent planned to use them in its future business activities and also an offer for their sale for the price of EUR 600,000. In the Panel’s view, these statements cannot substantiate any rights or legitimate interests of Respondent in the Domain Names. Rather, they are relevant to the Panel’s findings of bad faith registration and use, discussed below.

The website linked to the Domain Names also contains an explicit offer for the sale of the three Domain Names. DANETTE, ACTIMEL and DANISSIMO are popular trademarks for dairy products, registered and used in many countries, including the Russian Federation, where Respondent is located. Considering that the three Domain Names are identical to these popular trademarks of Complainant, and Respondent offers them for sale, it is very likely that Respondent was well aware of Complainant and its trademarks, and acquired the Domain Names mainly taking into account their goodwill and value for Complainant.

Taking all this into account, the Panel finds that Respondent’s actions may not be regarded as bona fide, and it has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

In the present proceeding, Respondent did not originally register the Domain Names. The term “registration” extends beyond the original act of registration and covers subsequent acquisitions of the domain names. The Policy, paragraph 4(b)(i) specifically refers to circumstances in which a respondent has registered or has acquired a domain name, and there are prior panel decisions in which it has been held more generally that “registration” extends to subsequent acts of acquisition. BWR Resources Ltd v. Waitomo Adventures Ltd., WIPO Case No. D2000-0861, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, and Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. Therefore, for the purposes of the Policy, the acquisition by a party of a domain name amounts to a new registration, and is analyzed by application of the same criteria.

As discussed above, Respondent is most likely to have been aware of Complainant’s popular trademarks at the time it acquired the Domain Names. The Domain Names are identical to these trademarks, and are linked to Respondent’s website where they are offered for sale. Respondent is found to have no rights or legitimate interests in the Domain Names, and has offered to transfer them against the payment of EUR 600,000. This sum is by all standards excessive, and its request supports a finding of bad faith on behalf of Respondent – a classic example of the application of Policy, Paragraph 4(b) (i).

Therefore, the Panel finds that Respondent has registered and used the Domain Names 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 names <actimel.mobi>, <danette.mobi>, and <danissimo.mobi> be transferred to Complainant.

Assen Alexiev
Sole Panelist

Date: September 19, 2008