|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Societe Des Eaux De Volvic v. VOLVIC MINERAL WATER Case No. D2008-1084
1. The Parties The Complainant is Societe Des Eaux De Volvic, Volvic, France, represented by Cabinet Dreyfus & Associés, France. The Respondent is VOLVIC MINERAL WATER, Rose Green, West Sussex, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar The disputed domain name <volvicwater.net> is registered with Network Solutions, LLC.
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 Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 18, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 28, 2008, the Center sent an email communication to the registrar with regard to the expiry of the domain name. The registrar wrote the Center confirming that the domain name will remain under registrar lock until the determination of the proceedings and further that no action was required from the parties. 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 July 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 18, 2008. The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 20, 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, Societe des Eaux de Volvic is a company incorporated under French law, and belongs to the Groupe Danone. VOLVIC is a brand of mineral water. The Complainant is the owner of numerous trade mark registrations for the mark VOLVIC, inter alia International trademark No. 275296 registered on October 18, 1963 and designating the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). The Complainant also owns Community trademarks, inter alia Community trademark No. 000026799 VOLVIC filed on April 1, 1996, and trade marks registered in the United Kingdom, inter alia No. 1034718 VOLVIC filed on August 3, 1974. The Complainant owns the domain names <volvic.fr> and <volvic.com>.
5. Parties’ Contentions A. Complainant The Complainant has registered the trade mark VOLVIC in a number of jurisdictions. The Complainant sells over a billion bottles of mineral water under that trade mark per year. The mineral water is produced in France but more than 50% is exported, inter alia to Germany, Japan, Ireland and United Kingdom. The Complainant asserts that Volvic is the No 2 still water imported into the United Kingdom. The Complainant asserts that its mark VOLVIC is well-known in United Kingdom, notably because of the company’s innovative advertising campaigns and because of its involvement with charity. The registrant of the disputed domain name is VOLVIC MINERAL WATER. Investigations carried out on behalf of the Complainant reveal that no such company name has been, is or is about to be registered in the United Kingdom. The Complainant has no connection with VOLVIC MINERAL WATER. The Complainant asserts that further investigations reveal that the registrant’s address is that of one Hayley Goddard who the Complainant asserts is therefore likely to be the true registrant of the contested domain name. No response has been received to a warning letter and two subsequent reminders from the Complainant. According to the Complainant, the disputed domain name is highly confusingly similar with the trademark VOLVIC. The addition of the term “water” is not sufficient to avoid any risk of confusion. Rather, since it is a clear allusion to the Complainant’s activities, it augments the risk of confusion. In any case the addition of a generic term is not apt to distinguish a domain name, as numerous WIPO panel decisions have confirmed. The mere addition of “.net” also does not remove the likelihood of confusion, and is not to be taken into consideration. The person the Complainant asserts to be the real Respondent, Hayley Goddard is not affiliated with the Complainant, nor authorized to register its trade mark or register a domain name incorporating it. No company named “Volvic Mineral Water” is registered in the United Kingdom and no such company can therefore be authorized to use the trade mark at issue. The Respondent has no prior rights or legitimate interest in the disputed domain name as the Complainant’s trade mark registrations preceded the registration of the disputed domain name. The disputed domain name is so similar to the Complainant’s trade mark that the Respondent cannot reasonably pretend it was intending to develop any legitimate activity. Nor did the Respondent answer the Complainant’s cease and desist letters or demonstrate any rights or legitimate interests. The Complainant asserts that due to the well-established worldwide reputation vested in the Complainant’s mark and trade mark VOLVIC it is obvious that the Respondent knew or must have known about the trade mark at issue at the time of registration of the disputed domain name. A Google search of the keyword “Volvic” demonstrates that the first results relate to the Complainant’s products. The addition of the term “water” indicates that the Respondent was aware of the Complainant when registering the disputed domain name. Therefore the registration of the disputed domain name is unlikely to have been a coincidence. The disputed domain name was inactive when the Complainant attempted to access it on July 17, 2008. Establishing use in bad faith does not depend on demonstrating positive action in bad faith but on whether in all the circumstances of the case it can be said the Respondent was acting in bad faith. Inaction may amount to use in bad faith in certain circumstances (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). These circumstances in this case are said by the Complainant to be: the very strong reputation of the Complainant’s trade mark, in the face of which the Respondent, without any rights or legitimate interests, nevertheless registered the disputed domain name; the lack of response to the Complainant’s cease and desist letters; and the fact that the real registrant is Hayley Goddard and that there is no company by the name of VOLVIC MINERAL WATER, which demonstrates the intention to give the impression of a legitimate registration. However, in the absence of any connection with the Complainant there is no such legitimacy. Consequently the Complainant requests the cancellation of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name is not identical to the Complainant’s trade mark VOLVIC, so the question is whether it is confusingly similar. The disputed domain name wholly incorporates the Complainant’s trade mark, with the addition of a generic term which furthermore is indicative of the activities of the Complainant, namely the production and sale of mineral water. The term “Volvic” has no generic meaning or meaning independent from the brand meaning which has become vested in it by reason of the activities of the Complainant. The addition of a generic term in this case does not result in a combination or phrase with a distinct or independent meaning. Given the well-established reputation of the mark VOLVIC in the market for mineral water, the addition of the word “water” is not apt to do anything other than reinforce the impression of a connection with the Complainant, which in fact does not exist. Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark VOLVIC. B. Rights or Legitimate Interests The Respondent has not availed itself of the opportunity, either by responding to the Complainant’s cease and desist letters or by filing a Response to the Complaint, of demonstrating that it has rights or legitimate interests in the domain name incorporating the Complainant’s trade mark VOLVIC. The Respondent is not authorized by the Complainant to use its trade mark VOLVIC for the purpose of registration of a domain name or any other purpose. In connection with water, which term the Respondent has incorporated in the disputed domain name, such authorization would be expected to be sought in the normal course of legitimate business. When accessed by the Complainant the domain name was inactive and it remained inactive as of September 1, 2008 when the Panel accessed it. There is thus no evidence of any web activity which could form a possible basis for a claim of rights or legitimate interests on the part of the Respondent. The Complainant provides evidence, which the Panel accepts, that there is no company in the United Kingdom registered under the name VOLVIC MINERAL WATER. In any case it would be difficult to envisage that a company with that name, were it to exist, could legitimately carry on a business in the United Kingdom related to mineral water without the authorization of the Complainant, given the latter’s trade mark registrations and established reputation there. That would also be the case if VOLVIC MINERAL WATER were used as a trade or business name rather than a corporate name. Therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The materials submitted by the Complainant support its assertion that the mark ‘Volvic’ is widely known in the United Kingdom. It has a very substantial slice of the market for mineral water in that country under the mark VOLVIC, with reference to which it conducts extensive advertising and other marketing and promotional activities. The mark at issue is distinctive and has no meaning as an ordinary word of the English language. Furthermore, the addition of the term “water” indicates that the registrant at the time of registration was aware of the Complainant’s activities in the market for mineral water and of the associated reputation of the trade mark at issue. The likelihood that the choice of the combined terms “volvicwater” for registration as a domain name was coincidental is in the circumstances very remote. Since there is no registered company with the name VOLVIC MINERAL WATER in the United Kingdom and no person is authorized by the Complainant to use it as a business name, a reasonable inference open to the Panel is that the name was adopted by the registrant in an attempt to generate a misleading impression of legitimacy. It is now well-established that inaction may amount to use in bad faith, depending on all the circumstances. Given the fact that the Complainant’s mark is widely known, certainly in the United Kingdom, in connection with bottled mineral water; the strong inferences that the Respondent was well aware of this fact at the time of registration; the Respondent’s failure to respond in any way to the Complainant; and the legitimate inference that the Respondent has employed a stratagem to cover the real identity of the registrant and give itself a veneer of legitimacy, there is a strong case that the Respondent intends to benefit from its registration of the disputed domain name and turn it to account in some manner detrimental to the Complainant. This amounts to use in bad faith. The Panel therefore finds that the disputed domain name 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 <volvicwater.net> be cancelled. William A. Van Caenegem Date: September 3, 2008
: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-1084.html
: |
|
|