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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

COMPAGNIE GERVAIS DANONE v. Zhenglingyan, Lingyan Zheng

Case No. D2008-1955

1. The Parties

The Complainant is COMPAGNIE GERVAIS DANONE of Paris, France, represented by Dreyfus & associГ©s of France.

The Respondent is Zhenglingyan, Lingyan Zheng of Qingdao, Shandong, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <danoneweb.com> is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 23, 2008, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On December 24, 2008, Name.com LLC 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” or “UDRP”), 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 January 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2009.

The Center appointed Pavan Duggal as the sole panelist in this matter on February 9, 2009. 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 subsidiary of GROUPE DANONE (a company incorporated under French laws). The Complainant’s main brand DANONE originated around 1919 in Barcelona, Spain when it was launched for yogurts. At that time, DANONE yogurt was the result of the collaboration between Isaac CARASSO and Elie METCHIKOF, the director of Pasteur Institute.

It is averred that DANONE quickly internationalized and started to commercialize its products in France. Around 1932, DANONE opened its factory for fresh dairy products at Levallois-Perret, France.

In 1973, GERVAIS DANONE merged with BSN to form BSN-GERVAIS DANONE, France’s largest food and beverage group with consolidated sales in 1973 of approximately EUR1.4 billion, consisting of 52% food and beverage sales.

Today GROUPE DANONE is a worldwide company leading in fresh dairy products and employs more than 90,000 people throughout the world (as detailed in Annex 3 to the Complaint).

The Complainant’s trademark DANONE is also the world’s top brand for fresh dairy products and represents 20% of the international market. Furthermore, the trademark DANONE is present in 40 countries worldwide (as detailed in Annex 3 to the Complaint).

The Complainant’s trademark DANONE has been used on labeling, packaging and promotional literature for its products and has been prominently displayed in supermarkets and grocery stores in various regions around the world.

In China, DANONE’s main product is bottled water. In bottled water sales, Asia represented half of divisional sales in terms of value and 60% in volume, which benefited from an excellent performance by China. Strong demand in Asia is linked to the Group’s strategy of innovating in functional waters (as detailed in Annex 4 to the Complaint).

DANONE owns numerous trademarks which are protected throughout the world, including in China (as detailed in Annexes 6 and 7 to the Complaint).

The Complainant is averred to be the owner of the various trademark registrations for DANONE which are protected throughout the world, including in China.

The Complainant is the owner of numerous international trademarks DANONE around the world, some of which designate China (as detailed in Annex 7 to the Complaint):

- International Trademark DANONE + logo nВ° 631634, covering classes 29, 30

- International Trademark DANONE nВ° 639073, covering classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42

- International Trademark DANONE + logo nВ° 649535, covering classes 5, 29, 30, 31, 32, 42

- International Trademark DANONE + logo nВ° 667644, covering classes 5, 29, 30, 32

- International Trademark DANONE + logo nВ° 667645, covering classes 5, 29, 30, 32

- International Trademark DANONE + logo nВ° 667646, covering classes 5, 29, 30, 32

- International Trademark DANONE + logo nВ° 667837, covering classes 5, 29, 30, 32

- International Trademark DANONE + logo nВ° 668079, covering classes 5, 29, 30, 32

- International Trademark DANONE + logo nВ° 718777, covering classes 5, 29, 30, 32, 42

- International Trademark DANONE + logo nВ° 722533, covering classes 29, 30, 32

- International Trademark DANONE + logo nВ° 722534, covering classes 29, 30, 32

- International Trademark DANONE + logo nВ° 722535, covering classes 29, 30, 32

- International Trademark DANONE + logo nВ° 722536, covering classes 29, 30, 32

- International Trademark DANONE + logo nВ° 724578, covering classes 29, 30, 32

- International Trademark DANONE + logo nВ° 725755, covering classes 29, 30, 32

- International Trademark DANONE nВ° 750755, covering class 38

- International Trademark DANONE + logo nВ° 757567, covering class 32

- International Trademark DANONE + logo nВ° 765873, covering classes 5, 29, 30, 32

- International Trademark DANONE + logo nВ° 765874, covering classes 5, 29, 30, 32

- International Trademark DANONE + logo nВ° 767954, covering class 29

- International Trademark DANONE + logo nВ° 787008, covering classes 29, 30, 32

- International Trademark DANONE + logo nВ° 788143, covering classes 5, 29, 30

- International Trademark DANONE + logo nВ° 810981, covering classes 5, 29, 30

- International Trademark DANONE + logo nВ° 849889, covering classes 5, 29, 30, 32, 35, 38, 43

Additionally, the Complainant is also the owner of several domain names including <danone.com>, <danone.asia>, <danone.ca>, <danone.us> and <danone.fr> (as detailed in Annex 8 to the Complaint).

The Complainant noticed that the domain name <danoneweb.com > had been registered on July 19, 2008. It directs towards a parking website containing various commercial links (as detailed in Annex 5 to the Complaint).

It is averred that on September 19, 2008, the Complainant sent a cease-and-desist letter to the Respondent by registered letter and email after the last reminder the Respondent replied to the email and asked the Complainant how much it was ready to pay in order to get the domain name <danoneweb.com> back. The Complainant responded that it would not pay to get this domain name back and requested the transfer of said domain name (as detailed in Annex 6 to the complaint).

Since the Respondent never replied, the Complainant has preferred the present complaint.

5. Parties’ Contentions

A. Complainant

The Complainant has based its contentions on the various grounds detailed in the Policy. It contends that the domain name <danoneweb.com> is confusingly similar or identical to the Complainant’s DANONE trademarks.

The Complainant further contends that the domain name has been registered in bad faith. The Complainant’s trademark DANONE is also the world’s top brand for fresh dairy products.

The Complainant additionally contends that the Respondent has no rights in the domain name, since the domain name does not correspond to a trademark registered in the name of the Respondent. The disputed domain name is not used for any bona fide offerings. The Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant’s DANONE trademark or to seek registration of any domain name incorporating said mark. Further, the Respondent has no prior rights or legitimate interests in the disputed domain name.

The Complainant further contends that there are present circumstances indicating that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

It is further contended by the Complainant that it was highly unlikely that the registration of <danoneweb.com> was a coincidence and that the domain name is also used in bad faith. It directs towards a parking webpage.

The remedy requested by the complainant is to get the disputed domain name transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

Paragraph 14 of the Rules reads as follows:

(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the panel, the panel shall proceed to a decision on the complaint.

(b) If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the panel, the panel shall draw such inferences therefrom as it considers appropriate.

Pursuant to paragraph 14 of the Rules as mentioned above, in the absence of a response to a Complainant’s allegations by the Respondent, the Panel is to consider those claims in the light of the unchallenged evidence submitted by the Complainant.

However, the Panel cannot decide in the Complainant’s favor solely given the Respondent’s default, but is entitled to draw, and does such inferences as it feels just from the Respondent’s failure to respond.

Taking in view the Policy the Complainant must convince the Panel of three elements if it wishes to have the domain name transferred. It is incumbent on the Complainant to show:

i) that the domain name is identical or confusingly similar to a trademark or service mark in which it holds rights;

ii) that the Respondent has no legitimate rights or interests in the Domain Name; and

iii) that the domain name was registered and used in bad faith.

These three elements are considered below.

A. Identical or Confusingly Similar

As stated above, the Complainant relies on its registered trademarks registered with various registering authorities all over the world and alleges that DANONE is a very strong trademark all over the world.

The disputed domain name is very similar to the trademarks owned by the Complainant. The Panel is of the opinion that the usage of the word “web” in the domain name does not really take away the confusingly similar nature of the domain name with the registered trademarks of the Complainant.

Given that the domain name is very similar to the Complainant’s DANONE trademark, the Panel is of the opinion that the Complainant has met the burden of proof as required by paragraph 4(a)(i) of the Policy.

It has also been well established by previous panel decisions that the domain name extension such as “.com”, does not prevent a domain name from being considered to be identical to a trademark (see The Little Gym International, Inc. v. Domainstuff.com, WIPO Case No. D2003-0466; Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO Case No. D2003-1042).

Other panels have addressed the question of domain names being confusingly similar to famous trademarks or service marks, for example relating to well known fashion companies. Fendi Adele S.r.l. v. Mark O’Flynn, WIPO Case No. D2000-1226; Calvin Klein Trademark Trust and Calvin klein, Inc. v. Rhythm, WIPO Case No. D2001-1295; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A, Ermenegildo Zegna Corporation v. Jacques Stade, WIPO Case No. DBZ2003-0003.

Thus, the Complainant has demonstrated to the satisfaction of this Panel that the Domain Name is confusingly similar to a trademark in which it holds rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests:

(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.

The Panel is of the opinion that no evidence has been provided which would support a finding under paragraph 4(c)(i) and (ii) of the Policy, i.e., the Panel is of the opinion that the evidence of record does not show use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services nor does it show that the Respondent has commonly been known by the Domain Name. The Panel is also of the opinion that the circumstances do not warrant a finding of rights or legitimate interests under paragraph 4(c)(iii) of the Policy.

Once a Complainant establish a prime facie case that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

In Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, it was held that “once lack of legitimate rights or interests has been alleged by a complainant, the respondent is obliged to adequately address this issue.” It was also held that “[t]his finding is supported by various means which are available to a respondent under the UDRP Policy to show rights or legitimate interests, on a balance of probabilities.” The CTCA Panel further relied on MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein it was held as follows: “The Administrative Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the complainant is correct in its assertion that the respondent has no rights or legitimate interests in the domain name and finds that the complainant has established prima facie that the Respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under Policy, paragraph 4(a)(ii). The Complainant’s adoption and extensive use of the DANONE mark for nearly three decades predates the first use of the domain name; the burden is on Respondent to establish its rights or legitimate interests in the domain name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.

It was held in Ford Motor Company v. International Newcastle, WIPO Case No. DBIZ2002-00185, that “[w]here complainant asserts that Respondent has no rights or legitimate interests and where respondent fails to contest such assertions, the panel is entitled to infer that respondent has no such rights or interests.” The instant case had further cited the cases Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011, as authorities to support the same.

The Panel finds it appropriate to draw an adverse inference from the Respondent’s failure to respond to the complaint (as has been so drawn in SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080, and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848).

There appears to be no bona fide offering of goods or services being carried out by use of the disputed domain name. Furthermore, the Respondent is not commonly known by the disputed domain name unlike the Complainant who has made a name for itself with its DANONE trademark.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in question.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Rules, for the purpose of paragraph 4(a)(iii) of the Policy, 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 the domain name in bad faith:

(i) circumstances indicating that [the respondent] has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent] has 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 [the respondent] has engaged in a pattern of such conduct; or

(iii) [the respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on [the respondent’s] website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

Pursuant to paragraph 4(a)(iii) of the Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the disputed domain name in bad faith. From a perusal of the documentation on the record of the case, it is apparent that the Respondent appears to have registered and is using the disputed domain name solely for commercial gain. The Respondent appears to derive a financial benefit from the website traffic that is diverted through the disputed domain name. Since the DANONE mark is widely known and the Respondent has no rights in it, the most likely reason why the Respondent could have wanted to register and use a disputed domain name incorporating the DANONE mark was that it knew of this mark and wanted to use it in the disputed domain name in order to profit from the traffic generated by the fame of the mark, and not for any legitimate noncommercial or fair use purpose.

The Respondent is in default in this proceeding. It thereby fails to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the disputed domain name.

The Panel finds that the registration has been done in bad faith as the Respondent could not have been unaware of the DANONE trademark, and notes that the website at the disputed domain name in question is used to provide clickable search links. These links generate revenue per click and hence, tantamount to commercial exploitation of the said domain name by the Respondent.

The Panel finds that based on the evidence before it, the Respondent is engaged in this activity in order to profit from the goodwill and reputation of the DANONE trademarks.

The Panel further notes that when one opens the disputed domain name <danoneweb.com> in the browser, on the right hand top comes the statement “This domain is for sale”. On the basis of the said crystal and unconditional statement available on the website of the disputed domain name, the Panel concludes that this itself demonstrates the registration and use of the disputed domain name in bad faith under paragraph 4(b) of the Rules, as detailed above.

In American University v. Richard Cook, NAF Claim No. 208629 was held that “Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”

In CompaГ±Г­a AnГіnima Cigarrera Bigott Sucesores v. Wang Yi-Chi WIPO Case No. D2004-0461, was held that, these facts, verified by the Panel, lead to the conclusion that the redirected use of the domain name <bigott.com> is not a legitimate use, and that the Respondent is not only preventing the owner of a mark from securing an Internet presence via the corresponding address, but also putting the domain name up for sale, and probably obtaining a financial gain derived from the attractiveness of a domain name that is equivalent to the mark of a third party, without carrying out legitimate commercial activity.

In Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, the learned panelist said:

“The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant’s trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant’s trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainant’s trademark in connection with the domain name at issue.”

The Panel concludes that the Respondent did in fact register and use the “toefl.com” domain name in bad faith. It has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. Although a supplemental, as opposed to competitive, user of the domain name might be willing to pay the price sought by Respondent, there is no reason based on the record to award this price to Respondent. The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.

In Rovert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, it was held that:

“paragraph 4(b) of the Policy sets out without limitation three examples of circumstances that if found “shall be evidence of the registration and use of a domain name in bad faith.” Subparagraph (i) lists circumstances that the respondent acquired the domain name primarily for the purpose of selling it to the complainant or a competitor. Here the evidence in the documentation submitted shows only one purpose selling for profit for respondent’s acquisition or registration of <musicweb.com>. There is no indication of any other actual or intended use of the domain name. The panel therefore concludes that the circumstances presented in this default proceeding qualify as sufficient evidence of registration and use in bad faith within the meaning of paragraph 4 of the Policy and applicable legal principles”.

The Panel finds that evidence on the record of the present case is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b).

The Panel finds that the Respondent has registered and is currently using the disputed domain name 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 <danoneweb.com> be transferred to the Complainant.

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Pavan Duggal
Sole Panelist

Dated: February 23, 2009