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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Filip Skoczynski

Case No. D2009-0478

1. The Parties

Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.

Respondent is Filip Skoczynski of Malbork, Poland.

2. The Domain Name and Registrar

The disputed domain name <danonki.net> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2009. On April 15, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On April 15, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on May 8, 2009.

The Center appointed Kristiina Harenko as the sole panelist in this matter on May 29, 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

Complainant is a subsidiary of the French company Groupe Danone. Complainant is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition. Complainant employs nearly 90,000 people in five continents and is the global leader in dairy products and number two in bottled water. Complainant represents almost 20% of the international market in fresh dairy products and is present in 80 countries.

Complainant is present in several sectors, and particularly in the children`s food market. Complainant`s trademark DANONKI is used to promote children`s foods, including a variety of products such as fruit yoghurts. DANONKI is a very widely-known trademark in Eastern Europe, particularly in Poland where its activity is very developed. Complainant has the domain name <danonki.pl> dedicated to said mark. Complainant has so effectively advertised its DANONKI products that its ads have been classified in the top 15 of the most watched TV spots in Poland. Complainant is also very attentive to the presentation of its products in stores to attract customers. In Central European markets in 2006, sales of DANONE products were up 21% and continued double-digit growth in Poland. Complainant also began a campaign against malnutrition in 2002, forming a partnership with two Polish scientific institutes.

Respondent registered the disputed domain name on August 27, 2008.

Complainant owns the following trademark registrations and applications:

International registration designating Poland:

- DANONKI no. 788998 registered on August 30, 2002

National registrations in Poland:

- DANONKI figurative mark no. 253496 registered on January 20, 2006

- DANONKI no. 203352 registered on October 2, 2002

- DANONKI figurative mark no. 338037 application filed on March 11, 2008

Complainant is also the owner of the following domain names

- <danonki.pl>

- <danonki.eu>

- <danonki.lv>

- <danonki.lt>

Complainant has sent cease-and-desist letter by e-mail, fax and registered letter on March 19, 2009, but Complainant has never received any response from Respondent.

Complainant also sent a cease-and-desist letter by e-mail and fax to the hosting provider Netdirect e.K. and to the registrar Home.pl sp.j. to inform them of the existence of the domain name <danonki.net> which directed towards a pornographic website. Later on, the hosting provider called Complainant to discuss the matter and decided to erase the pornographic website since DANONKI is a protected trademark for children.

5. Parties` Contentions

A. Complainant

Complainant contends that the predominant part of the disputed domain name <danonki.net> is DANONKI, the registered trademark of Complainant. The extension ".net" is not to be taken into consideration when examining the identity or similarity between the Complainant`s trademark and the disputed domain name. As a consequence, Respondent`s domain name <danonki.net> is identical to Complainant`s trademark DANONKI.

Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized by Complainant to register and use Complainant`s DANONKI trademark or to seek registration of any domain name incorporating said mark. Furthermore, Respondent has so far not proved to be the holder of prior rights or to have any legitimate interest in the disputed domain name. The mark DANONKI is well-known and is widely used by Complainant. The word DANONKI has no special meaning in Polish or in any other language. Furthermore, Respondent is not currently known, nor has been known by the name DANONKI. Besides, since the domain name in dispute is so identical to the well-known trademark of Complainant, Respondent cannot reasonably pretend it was intending to develop a legitimate activity.

It is obvious that children searching for information on the DANONKI products on the internet were likely to have been directed towards the pornographic website under the disputed domain name reproducing this well-known trademark. Such situation could not constitute a legitimate interest. Complainant concludes that it has undoubtedly established that Respondent has no rights or legitimate interests with respect to the disputed domain name under Paragraph 4(a)(iii) of the Policy.

Complainant contends that Complainant`s trademark is well-known in Poland and Eastern Europe as a whole, where Respondent is located. Complainant has put on a great deal of advertising to increase the fame of DANONKI trademark. It is obvious that Respondent knew or must have known Complainant`s trademark at the time it registered the disputed domain name. Respondent`s knowledge of Complainant`s trademark when registering the disputed domain name constitutes bad faith registration. Respondent had no reason to choose the disputed domain name except to create an association with the DANONKI trademark in order to attract users to its website. By using this domain name, Respondent takes advantage of Complainant`s reputation.

In addition, the fact that a trademark search conducted on the date of the registration of the disputed domain name would have revealed Complainant`s trademark registrations in Poland is further proof of Respondent`s bad faith registration. Moreover, a simple search via Google or any other search engine using the keyword DANONKI shows that all first results relate to Complainant`s products. In these circumstances it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of disputed domain name.

Before the hosting provider erased the website, Respondent used it to present pornographic photos. This constitutes evidence of Respondent`s use in bad faith as found in previous UDRP decisions. The diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith.

In addition, Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant`s trademark. The website contained links to websites including, inter alia, "www.chooghoogames.com", "www.sandywestgate.com", "www.glamurno.com" and "www.erotica-archives.com" (some of these websites contained adult content), which very likely produced commercial gain for Respondent. Furthermore, the consumers of the products connected to the DANONE trademark are mostly, though not exclusively, children, who could have been exposed to the pornographic photos present on the website. This is not only confusing for the consumers, but can also create a dilution of the trademark. The website also contained a link to a website ("www.chooghoogames.co.uk") dedicated to children`s games, which increases the confusion for the consumers and the dilution of the trademark.

Complainant also contends that the disputed domain name now directs towards an inactive website. Registering a domain name and passively holding it has been considered to be evidence of use in bad faith in many UDRP cases. In the present case, inactivity by the Respondent amounts to the disputed domain name being used in bad faith. In the present case, the circumstances are the following:

- the use of a domain name which reproduces a famous trademark cannot be legitimate

- the lack of response to Complainant`s cease-and-desist letter constitutes additional evidence of Respondent`s bad faith

- Before being inactive, the website contained pornographic photos and DANONKI is a trademark dedicated to children`s products.

Consequently, the Complainant submits, it is established that Respondent both registered and used the domain name <danonki.net> in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Under paragraph 15(a) of the Rules, this Panel must "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

In view of Respondent`s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant`s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The disputed domain name <danonki.net> contains the Complainant`s trademark DANONKI in its entirety. The ".net" suffix denoting the top level domain does not affect the determination that the disputed domain name <danonki.net> is identical to Complainant`s trademark DANONKI.

B. Rights or Legitimate Interests

In this respect Complainant has, according to paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue. However, once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests the burden shifts to Respondent. See Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

Complainant`s registration and use of the trademark DANONKI pre-date Respondent`s registration of the disputed domain name <danonki.net>. This Panel finds that the trademark is well-known in Poland where the Respondent is located. Respondent is not affiliated with DANONKI in any way, nor has Respondent been authorized by Complainant to register and use Complainant`s DANONKI trademark.

In addition, it has been shown that Respondent appears not to run any legitimate business associated with the disputed domain name but has only used the disputed domain name reproducing a well-known trademark (dedicated to children) in order to direct it towards an adult-content website or retained it for passive holding. Accordingly, the Panel finds that Complainant has established a prima facie case in relation to the second element of the Policy.

Respondent has not filed any Response to the Complaint and thus has not provided any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication in the evidence it received that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Given the circumstances the Panel finds that Respondent has no rights or legitimate interests in respect of disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of determining if bad faith is present, the Panel considered the circumstances of the registration and use of the disputed domain name in light of paragraph 4(b) of the Policy, noting that the examples of registration and use in bad faith therein are non-exhaustive.

When registering the disputed domain name the trademark DANONKI was well-known at least in Poland where the Respondent is located. Where a domain name is so obviously connected with a well-known trademark, its mere use by a person not authorised to use the trademark in question is indicative of opportunistic bad faith.

Furthermore, as Complainant has contended, the diversion of the disputed domain name to an adult-content site is itself consistent with the finding that the disputed domain name was registered and is being used in bad faith. In addition, Complainant contended that Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant`s trademark. The evidence indicates that at least some revenues may have been generated from advertising.

Respondent has at one time diverted the disputed domain name to an adult-content site. The Panel finds that this can create a dilution of the trademark.

The disputed domain name currently directs towards an inactive website. The arguments by Complainant, as summarized above under paragraph 5A and supported by Complainant`s evidence on the record, have convinced the Panel that Respondent is using the disputed domain name in bad faith.

Given the circumstances described above the Panel finds that Respondent has registered and is using the disputed domain name in bad faith. The lack of a response to this Complaint leads the Panel to infer that Respondent, in all likelihood, could not demonstrate any good faith use of the disputed domain name.

In view of the evidence provided, the Panel finds that Respondent registered and is using the disputed domain name <danonki.net> 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 <danonki.net> be transferred to the Complainant.

Kristiina Harenko
Sole Panelist

Dated: June 10, 2009