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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Sequential Inc

Case No. D2009-1007

1. The Parties

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

Respondent is Sequential Inc of India.

2. The Domain Name and Registrar

The disputed domain name <activiachalenge.com> (the "Domain Name") is registered with M. G. Infocom Pvt. Ltd. dba MindGenies.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 27, 2009. On July 28, 2009, the Center transmitted by email to M. G. Infocom Pvt. Ltd. dba MindGenies a request for registrar verification in connection with the disputed domain name. On July 28, 2009, M. G. Infocom Pvt. Ltd. dba MindGenies 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 August 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on August 25, 2009.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 31, 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, Compagnie Gervais Danone, is a subsidiary of the French company, Danone, which was founded approximately 90 years ago in 1919. Complainant is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition, employing nearly 90,000 people in all five continents. Complainant represents almost 20% of the international market in fresh dairy products and is present in 80 countries.

Complainant`s brand, ACTIVIA, was launched in 1987 in France, in 2002 in Japan and in 2005 in The People`s Republic of China. The probiotic culture in Activia is unique to Danone. Activia is one of the Complainant`s most successful dairy products. In 2008, 1,150,000 tons of Activia products were sold throughout the world – the equivalent of 9 billion pots. Activia is available in more than 70 countries, including in the India where Respondent is located. A few years ago, Danone launched the "Activia Challenge": a 14 day program that refunds consumers up to 12 USD if the yogurt did not help regulate their digestive system.

Complainant has submitted evidence to show that it is the holder of numerous registered trademarks for the ACTIVIA mark (dating from 1999) in countries throughout the world, including:

- ACTIVIA, International Trademark nВ° 725041 registered on October 13, 1999 and covering goods in classes 29, 30 and 32;

, International Trademark nВ° 752427 registered on November 28, 2000 and covering goods in classes 29, 30 and 32;

- ACTIVIA, International Trademark nВ° 759380 registered on May 18, 2001 and covering services in class 38;

, International Trademark nВ° 812046 registered on August 14, 2003 and covering goods in class 29;

, International Trademark nВ° 893078 registered on June 7, 2006 and covering goods in classes 29, 30 and 32;

, International Trademark nВ° 893712 registered on May 18, 2006 and covering goods in classes 29, 30 and 32.

Moreover, Complainant has registered several ACTIVIA trademarks in India, where Respondent is located:

- ACTIVIA + LOGO, nВ° 963534 registered on April 28, 2005 and covering goods in class 32;

- ACTIVIA nВ°882535 registered on January 12, 2006 and covering goods in class 30;

- ACTIVIA nВ°882534 registered on October 20, 1999 and covering goods in class 32;

- ACTIVIA + LOGO, nВ°963535 registered on May 24, 2006 and covering goods in class 30.

Additionally, Complainant is also the owner of several domain names, including:

- <activia.com>

- <activia.co.th>

- <activia.fr>

The Domain Name <activiachalenge.com> was registered on January 23, 2009. As of the date of this decision, the Domain Name resolves to a landing page with various sponsored links.

5. Parties` Contentions

A. Complainant

(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant states that the predominant part of the Domain Name <activiachalenge.com> is ACTIVIA, Complainant`s registered trademark. The mere addition of the word "chalenge" is not sufficient to distinguish the Domain Name from the Complainant`s ACTIVIA mark. Indeed, the term "chalenge", even though it is wrongly spelled, is a common English word and numerous WIPO UDRP decisions have recognized that adding generic words is insufficient to give any distinctiveness to the domain name in dispute. Moreover, Complainant has based an important advertising campaign on a program called the "Activia Challenge". This concept is present on several of its websites, for example http://www.activia.us.com/activia_challenge.asp.

The Domain Name thus fully incorporates the name of Complainant`s trademark and a concept that was invented by Complainant, which increases the likelihood of confusion. As a consequence, Respondent`s Domain Name <activiachalenge.com> is highly similar to Complainant`s trademark ACTIVIA. By registering the Domain Name, Respondent created a likelihood of confusion with Complainant`s trademark. It is likely that the Domain Name could mislead Internet users in thinking it is in some way associated with Complainant.

(2) The Respondent has no rights or legitimate interests in respect of the Domain Name: Complainant contends that Respondent is not currently known, nor has been known, by the name ACTIVIA. Respondent is not affiliated with Complainant, nor has Respondent been authorized by Complainant to register and use Complainant`s ACTIVIA trademark or to seek registration of any domain name incorporating said mark.

In addition, Respondent has not proved so far to be the holder of prior rights or to have any legitimate interest in the Domain Name. The mark ACTIVIA is well-known and is widely used by Complainant, and Complainant`s rights in the mark precede Respondent`s registration of <activiachalenge.com> by a considerable length of time.

Furthermore, the term "activia" has no meaning whatsoever in English, or in Hindi, which is the language of the Respondent, according to an online dictionary, or in any other language.

Moreover, the Domain Name is so identical to the well-known trademark of Complainant, that Respondent cannot reasonably pretend it was intending to develop a legitimate activity. To the best of Complainant`s knowledge, Respondent has so far neither used nor made any demonstrable preparation to use the Domain Name or a name corresponding to the Domain Name in connection with bona fide offering of goods or services. The Domain Name links towards a website with the presence of what appears to be pay-per-click advertising links. Respondent`s use of the Domain Name serves the purpose of generating revenue via advertised pay-per-click products and links. It has been held in previous UDRP cases that such use does not represent a use in connection with a bona fide offering of goods and services. For all these reasons, Complainant contends that Respondent has no rights or legitimate interests with respect to the Domain Name.

(3) The domain name was registered and is being used in bad faith: As discussed above, Complainant contends that it and its ACTIVIA trademark are widely known throughout the world. The reputation of the trademark ACTIVIA has been recognized in several WIPO UDRP decisions. For example, in the case Compagnie Gervais Danone contre Isaac Simon, WIPO Case No. DFR2007-0030, the panel highlighted the notoriety attached to this mark. Moreover, in CompanieGervais Danone v. Laurie Cheoux, WIPO Case No. D2008-1678, the panel noted that the ACTIVIA trademark is extensively advertised. ACTIVIA and Complainant`s other trademarks are extensively used and known in South East Asia. Complainant thus urges that it is obvious that Respondent knew or must have known of the Complainant`s trademarks at the time it registered the Domain Name. A respondent`s knowledge of a complainant`s trademark when registering a domain name containing the trademark constitutes bad faith registration.

Further evidence of this knowledge comes from the association between the words "activia" and "challenge" in the Domain Name, which would be a curious coincidence if Respondent was not aware of Complainant`s program called the "Activia Challenge." It is thus clear that the purpose of the registration of the Domain Name was to attract users to the Respondent`s pay-per-click website. By using this Domain Name, Respondent takes advantage of Complainant`s reputation. In addition, a trademark search at the date of registration of the Domain Name would have revealed Complainant`s trademark registrations and this is further evidence of Respondent`s registration in bad faith. Moreover, simple searches via Google or any other search engine using respectively the keywords, "activia" or "Activia Challenge," would show that all first results relate to Complainant`s products or news and to the existing Activia Challenge program.

Therefore, in this era of the Internet and globalization, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of the Domain Name. All above mentioned circumstances confirm that the Domain Name was registered in bad faith.

When Complainant first discovered the registration of the Domain Name, it directed toward a pay-per-click website containing various commercial links. When an Internet user enters "danone" or "activia" in the search engine of the website, they are directed towards a second parking page which contains the links that reproduce Complainant`s trademark, such as "activia.fr". Thus, Complainant argues that it is obvious that Respondent chose these links to divert Internet users to its website. Many users attempting to consult Complainant`s website have certainly ended up at the website of Respondent. The latter is therefore profiting from the reputation and good will of Complainant. It may reasonably be concluded that Respondent was operating the click-through or pay-per-click device whereby the operators of other websites pay a commission to Respondent for traffic redirected to them.

Panels have previously stated in numerous decisions that using famous trademarks to attract Internet users to a website for commercial gain constitutes bad faith use. Consequently, in view of the above, Complainant asserts that Respondent both registered and used the Domain Name <activiachalenge.com> in bad faith.

B. Respondent

Respondent did not reply to Complainant`s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) the Domain Name in issue is identical or confusingly similar to Complainant`s mark; and

(ii) 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by the Respondent may be evidence of Respondent`s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. In this case, however, Respondent has not submitted a Response.

A. Identical or Confusingly Similar

Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that Complainant has fully met its burden. The Domain Name is confusingly similar to Complainant`s widely-known ACTIVIA trademark because it incorporates the entirety of this mark, while combining it with the term "chalenge," misspelling this second term by omitting an "l." The term "challenge" is obviously taken from a specific and well-publicized program invented by the Complainant, known as the "Activia Challenge." Thus, the combination of these terms together in the Domain Name only heightens the potential for confusion. As a result, the Panel finds that Respondent`s Domain Name is confusingly similar to Complainant`s ACTIVIA mark, and therefore the condition of paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor is Respondent generally known by the Domain Name or authorized by Complainant to use the ACTIVIA trademark or make reference to its Activia Challenge program. See Telstra Corporation. Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant`s trademark).

As noted above, the ACTIVIA mark is widely-known and widely used by Complainant, whose rights in this mark predate Respondent`s registration of the Domain Name. The Panel agrees that the Domain Name is so closely identical to the widely-known trademark of Complainant and its invented Activia Challenge program, that Respondent could not reasonably pretend it was intending to develop a legitimate activity. Instead, the Domain Name links to a website containing pay-per-click advertising links. This use of the Domain Name, taking advantage of the goodwill and reputation in Complainant`s marks, does not represent a use in connection with a bona fide offering of goods and services. See Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.

In the light of the above analysis, Complainant has established prima facie evidence that none of the circumstances establishing legitimate interests or rights applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts to respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). However, because Respondent failed to submit an answer to the Complaint, and given that the allegations of Complaint prima facie do not raise any substantial doubts, the Panelist accepts as true the allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.

For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As mentioned above and recognized by other UDRP panels, Complainant`s ACTIVIA trademark, which stems from a made-up word, has acquired distinctiveness and is well-known in many countries of the world, identifying certain fresh dairy products marketed by Complainant. The Panel thus agrees with the Complainant that it is highly likely that Respondent registered the Domain Name in January 2009 with knowledge of the Complainant`s mark. Respondent appears to have intentionally registered the Domain Name, which entirely incorporates Complainant`s mark while combining it with the misspelling of the term "challenge" into a single Domain Name to take advantage of Complainant`s "Activia Challenge" program. There is no plausible reason for why Respondent would have otherwise registered the Domain Name combining these terms. Moreover, when viewing Respondent`s website, one can observe that it attracts Internet users by creating a likelihood of confusion with Complainant`s marks. The Panel confirmed that the Domain Name resolves to a website containing pay-per-click advertising links.

This is evidence of Respondent`s bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any response from the Respondent, there is no attempt at any rebuttal. In the case Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397, the Panel found as follows: "In the present case, the Panel finds that, since Complainant`s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant`s trademark rights. The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith." The same analysis applies here. See also Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation. v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; The Body Shop International plc v. A-Team/ Lasse Nygaard, WIPO Case No. DAS2003-0001; Bartercard Ltd & Bartercard International Pty Lt. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.

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 <activiachalenge.com> be cancelled.

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Christopher S. Gibson
Sole Panelist

Dated: September 7, 2009