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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero

Case No. D2009-1050

1. The Parties

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

The Respondent is Jose Gregorio Hernandez Quintero of Spain.

2. The Domain Name and Registrar

The Domain Name <activa.biz> is registered with Everyone`s Internet Ltd. dba Resellone.net.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2009. On August 6, 2009, the Center transmitted by email to Everyones Internet, Ltd. dba resellone.net a request for registrar verification in connection with the Domain Name. On August 12, 2009, Everyones Internet, Ltd. dba resellone.net 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 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on September 4, 2009.

The Center appointed Luca Barbero as the sole panelist in this matter on September 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 Compagnie Gervais Danone, a subsidiary of the French Company Danone, which is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition. The Complainant is the owner of several International trademark registrations designating Spain, were the Respondent is based, consisting in the sign ACTIVIA such as the International trademark registration No.725041 registered on October 13, 1999 in classes 29, 30 and 32 and the International trademark registration No.759380 registered on May 18, 2001 in class 38. The Complainant is also the owner of Spanish trademark registrations for ACTIVIA, such as the Spanish trademark registration No.26788228 registered on October 16, 2006 in classes 5, 29 and 32.

The Complainant is furthermore the registrant of a number of domain names consisting in or including the sign ACTIVIA such as <activia.com> registered on October 10, 2003, <activia.es> registered on November 11, 2005 and <activia.biz> registered on October 26, 2003.

The Respondent registered the Domain Name <activa.biz> on January 27, 2009.

5. Parties` Contentions

A. Complainant

The Complainant points out that Compagnie Gervais Danone is a subsidiary of the French company Danone, which is nowadays a global leader in the consumer goods industry.

The Complainant contends that the Domain Name <activa.biz> is confusingly similar to trademarks and domain names in which the Complainant has rights as it reproduces the sign ACTIVIA minus the letter "i", thus redirecting Internet user who may have an imperfect knowledge of the name "activia" or might accidentally omit to type the letter "i" to the Respondent`s web site.

With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that 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 ACTIVIA trademark or to seek registration of any domain name incorporating said mark. The Complainant also highlights that the Respondent is not currently known, nor has been known, by the name "Activia" and 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 Complainant also underlines that the Respondent`s use of the disputed Domain Name for a web site were numerous pay-per-click links are published does not represent a use in connection with a bona fide offering of goods and services.

In addition, the Complainant informs the Panel that the Respondent contacted the Complainant after receiving the Complainant`s cease and desist letter and that in said circumstance did not take the opportunity to state its rights and legitimate interests in the disputed Domain Name, indeed showing its intention to sell the disputed Domain Name to the Complainant.

The Complainant concludes with reference to the issue of the rights or legitimate interest that the Respondent has no rights or legitimate interests with respect to the disputed Domain Name.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the trademark ACTIVIA is widely known in the world, is certainly well known in Spain, where the Respondent is based, and that the notoriety of the trademark has also been highlighted by a previous panel decision (CompanieGervais Danone v. Laurie Cheoux, WIPO Case No. D2008-1678). The Complainant also informs the Panel that the Respondent registered the domain name <activia.com.es> identical to the Complainant`s ACTIVIA trademark on the same day that the disputed Domain Name was registered and that circumstance, according to the Complainant, evidences that the Respondent was well aware of the Complainant`s trademark.

The Complainant also emphasizes that, in the answer to the cease and desist letter, the Respondent indicated to the Complainant that the Domain Name was for sale on Sedo at EUR 220 and that he was also willing to sell to the Complainant other domain names that could be of interest for the Complainant, such as <yoghurt.es>, at EUR 660. This circumstance, according to the Complainant, clearly evidences that the Respondent registered the disputed Domain Name with the purpose of selling it for an amount well in excess of the out of pocket costs.

As a circumstance evidencing bad faith in the use of the Domain Name, the Complainant highlights that the Domain Name has been used by the Respondent for a website containing various commercial links related, amongst others, to the Complainant` products and also to the Complainant`s web site "www.danoneetvous.com" and that said circumstance proves that the Respondent was aware of the Complainant`s trademark rights in DANONE and ACTIVIA and wanted to take advantage of the trademarks` fame diverting consumers to his web site.

The Complainant concludes that the Respondent both registered and used the domain name <activa.biz> in bad faith in accordance with paragraph 4(a)(iii) of the Policy and requested the cancellation of the domain name.

B. Respondent

The Respondent did not reply to the Complainant`s contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of the Complainant`s submissions, drawing such inferences from the Respondent`s default that is considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registrations for ACTIVIA such as the International trademark registration No.725041 registered on October 13, 1999 in classes 29, 30 and 32 and the International trademark registration No.759380 registered on May 18, 2001 in class 38. The Complainant is also the owner of Spanish trademark registrations for ACTIVIA, such as the Spanish trademark registration No.26788228 registered on September 19, 2006 in classes 5, 29 and 32.

The Panel finds that the Domain Name is confusingly similar to the registered trademark ACTIVIA owned by the Complainant since the Respondent has merely eliminated one letter "i" from the trademark which is certainly not sufficient to exclude the confusingly similarity (Fry`s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435).

The same reasoning was adopted in VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240 where the deletion of letter "s" in domain name <superclubbreeze.com> was found not to alter the confusing similarity between the domain name and complainant`s marks SUPERCLUBS BREEZES, in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services, WIPO Case No. D2003-0841 where the deletion of the letter "s" in domain name <hersheychocolateworld.com> was found to be confusingly similar to complainant`s <hersheyschocolateworld.com> domain name; and in Pop Smear, Inc. v. Craig Singer, NAF Case No. FA94945 (deletion of single letter "s" from complainant`s registered mark 1800POSTCARDS.COM creates a confusingly similar domain name).

In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

"(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."

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent`s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant`s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, that he has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Name.

The Panel finds that under the circumstances the use of the disputed Domain Name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, non commercial use of the disputed Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.

See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: "the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy."

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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 holder 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 holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder`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 holder`s website or location.

As to bad faith at the time of the registration, the Panel finds that in light of use of the trademark ACTIVIA since 1987, the amount of advertising and sales of Complainant`s products worldwide and especially in Spain, the registration by the Respondent of the domain name <activia.com.es> identical to the Complainant`s trademark on the same day, the Respondent was well aware of the existence of the trademark ACTIVIA.

The Panel shares the view of a number of panel findings of "opportunistic bad faith" in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Clicquot Ponsardin, Maison Fondée en 1772 v.The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O`Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 "...it is obvious that the value and goodwill, of the Complainant`s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith".

With reference to circumstances evidencing bad faith in the use of the Domain Name, the Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent`s website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see inter aliaManheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044; Fry`s Electronics, Inc v. Whois ID Theft Protection WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286).

The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a web site for commercial gain, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation or endorsement of the Respondent`s services.

As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 "it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith".

The Panel also finds that typosquatting constitutes an additional evidence of bad faith (Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286; National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino ("TBC") v. Craig Miller, WIPO Case No. D2006-0536 (stating that "in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed").

In view of the above, the Panel finds that the Domain Name was registered and is being 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 <activa.biz> be cancelled.

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Luca Barbero
Sole Panelist

Dated: September 23, 2009