WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media

Case No. D2007-1630

 

1. The Parties

The Complainants are Compagnie Gervais Danone, France, and The Dannon Company Inc., United States of America, represented by Cabinet Dreyfus & Associs, Paris, France.

The Respondent is Greatplex Media, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <allthedannonyogurt.info> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2007. On November 6, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 9, 2007, Moniker Online Services, 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”), 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 November 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2007.

The Center appointed Adam Taylor as the sole panelist in this matter on December 17, 2007. 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 First Complainant is a company incorporated under French law. Its main brand “DANONE” was launched for yoghurt products in Barcelona, Spain around 1919. In about 1932, the First Complainant opened its factory for fresh dairy products at Levallois-Perret, France.

In 1967, the First Complainant merged with another company to form Gervais Danone. In 1973, that company merged with BSN to form BSN-GERVAIS DANONE, France’s largest food and beverage group with consolidated sales in 1973 of approximately 1.4 billion euros.

The Second Complainant is incorporated in Delaware in the United States of America. Since about 1942 the Second Complainant and its predecessors in title have supplied dairy products in the United States under the name “DANNON” (a variation of “DANONE”).

Both the First Complainant and Second Complainant are subsidiaries of the French company Groupe Danone. Hereafter, both Complainants are referred to collectively as “the Complainant”.

Today the Complainant is an international market leader in fresh dairy products and employs more than 89,000 people throughout the world. “DANONE” / “DANNON” represent almost 20% of the total market for fresh dairy products and are marketed in 40 countries. The Complainant has used “DANONE” / “DANNON” on labeling, packaging and promotional literature and the marks have been prominently displayed in supermarkets and grocery stores.

The Complainant owns numerous “DANONE” trademarks worldwide including the following:

- International trademark “DANONE” N 17252, filed on October 31, 1953 renewed and covering goods in classes 1, 5 and 29.

- International trademark “DANONE” N 228184, filed on February 2, 1960 renewed and covering goods in classes 1, 5, 29, 30, 31, 32 and 33.

- International trademark “DANONE” + logo, N 482337, filed on January 23, 1984 renewed and covering goods in classes 5, 29, 30 and 32.

- International trademark “DANONE” + logo, N 639073, filed on January 6, 1995 renewed and covering goods and services in 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 and 42.

- International trademark “DANONE” N 649535, filed on December 1, 1995 renewed and covering goods and services in classes 5, 29, 30, 31, 32 and 42.

- International trademark “DANONE” N 667644, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark “DANONE” N 667645, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark “DANONE” N 667646, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark “DANONE” N667837, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark “DANONE” N668079, filed on February 3, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark “DANONE” N849889, filed on October 29, 2004 and covering goods in classes 5, 29, 30, 32, 35, 38 and 43.

- United States national trademark ‘“DANONE” ACTIV’ n2951239, filed on July 5, 2000 and covering goods in classes 29, 30 and 32.

- United States national trademark “DANONE” + logo n2827606, filed on November 19, 2001 and covering goods in class 32.

- United States national trademark “DANONE” + logo n2924636, filed on July 15, 2002 and covering goods in classes 5, 29 and 30.

- United States national trademark ‘“DANONE” CREME DE YAOURT’ n2839555, filed on August 5, 2002 and covering goods in classes 29 and 30.

- United States national trademark ‘DANNON’ N73357013, filed on January 24, 1984 renewed and covering goods in class 29.

- United States national trademark ‘DANNON’ N75220946, filed on May 4, 1999 and covering goods in class 25.

- United States national trademark ‘DANNON’ N75978567, filed on December 28, 1999 and covering goods in class 29.

- United States national trademark ‘DANNON’ N76329727, filed on May 17, 2005 and covering goods in class 35.

- United States national trademark ‘DANNON’ N78746407, filed on September 12, 2007 and covering goods in class 32.

- United States national trademark ‘DANNON’ N78591693, filed on March 21, 2005 and covering goods in class 25.

The disputed domain name was registered on July 16, 2007.

As of October 13, 2007, the disputed domain name resolved to a website branded with the disputed domain name and which comprised sponsored links to a range of websites, the most of prominent of which were dairy-related websites.

The Complainant sent a cease and desist letter to the Respondent on July 26, 2007, and sent two reminders on August 20, 2007, and on September 21, 2007. No response was received.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The disputed domain name includes the entire trademark “DANNON”. The common terms “allthe” and “yogurt” are insufficient to avoid any risk of confusion with the trademark

Such a change is not enough to distinguish the domain name from the Complainant’s trademarks “DANNON” and “DANONE”. On the contrary, it increases the likelihood of confusion by suggesting that the domain name is relevant to Danone’s activities and the reference to “yogurt” increases the confusion as the Complainant is a market leader in fresh dairy products.

Accordingly, the Complainant submits, the disputed domain name is confusingly similar to the Complainant’s trademarks “DANNON” and “DANONE”.

Rights or Legitimate Interests

The Respondent is not affiliated with Complainant in any way and the Complainant has not authorized it to use and register its trademarks, or to register any domain name incorporating those marks.

Furthermore, the Complainant submits that the Respondent has no prior rights or legitimate interest in the domain name. The registration of various “DANNON” and “DANONE” trademarks preceded the registration of the disputed domain name by many years.

It is unlikely that the term “DANNON” has a special meaning in English.

Since the disputed domain name is so similar to the famous trademarks of the Complainant, the Respondent can not reasonably claim that it was intending to develop a legitimate activity.

Registered and Used in Bad Faith

The Complainant contends that it is obvious that the Respondent knew or must have known of the Complainant’s dairy products at the time it registered the disputed domain name.

The Complainant is a well-known firm worldwide and “DANNON” and “DANONE” are famous trademarks and trade names. The terms are also used in the Complainant’s corporate names.

The mere addition of the word ‘yogurt’, a generic term, clearly indicates that the Respondent had the Complainant in mind while registering the domain name.

There are elements indicating that the Respondent also used the domain name in bad faith.

The disputed domain name directs users to a page offering commercial links in the field of dairy products. It appears that the Respondent registered the disputed domain name in order to take advantage of the fame of the Complainant’s trademarks. This is evidence of use of the domain name in bad faith.

Moreover, a finding of bad faith can be made where the Respondent ‘knew or should have known” of the Complainant’s trademark rights, and nevertheless registered a domain name incorporating that mark, in circumstances where the Respondent itself had no rights or legitimate interests (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763).

The Complainant finally argues that the lack of response to the Complainant’s cease and desist letter constitutes additional evidence of the Respondent’s bad faith.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established trademark rights in “DANNON” and “DANONE” by virtue of its many registered trademarks as well as its extensive worldwide trading activities under those names.

Disregarding the domain suffix, the disputed domain name differs from the Complainant’s trademark “DANNON” only by the addition of the generic terms “all the” and “yogurt”. These are insufficient to differentiate the domain name and trademark; indeed the term “yogurt” enhances the connection given the nature of the Complainant’s business.

The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent registered the disputed domain name with the Complainant in mind. The disputed domain name includes the Complainant’s distinctive mark “DANNON” as well as the generic term “yogurt” which obviously denotes of the products for which the Complainant is well-known. Furthermore the Respondent has used the disputed domain name for a website with affiliate links to dairy-related websites.

The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel therefore finds that the Complainant has established the third element of the Policy.

 

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 <allthedannonyogurt.info> be cancelled as requested by the Complainant.


Adam Taylor
Sole Panelist

Dated: December 27, 2007