WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi

Case No. D2007-1918

 

1. The Parties

The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & associs, France.

The Respondent is yunengdonglishangmao(beijing)youxiangongsi, Beijing, China.

 

2. The Domain Name and Registrar

The disputed domain name is <danonefood.com> (the “Domain Name”), registered with Hichina Web Solutions (Hong Kong) Limited.

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2007 electronically and in hardcopy on January 4, 2008. On December 28, 2007 and January 3 & 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 4, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center dated January 7, 2008 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 9, 2008. The Center verified that the Complaint together with the amendment to 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”).

3.2 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 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2008.

3.3. The Complaint has been submitted in English requesting that English be the language of the proceedings. The Complainant argued inter alia that it was unable to communicate in Chinese and that the proceeding would inevitably be unduly delayed. It also stated that the Complainant would have to incur substantial expenses for such translations. These arguments will be dealt with in detail later in this decision under the language sub-heading. The Center allowed the Complaint in English and the Response in English or Chinese and appointed a Panel familiar with both languages. The Center left the issue of the language of the proceedings to be determined by the Panel.

3.3 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on February 13, 2008. The Panel finds that it was properly constituted. It 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

4.1 The Complainant’s main brand DANONE was said to have been founded in 1919 in Barcelona, Spain and was launched for yoghurts. Danone then opened in France in 1932 and merged with Gervais in 1967. It finally merged again with BSN in 1973 to form France’s largest food and beverage group with consolidated sales in 1973 of approximately 1.4 billion euros.

4.2 The DANONE trademark has been registered by the Complainant as a trademark in various forms in various countries. The Complainant has annexed to its Complaint a long list of the trademarks, which include the following (all of which appear to be simple word marks):

– International trademark DANONE N 172526, 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.

The Complainant submits that it is a worldwide company leading in fresh dairy products employing more than 89,499 people throughout the world and its DANONE trademark is the world’s top brand for fresh dairy products and represents almost 20% of the international market. Furthermore, the Complainant indicates that the trademark DANONE is present in 40 countries worldwide.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:

(i) The domain name in dispute reproduces precisely and entirely the trademark DANONE. The trademark DANONE is clearly identifiable in the disputed domain name and the mere adjunction of the common term “food” is not sufficient to avoid any risk of confusion with the trademark. It was further argued that simply adding the word “food” to the DANONE trademark seems to increase the likelihood of confusion by making readers think that said domain name is specific to Danone’s activities and that a reference to “food” increases the confusion as the main activity of the Complainant is in the food field. In this respect it relies upon the decision of Compagnie Gervais Danone S.A. v. Karim Saada, WIPO Case No. D2006-0986.

(ii) The mere adjunction of the gTLD “.com”, “.net”, “.mobi”, “.info”, “.biz” is not a distinguishing feature and does not have an impact on the likelihood of confusion. The Complainant has referred to the decision in DZ Bank AG v. Bentz, WIPO Case No. D2006-0414 that held that the addition of the domain name extension does not remove the likelihood of confusion merely because it is necessary for the registration of the domain name itself and that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the previous mark and the domain name.

5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:

(i) The Respondent is not in any way affiliated with the Complainant and has not been authorized by the Complainant to use and register its trademarks, or to seek the registration of any domain name incorporating said marks.

(ii) The Respondent has no prior rights or legitimate interests in the domain name. The registration of several DANONE trademarks preceded the registration of the Domain Name <danonefood.com> for years.

5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:

(i) Given the fame of the Complainant’s trademark and business, the Respondent was aware of the existence of the DANONE trademark at the time when he registered the Domain Name.

(ii) The Complainant is a well-known firm worldwide and DANONE is not only a famous trademark but also a famous trade name. The term “danone” is also used in the corporate name Compagnie Gervais Danone and that a simple search via Google using the keyword “danone” demonstrates that all first results relate to the Complainant’s products or news.

(iii) The mere addition of the word “food”, being a generic term, linked with the Complainant’s main activity indicates that the Respondent had the Complainant in mind while registering the Domain Name in dispute.

(iv) The disputed Domain Name directs users to a page which seems to propose Chinese commercial links for different goods and services. The Respondent registered the disputed Domain Name taking advantage of the Complainant’s trademarks’ notoriety and that it indicates that the Respondent had registered the disputed Domain Name to make a profit based on these commercial links and that it is evidence of use of the Domain Name in bad faith (Compagnie Gervais Danone v. Isaac Simon, WIPO Case No. DFR2007-0030).

(v) The Respondent provided an inaccurate contact fax number and email address.

(vi) The lack of response to the Complainant’s cease-and-desist letters, whether drafted in Chinese or in English, constitutes an additional evidence of the Respondent’s bad faith and that this leads the Complainant to conclude that the Domain Name is registered and is used in bad faith.

The Complainant requests a decision that the Domain Name be cancelled.

B. Respondent

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

 

6. Discussion and Findings

A. Language of Proceedings

6.1 The Complaint was filed in the English language. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed domain name is Chinese. The default language of the proceeding is Chinese, being the language of the Domain Name Registration and Service Agreement, pursuant to the paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.

6.2 According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

6.3 In the present case, the commencement of the administrative proceeding was notified to the Respondent both in the English and Chinese languages but there was neither a response nor any objection made by the Respondent. Although the Chinese language is the language of the registration agreement for the Domain Name, the Complainant asserts that English should be the language of proceedings. The Panel notes that the Respondent has not objected to English as the language of this proceeding even though invited to comment to these matters in Chinese. Although the inability of the Complainant to communicate efficiently in the Chinese language cannot solely be a proper legal basis for not adopting the default language of proceedings, the Panel views that it is significant that there has not been an objection made by the Respondent on the issue of language. The Panel considered this issue carefully bearing in mind its broad powers given to him by paragraph 11(a) of the Rules. Therefore, in consideration of all the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panel’s discretion, Chinese language documents, have been reviewed by the Panel.

B. Other Procedural Matters

6.4 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Furthermore, having gone through the series of communications as set out above under the section on Procedural History, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.

6.5 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

6.6 The Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response

6.7 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:

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

(ii) the 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.

6.8 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

6.9 Where the Respondent chooses not to present any evidence to dispute the claims of the Complainant, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the factual claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See: Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., Titan Net / NOLDC, Inc., WIPO Case No. D2006-0808)

C. Identical or Confusingly Similar

6.10 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

6.11 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.12 The Complainant has appended to the Complaint a long list of trademarks that incorporate the DANONE trademark. It is quite clear that the Complainant is the owner of a large number of trademarks in various jurisdictions that simply comprise the word “danone”. A number of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trademarks in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the gTLD “.com”, “.net”, “.mobi”, “.info”, “.biz” is not a distinguishing feature and does not have an impact on the likelihood of confusion.

6.13 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

6.14 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the contested domain name.

The Complainant is thus required to prove that the Respondent has no right or legitimate interest in the disputed Domain Name. However, it is the prevailing consensus view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy or any other right, then the complainant is deemed to have made out this element of the Policy.

6.15 At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the name of the Complainant with a view to attracting internet users to its website, where it proposes Chinese commercial links for different goods or services to those offered by the Complainant. The Panel accepts that such activity does not provide the Respondent with a legitimate interest in the Domain Name.

6.16 As previously held by other WIPO UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001)

6.17 The Panel concurs with what was held in the case of Owens Corning v. NA, WIPO Case No. D2007-1143, namely that if a respondent wants to argue that it has a legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).

6.18 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed Domain Name, or that the Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed Domain Name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made its case that the Respondent has no rights or legitimate interests in the disputed Domain Name which is confusingly similar to the Complainant’s mark.

6.19 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.

E. Registered and Used in Bad Faith

6.20 The Panel accepts the Complainant’s contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the “danone” name. This is inherently probable given the undisputed fame of the Danone name worldwide.

6.21 Given this finding, the Panel also infers and accepts the Complainant’s undisputed contention that the Respondent registered the Domain Name with a view to diverting Internet users with an interest in Danone food products to its website for its own commercial gain.

6.22 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.

6.23 Given that the Respondent has failed to show (for the reasons set out under the heading of legitimate interests above) that it was using the Domain Name exclusively to deal in genuine Danone products and has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.

6.24 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add two further points before drawing this decision to a close.

6.25 First, the recent use by the Respondent of the Domain Name in connection with a domain parking service appears to provide yet further evidence of bad faith use in this case (see for example the recent decisions of Carrefour v. Iwana, WIPO Case No. D2007-1522 and Charlotte Russe Holding, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0371). However, since the issue of this use was not clearly raised by the Complainant in the Complaint, the Panel has not primarily relied upon this use in coming to its conclusion on this aspect of the case.

6.26 Second, in coming to its decision the Panel has not given any weight to the Complainant’s unsupported contention that the failure on the part of the Respondent to respond to its “cease and desist letter” whether in Chinese or English is also evidence of bad faith. The Panel accepts that the decision of the panel in America Online Inc. v. Viper, WIPO Case No. D2000-1198 suggests that this was one of a number of factors that was taken into account on the issue of bad faith registration and use in that case. Nevertheless, this is something that a panel should only do with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. Also at all times it must be remembered that a respondent is under no obligation to respond to such a letter. It is always open to a respondent to sit back and make a complainant prove its case.

6.27 Further, if a complainant wants a panel to draw an adverse inference from a failure on the part of a respondent to respond to a “cease and desist letter” or any other “letter before action”, it is essential that the complainant puts that letter before the panel so that it can properly consider the same. The Complainant has failed to do this in this case. Nevertheless, the Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith without reliance on this material.

 

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, <danonefood.com> be cancelled.


Dr. Colin Yee Cheng Ong
Sole Panelist

Dated: March 7, 2008