WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Gervais Danone v. Xiaole Zhang,
Case No. D2008-1047
1. The Parties
The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Xiaole Zhang, neimengguweilianhuizhanyouxianzerengongsi, Beijing, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <danone.mobi> is registered with HiChina Zhicheng Technology Ltd. a/k/a HiChina Web Solutions Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2008. On July 11, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On July 11, 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. The Registrar also informed the Center that the language of the Registration Agreement is Chinese. In response to the Center’s Language of Proceedings notification of July 14, 2008 to both parties in English and Chinese, the Complainant confirmed its request for English to be the language of the administrative proceedings on July 17, 2008. The Respondent has not replied to the Center’s notification. The Center verified that the Complaint has 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 July 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2008.
The Center appointed C. K. Kwong as the sole panelist in this matter on August 28, 2008. 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 the owner of numerous trade marks consisting of or otherwise embodying the word DANONE whether on its own or in conjunction with other logos and/or devices in the form of International trade mark registrations with extensions to various countries including China. These registrations include, in particular, the following:
(a) International trade mark registration no. 649535 for the mark DANONE and logo in respect of certain goods and services under Classes 5, 29, 30, 31, 32 and 42;
(b) International trade mark registration no. 718777 for the mark DANONE and logo in respect of certain goods and services under Classes 5, 29, 30, 32 and 42;
(c) International trade mark registration no. 750755 for the word mark DANONE in respect of certain services under Class 38;
(d) International trade mark registration no. 849889 for the mark DANONE and logo in respect of certain goods and services under Classes 5, 29, 30, 32, 35, 38 and 43.
According to the website materials extracted and produced by the Complainant in Annexes 25 and 26 to the Complaint, it had a workforce of over 88,000 employees, a presence in 40 countries and a sales turnover of Euro14 billion in 2006. The Complainant’s waterline products enjoyed very good market performance in China, Indonesia and Japan which counted for 50% of the Complainant’s said line of products sales and 60% in volume. Its other core products are fresh diary products, beverages, biscuits and cereal products. The Complainant claims to be one of the leading companies in the fresh diary products market worldwide enjoying 20% of the world market. It also claims to be no. 2 worldwide in the bottled water market.
The uncontradicted evidence produced by the Complainant shows that the filing and/or registration of its DANONE marks aforesaid occurred before the registration of the disputed domain name <danone.mobi> on September 26, 2006.
Other than the particulars shown on the printouts of the database searches conducted by the Complainant on October 31, 2007 and June 13, 2008, of the WHOIS database of INDOM (as provided in Annexes 1 and 24 to the Complaint), there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions :
The Complainant has rights in the trade mark DANONE. Furthermore, the disputed domain name <danone.mobi> is identical or confusingly similar to the trade mark DANONE. After disregarding the generic top-level domain “.mobi” from the disputed domain name, only the Complainant’s DANONE trade mark is left.
The Complainant has used the trade mark DANONE in connection with a wide variety of products in China and around the world. Consequently, the public has come to perceive the goods offered under this mark as being those of the Complainant. From that, the public would also reasonably assume that the disputed domain name <danone.mobi> is owned by the Complainant, resulting in confusion.
The Complainant has not authorized the Respondent to register and use the disputed domain name which was registered well after the Complainant’s registration of the DANONE marks.
The Respondent is not using the name Danone as its business name. Also, the Complainant has not been able to locate a company known as “Mongolia Winner Co. Ltd.” (being the former name of the registrant) nor the company by the name “neimengguweilianhuizhanyouxianzerengongsi” (being the current name of the registrant’s organization) by searching through the Internet. Further, the return of the cease and desist letters sent by the Complainant indicates that the contact information provided by the Respondent to the Registrar was incorrect. Such alleged secretive nature of the Respondent would support the contention that the Respondent has no rights or legitimate interests in the disputed domain name. Additionally, the Respondent has not provided any explanation on why the disputed domain name is identical to the Complainant’s famous trade mark.
Danone is also a famous trade name. A search via Google or other search engines using the key word Danone will display links relating to the Complainant’s products or news. The Complainant has registered the domain name <danone.com> since December 1995 as shown in Annex 7 to the Complaint and other domain names including the domain name <danone.fr>. It is unlikely that the registration of <danone.mobi> by the Respondent was a coincidence.
The disputed domain name directs to a parking website containing various commercial links (as shown in Annexes 33 and 34 to the Complaint). The alleged concealment of identity, providing false and misleading information in connection with the registration of the domain name, use of an unidentifiable business entity, failure to provide conventional business information and providing insufficient contact information to the Registrar all point to the use of the domain name in bad faith.
The Respondent has clearly registered the disputed name in bad faith as the DANONE mark is well known as recognized by panels in various WIPO decisions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
In its Complaint filed on July 10, 2008, the Complainant requested that English to be the language of the administrative proceeding and decision in this case. In response to the Center notification in English and Chinese of July 14, 2008 to both parties on the language of proceeding, on July 17, 2008, the Complainant confirmed its request including arguments and supporting materials that the language of the proceeding should be the English language.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Chinese.
In support of its request, the Complainant has inter alia argued that:
(a) The Registrant previously used an English name, Mongolia Winner Co. Ltd. (Annex 24 to the Complaint);
(b) The disputed domain name directs to a website that has options to view the webpage in numerous languages, with English being the first option (Annex 2 to the Complaint);
(c) The Respondent seemed to have provided the Complainant with false contact information (Annexes 3 and 4 to the Complaint);
(d) The lack of response to correspondence and documents served in this proceeding is relevant;
(e) As the Complainant is unable to communicate in Chinese, the proceeding would inevitably be delayed and substantial expenses incurred in translating the documents into Chinese making the costs disproportionately high. These are against the spirit of the Policy;
(f) In considering the issue, the fairness to both parties should be taken into account.
The Panel has not given weight to the argument that the Respondent seemed to have provided the Complainant with false contact information. It is noted that the geographical name “Inner Mongolia” was wrongly spelt as “Inner Monglia” although the same mistake was apparently made in the particulars shown in Annex 24 to the Complaint and the postal code 010020 would seem to be able to remove the resultant uncertainty. Furthermore, despite the e-mail address of “email@example.com” shown in Annex 24 to the Complaint, the Complainant has used the e-mail address of “firstname.lastname@example.org” for correspondence with the Respondent (Annexes 3, 4 and 5 to the Complaint).
The Panel has taken into consideration the fact that the Respondent did have an English name “Mongolia Winner Co. Ltd.” and the disputed domain name consists of English alphabets. Another important consideration is the fact that despite Notification by the Center to the parties on July 14, 2008 (“Language Notification”) by e-mail to the Respondent (in both the English and the Chinese languages) specifically addressing the issue of language of proceeding and inviting the Respondent to make objections to the Complainant’s request for the language of proceedings to be English, the Respondent has not indicated any objection to such request for the record by July 21, 2008. In the said Language Notification, the Center also expressly stated that if they did not hear from the Respondent by the said deadline, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be used. Subsequently, the Center also served the Notification of Complaint and Commencement of Administrative Proceeding in both English and Chinese (“Commencement Notification”) and the Complaint (in English) on the Respondent by courier and by e-mail, which appear to have been all successfully delivered. In the covering letter (in both English and Chinese) enclosing the Commencement Notification, the Center again referred the parties to the fact that the Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied. Notwithstanding these communications, the Respondent has so far made no objection to the use of English as language for these proceedings despite opportunities given to do so.
In exercising its discretion to use the language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking the above circumstances into account, the Panel is satisfied that if there is any prejudice or unfairness to the Respondent at all for these proceedings to be conducted in English and for its decision to be rendered in English, it is negligible and immaterial. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
B. Notice of Proceeding
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communications by the Center.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “The Panel shall 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”. Paragraph 14(b) of the Rules further provides that, “If a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna King, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
C. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark “DANONE” by reason of its various trade mark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the domain name in dispute is substantially identical or confusingly similar to the Complainant’s said trade mark DANONE despite the addition of the generic top-level domain “.mobi”. After removing the generic top-level domain, only the word “Danone” is left in its entirety. It is well established practice to disregard the top-level part of the domain names, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
D. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trade mark DANONE prior to the Respondent’s registration of the domain name <danone.mobi> on September 26, 2006. Further, the Panel notes that the names of the Registrant and the Registrant Organization do not correspond in anyway with the domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as “danone.mobi”. There is also no evidence available to demonstrate the legitimate non-commercial or fair use of the disputed domain name by the Respondent.
The case of the Complainant is further enhanced and supported by the following facts :
(a) The Complainant has not authorized the Respondent to use the domain name;
(b) The Respondent has not come forward to prove that it has become known under the disputed domain name;
(c) There is no plausible explanation as to why it was necessary for the Respondent to adopt the word Danone in its domain name;
The Panel is satisfied that the Respondent has no right or legitimate interest in the disputed domain name.
E. Registered and Used in Bad Faith
In view of (a) the Complainant’s international trade mark registrations with extensions to China (b) the fact that the Respondent is situated in China (c) the Complainant’s uncontradicted claim of its significant Chinese market for the waterline products by the year 2006 and (d) the subsequent registration of the disputed domain name in 2006, the Panel finds that the Respondent registered the domain name in bad faith with knowledge of the Complainant’s business and its use of the DANONE trade mark and trade name.
There is no evidence that the disputed domain name has been actively used by the Respondent as a website. Instead, it directs towards a parking page containing various commercial links. In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain. The use of the word “Danone” in the disputed domain name is likely to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location of a product or service on the online locations where the disputed domain name leads to. It is not possible to think of any plausible, genuine use of the disputed domain name by the Respondent. The Panel accordingly finds that the presumption under paragraph 4(b)(iv) of the Policy has been invoked.
Furthermore, while paragraph 4(b) of the Policy provides for four situations under which a conclusive presumption of registration and use in bad faith on the part of the Respondent will be invoked, it specifically provides that the circumstances under which bad faith can be proved are without limitation. To put it differently, the presumptions under paragraph 4(b) of the Policy are not exhaustive evidence of the way in which registration and use of the domain name in bad faith may be proved.
The Panel considers that bad faith can also be additionally found in the light of the following circumstances of the present case:
(a) The Complainant’s trade name and trade mark are widely known for reasons under the circumstances described above;
(b) There is no explanation given by the Respondent as to why this particular word “Danone” was chosen by it and no legitimate reason for its use is apparent from the evidence placed before the Panel other than to trade on the goodwill of the Complainant;
(c) The Respondent’s change of its former address, telephone number, fax number and e-mail address (as shown in Annex 24) to those of the Registrar (as shown in Annex 1) may suggest that the Respondent has no real existence or substantial business operation;
(d) Despite proper service of these proceedings on the Respondent, it has failed to come forward to present its case to the Panel without any explanation.
In the circumstances, the Panel finds that the domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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, <danone.mobi> be transferred to the Complainant.
C. K. Kwong
Dated: September 11, 2008