Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Xu Xin, Guangzhou, People's Republic of China.
The disputed domain name <yili-danone.com> is registered with Bizcn.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2008. On December 3, 2008, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 4, 2008, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 5, 2009.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 22, 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.
Complainant, Compagnie Gervais Danone, is a worldwide company in fresh dairy products and bottled water and employs nearly 90,000 people in all five continents. It is in the business of manufacturing and selling dairy products and bottled water. In China, Complainant's main product is bottled water. An important fact is that Complainant sells its bottled water in China through a joint venture with the company Shenzen Yili under the trademark DANONE. Complainant owns numerous trademarks which are protected throughout the world, including in China. It is Complainant's contention that its trademarks are very well-known, especially in the field of water and food products.
Complainant noticed that the domain name <yili-danone.com> had been registered on January 22, 2008. On July 22, 2008, Complainant sent a cease-and-desist letter to Respondent by registered letter, email and fax. However, the contact information was to be incorrect. The letter was sent back by post stating “insufficient address”. Respondent never replied by e-mail. Complainant was therefore unable to reach Respondent regarding the disputed domain name. As no amicable settlement could be reached, Complainant started the present procedure to obtain a transfer of the disputed domain name.
Complainant contends that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights for the following reasons:
1. Complainant is the owner of numerous DANONE trademarks around the world, and specifically in China. Furthermore, Complainant is also the owner of several domain names including <danone.com> and <danone.fr>.
2. Complainant contends that the disputed domain name is very similar to the trademark owned by Complainant. The fact that Respondent added the word “yili” does not reduce the likelihood of confusion. On the contrary, taking into account the fact that Danone sales bottled water produced by the joint venture concluded between Danone and the company Shenzen Yili in China, Complainant argues that the public will immediately assume that this domain name is related to the said products and a fortiori to the trademark Danone.
3. If the word “yili” is disregarded from the disputed domain name, Complainant's DANONE mark is the domain name in its entirety (<danone.com>).
4. Complainant has used the trademark 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 Complainant. Furthermore, the company Shenzen Yili has been one of the official sponsors of the Olympic Games that took place in Beijing in summer 2008. Therefore, the public would reasonably assume that a domain name such as <yili-danone.com> would be owned by Complainant or at least assume that it is related to Complainant. As a result, Complainant argues that the disputed domain name <yili-danone.com> is almost identical to the numerous trademarks DANONE registered by Complainant, which creates a high risk of confusion.
Complainant contends that Respondent has no rights or legitimate interests in respect to the domain name for the following reasons:
1. Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized by Complainant to register and use Complainant's DANONE trademark or to seek registration of any domain name incorporating said mark.
2. Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the numerous DANONE trademarks preceded the registration of the disputed domain name. Additionally, Respondent does not seem to go by the name Danone, or have gone by it in the past. In fact, it is unclear who Respondent even is.
3. Respondent is an individual named Xu Xin. However, after searching on the Internet, Complainant had been unable to find any relevant information corresponding to that name. Additionally, the cease-and-desist letter sent by post did not seem to have been received, indicating that the contact information was incorrect.
4. Given the secretive nature of Respondent, it can be inferred that Respondent has no legitimate interest in the disputed domain name. Respondent did not answer Complainant's cease-and-desist letter and did not demonstrate any right or legitimate interest regarding the disputed domain name. WIPO panelists have already decided that “[p]rimarily on this basis Complainant alleges that Respondent has no rights or legitimate interests in the domain name. Respondent has not rebutted this allegation and has not provided the Panel with any explanation as to whether this is the case or not or whether there are indeed legitimate reasons for his choice of the domain name. Respondent must bear the consequences of this lack of information and in the light of the other information provided by Complainant and which raises serious doubts as to the legitimacy of Respondents registration”. See GEA AG v. Josue da Silva, WIPO Case No. D2003-0727.
5. Since the disputed domain name is very similar to Complainant's famous trademark or to the trade name of one of the official sponsors of the Olympic Games of Beijing, 2008, Respondent could not reasonably pretend that he was attempting to engage in a legitimate activity when he registered the disputed domain name.
Complainant contends that the disputed domain name was registered in bad faith for the following reasons:
1. Complainant's DANONE trademark is well-known throughout the world and Respondent cannot have ignored it. Furthermore, Shenzen Yili is also a well known company in China as it was one of the official sponsors of the Olympic Games of 2008. Several prior UDRP cases have held that the mark DANONE was renowned. See Compagnie Gervais Danone v. Bethesda Properties LLC, WIPO Case No. D2007-1451; Compagnie Gervais Danone v. Greatplex Media, WIPO Case No. D2007-1630; Compagnie Gervais Danone v. yunengdonglishangmao (Beijing) youxiangongsi, WIPO Case No. D2007-1918. Thus, Complainant is a well-known worldwide firm 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. A simple search via Google or any other search engine using the keyword “danone” demonstrates that all first results relate to Complainant's products or news. The fact that the famous trademark DANONE is included in its entirety in the domain name <yili-danone.com> makes it impossible to argue that Respondent did not have Complainant in mind when he registered the domain name.
2. Previous WIPO panels have recognized in numerous cases that the knowledge of a complainant's intellectual property rights, including its trademarks, by a respondent at the time of the registration of a domain name proves bad faith registration. See for instance NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077.
3. The trademark YILI which is added to the trade name DANONE is well known in China as it is one of the official sponsor of the Olympic Games in 2008. Thus, taking into account the fact that Respondent is located in China, it is impossible for him to argue that he had no knowledge of the notoriety of the trademark YILI. It is therefore highly unlikely that the registration of <yili-danone.com> was a coincidence.
Complainant contends that the disputed domain name was also used in bad faith as Respondent has engaged in all of these activities:
1. Deliberate steps to conceal his true identity. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273;
2. Providing false and misleading information in connection with the registration of the domain name. See Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111;
3. Failure to provide conventional information for someone engaged in proper business activities. See 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110;
4. Failure to provide sufficient contact information to the Registrar. See Süd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376;
5. Panels have previously stated that bad faith is present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. See Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
Respondent did not reply to Complainant's contentions.
The language of the registration agreement for the disputed domain name is Chinese. 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. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. Complainant drafted the Complaint in English. This choice of language is presumably related to the combined facts that the English language is the language most widely used in international relations and is one of the working languages of the Center.
2. Complainant has exhausted all efforts to contact Respondent. Respondent never answered the numerous e-mails, letter or fax. In fact, Respondent seemed to have provided Complainant with incomplete contact information. Complainant contends that the failure to respond has nothing to do with the language. In fact, the lack of response has gone against Respondent in deciding the language of the proceedings in the past. See ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466.
3. In many relevant WIPO decisions, the panel decided that since the “Complainant is unable to communicate” in Chinese, “the proceeding would inevitably be delayed unduly, and the Complainant would have to incur substantial expenses” if Complainant were to submit all documents in Chinese. See Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593.
4. In Casio Keisanki Kabushiki Kaisha dba Casio Computer Co, Ltd v. Taizhou Kaixuan Entertainment Co., Ltd., WIPO Case No. D2005-0870, the panel considered that “one important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties”. In this case, Complainant is located in France and has no knowledge of Chinese. In order to proceed in Chinese, Complainant would have had to retain specialized translation services at cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in this case would therefore impose a burden on Complainant which must be deemed significant in view of the low cost of these proceedings. It should be recalled in this respect that the procedure under this Policy was designed particularly in the interest of speed and low cost.
5. Many UDRP decisions have recognized that using the registration agreement's language would lay an undue burden on Complainant. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
After considering the circumstances of the present case and the submission of Complainant's request, the Panel is of the opinion that the language for the present proceedings shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
Paragraph 11 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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by Complainant to suggest in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) Complainant has exhausted all ways to communicate with Respondent but to no avail; (c) the Center has notified Respondent of the proceedings in both Chinese and English. Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond to Complainant's allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the DANONE marks since 1995 in relation to dairy products and bottled water. The Panel finds that Complainant has rights and continues to have such rights in the relevant DANONE marks.
The disputed domain name consists of Complainant's mark DANONE in its entirety, the word “yili” attached to it in the front and the suffix “.com”. In assessing the degree of similarity between Complainant's trademarks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant's DANONE marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user.
The Panel finds that the term “danone” in Complainant's DANONE marks is an arbitrary word and it is the distinctive portion of Complainant's marks and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “danone” portion to be the most prominent part of the disputed domain name which will attract consumers' attention. The addition of the word “yili” does not provide additional specification or sufficient distinction from Complainant or its DANONE marks. The Panel accepts Complainant's contention that the word “yili” refers to the joint venture company Shenzen Yili through which Complainant sells its bottled water in China. Furthermore, given the fact that Shenzen Yili is one do the official sponsors of the 2008 Beijing Olympics, the public is likely to associate “yili-danone” with Complainant. Therefore, the Panel finds that the addition of the word “yili” reinforces the notion that the disputed domain name is owned or is associated with Complainant by reference to the geographical location of Complainant's joint venture partner in China. This increases the confusion of the disputed domain name with Complainant's DANONE marks as Internet users may assume that it is Complainant's official domain name or is endorsed by Complainant. It is also an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor.
The Panel finds for Complainant on the first part of the test.
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to respondent to rebut complainant's contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of “danone” in his business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its DANONE marks enjoy a worldwide reputation including China, with regard to its dairy products and bottled water.
Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the DANONE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.
One important consideration in the Panel's assessment of whether Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of Respondent of Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of Complainant and its DANONE marks, as well as the market presence of Complainant and its marks in the Chinese market (evidenced by the registration of the DANONE marks in China and the sale of its bottled water under the DANONE mark through joint venture partner Shenzen Yili ), the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the domain name. The Panel's findings are further buttressed by the fact that the term “danone” in Complainant's DANONE marks is an arbitrary mark with no descriptive significance to the underlying goods or services and is unlikely to be used by Respondent to describe its goods or services.
Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the term “danone” in Complainant's DANONE marks which have acquired a worldwide reputation in the dairy products and bottled water market is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of his choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant's allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.
Given the worldwide reputation of Complainant's DANONE marks in the dairy products and bottled water market, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is identical or confusingly similar to Complainant's widely known and distinctive trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. It is an entirely plausible argument to make that potential partners and end users are led to believe that the disputed domain name is either another of Complainant's targeted at the Chinese market or it is the official domain name of authorized partner or affiliate of Complainant, while in fact it is neither of these. The Panel is, in the circumstances, satisfied that the disputed domain name, which does not appear to be in active use, is being passively held in bad faith within the meaning of previous decisions such as, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant's DANONE marks and this constitutes a misrepresentation to the public that Respondent's domain name is in one way or the other associated or connected with Complainant and its well-known mark. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
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 <yili-danone.com> be transferred to Complainant.
Susanna H.S. Leong
Dated: February 11, 2009