The Complainant is Compagnie Gervais Danone, of Paris, France, represented by Cabinet Dreyfus & associés, of Paris, France.
The Respondent is Gomes Paulo, of Boulazac, France.
The disputed domain name <danone.ws> (the “domain name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2008. On November 12, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name. On November 12, 2008, GoDaddy.com, Inc. 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 November 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 15, 2008.
The Center appointed Alain Bensoussan as the sole panelist in this matter on January 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.
Pursuant to paragraph 11(a) of the Rules, “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 registration agreement covering the domain name is in the English language. The Complainant rightly filed its complaint with the Center in English but some of the supporting documents were produced in French.
The Panel may order the translation of documents not submitted in the language of the proceeding. The Respondent did not provide any response and did not ask for any translation. It is up to the Panel to ensure that each Party is given a fair opportunity to present its case (paragraph 10 of the Policy), taking in account any relevant element (Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188).
However, in this case, the Panel notes that:
- the Respondent is domiciled in France;
- the Respondent appears to have a good command of French, the language in which he replied to the Complainant's cease and desist letter;
- the domain name directs to a website partly written in French;
- the Panel has a good command of both English and French languages.
The Panel therefore confirms that the language of the proceedings shall be English but determines that documents produced in French need not be translated.
The Complainant is a subsidiary of Groupe Danone and is a well-known worldwide firm producing and selling fresh dairy products.
The Complainant has been filing trademarks DANONE for some decades. It owns and has rights ― as a subsidiary of the owner (See Grupo Televisa, S.A., Telvisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796) ― in numerous French, Community and International Trademark Registrations DANONE including, but not limited to:
- DANONE, No. 043289101 filed on April 30, 2004, covering goods in classes 5, 29, 30, 32, 35, 38 and 43;
- DANONE, No. 006765051 filed on March 10, 2008, covering goods in classes 5, 29, 30 and 32;
- DANONE nations cup + logo, No. 004984662 filed on March 29, 2006, covering goods and services in classes 16, 29 and 41;
- DANONE + logo, No. 000849889 filed on October 29, 2004, covering goods and services in classes 5, 29, 30, 32, 35, 38 and 43;
- DANONE, No. 639073, registered 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;
- DANONE + logo, No. 649535, registered on December 1, 1995, renewed and covering goods and services in classes 5, 29, 30, 31, 32 and 42;
- DANONE, No. 228184, registered on February 2, 1960, renewed and covering goods in classes 1, 5, 29, 30, 31, 32 and 33;
- DANONE + logo, No. 482337, registered on January 23, 1984, renewed and covering goods in classes 5, 29, 30 and 32;
- DANONE + logo, No. 667644, registered on January 21, 1997, renewed and covering goods in classes 5, 29, 30 and 32;
- DANONE + logo, No. 667645, registered on January 21, 1997, renewed and covering goods in classes 5, 29, 30 and 32;
- DANONE + logo, No. 667646, registered on January 21, 1997, renewed and covering goods in classes 5, 29, 30 and 32;
- DANONE + logo, No. 667837, registered on January 21, 1997, renewed and covering goods in classes 5, 29, 30 and 32;
- DANONE + logo, No. 668079, registered on February 3, 1997, renewed and covering goods in classes 5, 29, 30 and 32;
- DANONE + logo, No. 849889, registered on October 29, 2004, and covering goods and services in classes 5, 29, 30, 32, 35, 38 and 43.
The Respondent registered the domain name on December 15, 2007.
As shown by evidence annexed to the Complaint, the domain name was apparently used by the Respondent at some time partly to give information on the Complainant (in fact, a copy of a Wikipedia page) and partly to produce sponsored links and an offer to sell the domain name.
On July 18, 2008, the Complainant's counsel sent a cease and desist letter to the Respondent. The letter reminded him of Complainant's rights and asked him to transfer the domain name to Complainant.
On July 21, 2008, the Respondent replied that the domain name was of no use to him and that he was willing to sell it to the Complainant for EUR100, i.e. the amount corresponding to the registration expenses incurred.
The Complainant did not accept that offer.
In the Complainant's view, the domain name is identical or confusingly similar to its DANONE trademarks.
It alleges also that the Respondent has no rights or legitimate interest in respect to the domain name. He is neither authorized to use the name DANONE nor known under that name; he is a cybersquatter that never proved any valid interest in the domain name.
The Complainant asserts that the domain name was registered in bad faith since DANONE is a well-known trademark and in particular in France, where the Respondent is domiciled. The Complainant states that the Respondent registered the domain name in order to prevent the Complainant from reflecting its mark in a domain name under the “ws” country code and that the Respondent has engaged in a pattern of such conduct.
Finally, the Complainant contends that the domain name is also being used in bad faith as it has been used in connection with a domain parking service and misleads the public.
As a consequence, the Complainant seeks the transfer of the domain name to it.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, the domain name can be transferred to the Complainant if the latter proves each of the three following elements:
“(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”.
With this in mind, Complainant's contentions will now be examined by the Panel.
The Complainant has proved that it owns rights in its DANONE trademarks in many countries in the world. The fact that those trademark rights do not cover the Samoan Islands is not dispositive since there is no such requirement in the Policy (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.1).
The domain name incorporates the whole DANONE trademark.
The sole addition to the Complainant's trademark is the country code top level domain “ws”, which is a technical requirement of the domain name system and is typically not taken into account when assessing the identity or similarity between the disputed domain name and the Complainant's trademark (DZ Bank AG v. Bentz, WIPO Case No. D2006-0414).
As a consequence, the Panel finds that the domain name is identical to the Complainant's trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name on the following grounds:
- The Respondent has not been authorized by the Complainant to use its trademark;
- The Respondent is not known under the name “Danone.”
- The Complainant's DANONE trademark is distinctive since it has no dictionary meaning and is well-known worldwide;
- The Respondent has no interest in the domain name, which has been used partly to present a list of sponsored links and an offer for sale.
In addition, the evidence provided by the Complainant comprises an email from the Respondent dated July 21, 2008, in which he stated that the domain name was of no use to him and that he was willing to sell and transfer it to the Complainant for a nominal fee.
In the view of the Panel, these are sufficient facts to make a prima facie showing of the lack of Respondent's rights or legitimate interests. The Complainant's burden of proof being met, the Respondent would have had to demonstrate his rights or legitimate interests so as to comply with paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Since the Respondent did not reply to the Complaint, the Panel finds that he has no rights or legitimate interests in the domain name.
Complainant claims that the domain name was registered in bad faith given that the Respondent could not have ignored its rights in the DANONE trademark.
It is indeed unquestionable that the Respondent knew the Complainant's DANONE trademark given its renown worldwide, which has been recognized by other panel decisions quoted in the Complaint (Compagnie Gervais Danone v. Bethesda Properties LLC, WIPO Case No. D2007-1451; Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi, WIPO Case No. D2007-1918; Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media, WIPO Case No. D2007-1630). Additionally, the domain name was partly used to present the Complainant's trademarks.
Furthermore, the Complainant produces evidence of the registration by the Respondent of five other “.ws” domain names comprising well-known trademarks owned by third parties and used in the same way as in the present case. It also produces a UDRP decision in a case involving the Respondent and in which the disputed domain name was transferred to the Complainant (Confédération Nationale du Crédit Mutuel v. Domains by Proxy, Inc. / Gomes Paulo, WIPO Case No. DWS2008-0001).
Further as to bad faith registration and use, the offer for sale of the domain name displayed previously on the website is particularly revealing. The offer is worded as follows:
“Achetez ce nom ! Si vous recherchez un nom de domaine populaire et attractif, vous etes sur le bon site.” (“Buy this name ! If you are looking for a popular and attractive domain name, you are on the right website.”).
As other panels have already acknowledged in similar cases (Miroglio S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0887; Société des Hôtels Méridien v. La Porte Holdings, Inc. , WIPO Case No. D2004-0849), respondents who have engaged in a pattern of conduct aiming at preventing trademark owners from registering the corresponding domain names have been found to have acted in bad faith, as defined in paragraph 4(b)(ii) of the Policy.
The Complainant also claims that the domain name is being used in bad faith.
At one time, the domain name directed to pages relating to the Complainant's historical background, trademarks and products as well as to a list of videos and sponsored links promoting various goods and services.
The Respondent has thus seemingly attempted to attract Internet users to its website for commercial gain by attempting to establish a link with the Complainant.
The Complainant's opinion that the domain name may mislead the public is shared by the Panel insofar as it may lead the public to think that there could be a partnership between the parties. A three-prong test applied from time-to-time by UDRP panels comprises knowledge of the Complainant's trademark at the time of registration, followed by use in commerce without a legitimate interest and use of the domain name likely to create confusion (Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453; Lifetime Products, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0719).
The Panel thus finds that Respondent intentionally attempted to misleadingly divert Internet users to obtain a more important commercial gain through the sponsored links presented on his website.
The Panel finds that such a behavior constitutes evidence of use of the domain name in bad faith according to paragraph 4(b)(iv) of the Policy.
Both registration and use of the domain name have been done in bad faith.
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.ws> be transferred to the Complainant.
Dated: January 23, 2009