The Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Global Conventions (Pvt) Ltd, of Sri Lanka.
The disputed domain name <danoneindia.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2009. On January 21, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 21, 2009, 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 January 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2009. The Response was filed with the Center on February 11, 2009.
Both parties made submissions after the filing of the Response. The Center acknowledged receipt of these submissions and informed the parties that the same would be brought to the Panel's attention upon his/her appointment, for his/her consideration, admission, or otherwise at his/her own sole discretion.
The Center appointed Ms. Linda Chang as the sole panelist in this matter on March 2, 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.
The Complainant is the trademark owner of DANONE in numerous countries including Sri Lanka and India. The earliest registration was obtained in 1960 in France. The Complainant is also the owner of several domain names such as <danone.com>, <danone.fr>, <danone.us>, <danone.tv>, <danone.net> and <danone.eu>. Prior to lodging the UDRP, the Complainant approached the Respondent for the transfer of the disputed domain name. While the Respondent did not refuse to make the transfer, the parties did not make any progress in this regard. The Complainant therefore initiated the administrative proceeding with the Center.
The Complainant contends it is the owner of numerous DANONE trademarks protected throughout the world, including:
- 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 Complainant states that the trademark DANONE is also protected and used in Sri Lanka, India and more generally in Asia Pacific, and it is well-known in that region. In addition, it is also the owner of several domain names including <danone.com>, <danone.fr>, <danone.us>, <danone.tv>, <danone.net> and <danone.eu>.
The Complainant contends that the disputed domain name <danoneindia.com> is identical or at least similar to the Complainant's trademarks in that the former reproduces its trademark in its entirety.
The Complainant also contends that the domain name <danoneindia.com> is comprised of Complainant's well-known trademark DANONE and the geographical term “INDIA”. The name of a country is a common adjunction put in a domain name to indicate origin of products or services, while the extension “.com” is not to be taken into consideration when examining the identity or similarity between Complainant's earlier marks and the disputed domain name. It has been held in numerous decisions that the addition of the gTLD indication does not prevent likelihood of confusion. (Citing Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) merely because it is an indispensable part of a gTLD (general top level domain).
The Complainant contends that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use Complainant's DANONE trademark or to seek registration of any domain name incorporating the said mark. In addition, the Respondent has so far not proved to be the holder of prior rights or to have any legitimate interests in the trademark name DANONE, nor has the Respondent been known by the name “DANONE”.
The Complainant contends that it is obvious that Respondent knew or must have known Complainant's trademark DANONE at the time it registered the disputed domain name. DANONE is a well-known trademark throughout the world and Respondent could not have ignored the Complainant's international reputation at the time of registration of the domain name.
The Complainant states that several WIPO UDRP panels have recognized that the trademark DANONE is well-known (Compagnie Gervais Danone v. Bethesda Properties LLC, WIPO Case No. D2007-1451; Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi, WIPO Case No. D2007-1918) and have found that the mark DANONE has been used extensively in worldwide trading activities (Compagnie Gervais Danone, The Dannon Company Inc. v. Greatplex Media, WIPO Case No. D2007-1630).In Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi, supra, which concerned the domain name <danonefood.com>, the panel held that the mark DANONE has undisputed fame worldwide.
The Complainant further states that it is a well-known company and DANONE is not only a well-known trademark but also a famous trade name. The term “DANONE ” is also used in the Complainant's corporate name COMPAGNIE GERVAIS DANONE. A simple search via Google or any other search engine for the keyword “DANONE ” demonstrates that all first results relate to the Complainant's products or news.
The Complainant contends that the disputed domain name <danoneindia.com> was registered by the Respondent despite its being aware of the Complainant's well-known trademark and trade name as well as the goodwill attached to it. The Complainant further contends that such conduct clearly reflects the dishonesty and shows the mala fide intention of the Respondent. In NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077, and ACCOR v. Eliah Zusstone , WIPO Case No. D2006-0362, it was held that the knowledge of complainant's intellectual property rights, including its trademarks, by respondent at the time of the registration of a domain name proves bad faith registration. The Complainant contends that in this day and age of Internet advancement it is hard to believe that Respondent was unaware of the existence of the Complainant and its trademarks at the time of its registration of the disputed domain name.
The Complainant contends that all above circumstances indicate that the disputed domain name was registered in bad faith.
The Complainant also contends that the overall intended function of Respondent's website is clearly to redirect Internet users to sellers of DANONE products or of products offered as alternatives to DANONE. It may reasonably be concluded that the Respondent has not set up these redirection systems without the expectation of financial returns by operating a pay-per-click (“PPC”) device whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them. Previous WIPO UDRP decisions have well-established that the exploitation of trademarks to obtain PPC commissions from the diversion of Internet users is an indication of registration and use in bad faith (Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 and TT-Line Company Pty LTD. v. Vertical Axis, Inc, WIPO Case No. D2007-1742).
The Complainant states that the success of Respondent's operation presumably depends on its successfully attracting web visitors to its intended websites, either directly by the user wrongly guessing Complainant's Internet address and therefore choosing the Respondent's address or indirectly through search engines. The Respondent's operation is built upon its exploitation of Complainant's registered marks and Complainant's undoubted fame and popularity. The Complainant contends that at least a proportion of Internet users arriving at the Respondent's website are likely to be confused into thinking it is endorsed by or legitimately associated with Complainant, which is in fact not true. This view is supported in Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services, WIPO Case No. D2008-1179, and Estes Express Lines v. Whois Data Shield / Hong Kong Names LLC., WIPO Case No. D2007-0100.
The Complainant further contends that the failure to make use of a domain name and the invitation via SEDO to offer for sale of the same for the minimum amount of USD5000 indicate that the Respondent's primary intent is to sell the disputed domain name to anyone prepared to pay a price exceeding its direct costs related to the domain name. It has been held in a previous case that “the sole fact that the disputed domain names have been registered by a person that does not use them but publicly offers them for rent or sale is the most perfect evidence of a bad faith activity in prejudice of Internet community and of the owner of the trademarks used as domain names” (TV Globo Ltda. v. Radio Morena, WIPO Case No. D2000-0245).
The Respondent states in its Response that it was in receipt of the Complaint via courier and noted that the date of the Complainant's representative's signature on the Complaint was January 15, 2008 which even predated the domain name registration. It therefore questioned the validity of the Complaint as well as this UDRP proceeding.
The Respondent secondly points out that existence of a dispute is an essential condition for the domain name dispute resolution proceeding but now it has never seen any dispute in the present case as it has always been agreeable to transfer the disputed domain name <danoneindia.com> to the Complainant and that it has not, at any point, acted in bad faith. The Respondent once again re-iterates that it is willing to transfer the domain name to the Complainant as previously mentioned in all correspondences with the Complainant's representative.
Rule 15(a) provides that a 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. According to the rule, the Panel, in reviewing dispute cases including this one, is granted the power to decide at his/her discretion in the context where he/she feels appropriate based on the Policy, these Rules and any rules and principles of law that it deems applicable.
The Respondent questions the validity of the Complaint as well as the whole proceeding merely because the signing date of the Complaint is indicated to be January 15, 2008 which predates the domain name. According to the historical record maintained by the Center, the Complaint was filed with the Center on January 20, 2009 and the domain name was registered on July 9, 2008. As a common sense, it is highly unlikely the Complainant would have filed a dispute with the Center over a domain name that does not exist and accurately identified the owner of the domain name who has factually responded to the dispute. Judging from the historical dates recorded and maintained by the Center, the Panel concludes that the signing date of the Complaint was just incorrectly stated to be 2008 and that this minor error does not affect the fact finding process in the dispute. Therefore, the Panel holds that the case and the proceeding are both valid.
Rule 17 provides, if, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. According to the Complaint, there had been no settlement agreement reached before the Complainant initiated the administrative proceeding. Therefore the Panel deems to proceed with a full and reasoned decision based on paragraph 4(a) of the Policy which requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the domain name; and
(C) the domain name has been registered and is being used in bad faith.
The Complainant is a long established food business operating under the brand of DANONE. It became registered owner of the brand DANONE as early as 1960 in France, according to the information on record.
The disputed domain name incorporates the entirety of the Complainant's brand name. Although the domain name also has other parts i.e. ‘India' and ‘.com', ‘India' is the name of a country while ‘.com' is the generic indicator of a general top level domain, neither of which is sufficiently distinctive to differentiate the domain name from the brand name DANONE but instead the addition of the country name ‘India' is even more misleading to Internet users because it appears to be the Complainant's official website while in fact it is not.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
The Complainant has made prima facie statement that the Respondent is not known by the disputed domain name nor is the Respondent authorized to use the trademark in any manner. The burden rests with the Respondent to prove otherwise. The Respondent did make a response to the Complaint without proving it had rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
The files on record have shown the following:
- Previous WIPO UDRP decisions in which DANONE is recognized as a well- known trademark. (Compagnie Gervais Danone v. Bethesda Properties LLC, WIPO Case No. D2007-1451 and 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 in which it is held DANONE has been extensively used in worldwide trading activities.
- Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi , supra, in which the panel held that DANONE has undisputed fame worldwide;
- print-outs of the webpage to which the disputed domain name was directed, which show a list of sponsored links, some of which directed to pages showing competitors' product information; and
- print-out of the webpage at “http://www.sedo.com/search/details.php4?domain=danoneindia.com&partnerid=14454&language=fr” to show an offer for sale of the domain name at the price of USD 5,000.
The Respondent is silent to all the above mentioned facts.
The situations lead the Panel to its belief that the Respondent's use and registration of the disputed domain name fall within the circumstances of bad faith registration and use of domain names, as provided in paragraph 4(b)(i) and (iv), as follows:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
First, DANONE is well-known for diary products and other foodstuffs related to people's everyday life, namely the consumers of DANONE products are general consumers rather than specialized consumers. It is therefore unlikely that a person living in a modern society, such as the Respondent in the present case, does not know about the brand DANONE. In fact the manner the disputed domain name is used, namely the way it is linked to webpages displaying the Complainant's information as well as competitors' information and the way it is offered for sale at a price of USD5000, just proves the other way round. With the knowledge of the trademark at the time of registering the domain name, the domain holder has traditionally been recognized to have bad faith in registration of the domain name.
And secondly, the act of directing the domain name to a website demonstrating sponsored links, although it is unknown if clicking such links definitely generates revenue to the Respondent, is an attempt to take unfair advantage of the reputation of the trademark for potential commercial gains by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location. Such use is explicitly provided to be bad faith evidence for use and registration of a domain name as provided under paragraph 4(b)(iv).
The Panel is satisfied that the Complainant has met the requirements of 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 <danoneindia.com> be transferred to the Complainant.
Dated: March 17, 2009