Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés of France.
Respondent is Chen S of Shenzhen, Guangdong, China.
The disputed domain name <hkdanone.com> is registered with Xin Net Technology Corp.
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2009. On March 5, 2009, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On March 6, 2009, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details stating that the Registration Agreement was in Chinese. 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”).
On March 10, 2009, the Center sent the parties a language of proceedings document stating that the Complainant could either submit evidence of an agreement between the parties that the language of proceedings should be in English; translate the Complaint into Chinese; or submit a request for English to be the language of proceedings. On March 10, 2009, the Complainant re-asserted its request for English to be the language of proceedings (as it had done so previously in the Complaint.)
In accordance with the Rules, paragraphs 2 (a) and 4 (a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 18, 2009. In accordance with the Rules, paragraph 5 (a), the due date for Response was April 7, 2009. The Center received an email communication from “chensky hkdanone” on March 18, 2009.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on April 23, 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 is a subsidiary of GROUPE DANONE. The Complainant's main brand DANONE originated around 1919 in Barcelona. Today, GROUPE DANONE is present in more than 80 countries and employs approximately 90,000 people throughout the world. GROUPE DANONE owns numerous trademarks which are protected throughout the world, including in People's Republic of China and Hong Kong Special Administrative Region of the People's Republic of China. Complainant is the owner of several international trademark registrations for DANONE in China.
Respondent registered the disputed domain name <hkdanone.com> on January 18, 2008.
Complainant contended that the language of the proceeding should be English despite that the language of the registration agreement was Chinese.
Complainant claimed that it was a subsidiary of GROUPE DANONE, which has worldwide business presence and owned numerous trademarks protected throughout the world, including in China and Hong Kong Special Administrative Region.
Complainant stated that it entered China's market in 1987 and acquired several international trademark registrations for DANONE in China long before the disputed domain name was registered.
Complainant contended that both visual and oral comparisons with the trademark DANONE and the domain name <hkdanone.com> provided evidence for the assertion that the domain name was confusingly similar to the trademark. Complainant believed that DANONE as a distinctive term without any other meaning increased the likelihood of confusion between the disputed domain name and Complainant.
Complainant stated that Respondent was not affiliated with Complainant in any way, nor had Respondent been authorized by the Complainant to register and use Complainant's DANONE trademark or to seek registration of any domain name incorporating said mark.
Complainant contended that the fact that the disputed domain name was used in connection with HK Danone Industrial Limited was suspicious. Complainant claimed that DANONE may take legal actions against such company to oblige it to modify its commercial name.
Complainant contended that Respondent's failure to react to Complainant's cease-and-desist letter further showed that Respondent's lack of rights or legitimate interests with respect to the disputed domain name.
Complainant contended that Respondent was aware, at the time of registration of the disputed domain name, of the existing and exclusive rights held by Complainant on DANONE trademarks, which had no meaning in any language but served as the Complainant's well-known mark.
Complainant contended that Respondent, through registering and using the disputed domain name incorporating the Complainant's trademark, DANONE, misled Internet users and consumers into thinking that he was, in some way or another, connected to, sponsored by or affiliated with Complainant and its business; or that Respondent's activities were approved or endorsed by Complainant.
Complainant believed that the lack of response to the Complainant's cease-and-desist letter and misleading conduct were the evidence of bad faith on the part of Respondent.
Complainant requested the Panel that the disputed domain name <hkdanone.com> be cancelled.
Respondent submitted that it did not understand why Complainant filed the Complaint against it and contended that its company name was registered legitimately.
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, as confirmed by the Registrar, is Chinese. Complainant requested that the language of proceeding be English and presented the reasons. Respondent did not contend Complainant's assertion although replied to the Center in Chinese.
The Rules, paragraph 11(a), set out that the language of the Registration Agreement is the language of proceeding by default, except in the case of an agreement otherwise by the parties. Further, the panel can determine language of proceeding after taking into account all the circumstances of the proceeding.
One circumstance that should be taken into account is whether the Party that requests the change of the language of proceeding by default satisfies the burden of proof and provides persuasive reasons and/or evidence to support the request. In the present case, Complainant requested that the language of the proceeding be English, as different from the language of the Registration Agreement, and presented several reasons, such as costs, efficiency and both Parties' language ability. The Panel finds that these reasons are not unacceptable and were not contended by Respondent in any communication.
Another circumstance that should be taken into account is the Parties' ability to take apart in the proceeding conducted in a language different from the language of the Registration Agreement. According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore it is important to objectively assess the Parties' language ability in the proceeding, rather than solely rely on any one Party's mere assertion. In the present case, the Panel finds that Respondent, despite its communication in Chinese with the Center, has sufficient capacity to present its case in English. The Panel's conclusion is based on the fact that the disputed domain name was used by Respondent for a website “http://hkdanone.com” that shows all the contents in English, and that the Respondent did not object to the laying proceedings being English nor did it submit a Response in Chinese.
In view of the above, it is not foreseeable that Respondent will be prejudiced, should English be adopted as the language of the proceeding. Having considered all the circumstances of the proceeding, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.
Pursuant to the Policy, paragraph 4 (a)(i), 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. In line with such requirement, a complainant must prove two limbs, i.e. it enjoys the trademark right and the disputed domain name is identical with or confusingly similar to Complainant's trademark or service mark.
The Panel finds that Complainant successfully proves these two aspects of its case. Firstly, Complainant holds trademark registration in the mark DANONE. Secondly, the disputed domain name, which consists of “hkdanone.com”, is confusingly similar to Complainant's trademark DANONE.
Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “hkdanone”, in which “danone” is identical with Complainant's registered trademark and “hk” which seems to refer to Hong Kong.
It has been established by the prior decisions made under the Policy that addition of a geographical term does not preclude a finding of confusing similarity (see CBS Broadcasting Inc. v. Sale's (NYCBS-DOM) et al., WIPO Case No. D2000-0255).
The Panel therefore finds that the disputed domain name <hkdanone.com> is confusingly similar to the mark in which the Complainant has rights. The Panel therefore finds that Complainant fulfills the condition provided in paragraph 4(a)(i) of the Policy.
Complainant is required by the Policy, paragraph 4(a)(ii), to prove that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has made the pertinent contentions and provided the relevant evidence. A number of panels have held that the burden on a Complainant regarding above-mentioned requirement is necessarily light, because the nature of the respondent's rights or interests, if any, in the domain name lies most directly within the respondent's own knowledge (see Education Testing Service v. TOEFL, WIPO Case No. D2000-0044). There is also a consensus view among panels that once complainant makes a prima facie showing that respondent does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to respondent to rebut the showing by providing evidence of its rights or interests in the domain name (see e.g. Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252).
Respondent only contended that it registered the company name “Hong Kong DANONE Industrial Ltd.” legitimately. The Panel assumes that Respondent might be relying on the Policy, paragraph 4(c) (i) to defend its position, which provides that before any notice to Respondent of the dispute, Respondent has used or demonstrable prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Panel however finds that Respondent does not use the company name “Hong Kong DANONE Industrial Ltd.” that may be deemed correspondent to the domain name in connection with the a bona fide offering of goods or services. The term danone does not have any meaning in any language and has been used as the Complainant's trademark consistently and extensively worldwide in almost a century. On the disputed domain name's website, “Hong Kong DANONE Industrial Ltd.” stated that its factory had studied the product of solar energy “over 5 years.” The Panel assumes that the existence of “Hong Kong DANONE Industrial Ltd.” can hardly be longer than that in this Panel's view, it is inconceivable that Respondent was not aware of Complainant's well-known mark DANONE before the registration and use of the company name that incorporates DANONE and moreover finds that the use of DANONE in Respondent's company name appears to be a ruse to mask its illegitimate use Complainant's trademark in a domain name. Moreover, Respondent has not submitted any persuasive evidence of why it chose its company name.
Since Respondent was not able to effectively rebut Complainant's assertion that Respondent had no rights or legitimate interests in the disputed domain name, the Panel finds that Complainant fulfills the condition provided in paragraph 4(a)(ii) of the Policy.
Finally, Complainant is required by the Policy, paragraph 4(a)(iii), to proved that Respondent both registered and is using the domain name in bad faith.
A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv), which indicates that bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his/its website 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 his/its website or location or of a product or service on his/its website or location (see PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).
Based on Complainant's submissions, which were not rebutted by Respondent, Respondent created at the disputed domain name a website of Hong Kong DANONE Industrial Ltd. to promote its products of solar charge. Respondent showed Complainant's mark DANONE prominently, either as a separate mark or combined with the company name, on the website. Given the confusingly similarity between the disputed domain name and Complainant's mark shown on the disputed domain name's website, the Internet users were highly likely to be confused as to the source, sponsorship, affiliation, or endorsement of Respondent's website and the products promoted on the website. Respondent in all likelihood registered and used the disputed domain name to profit from the users' confusion with Complainant's mark.
The Panel does find that in view of the submitted evidence, and in the specific circumstances of this case, there is a strong inference that Respondent's purpose of registering the domain name was for commercial gain in bad faith within the meaning of the Policy, paragraph 4(b)(v).
Complainant also contended that Respondent's bad faith was shown in its refusal to substantively respond to the Complainant's cease-and-desist letter. The Panel agrees that in the present circumstances Respondent's continuing use of the disputed domain name for commercial purpose after being informed by Complainant's letter may be an additional proof of Respondent's bad faith.
Based on the above findings, the Panel finds that the Respondent has registered and is using the domain name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in 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 <hkdanone.com> be cancelled.
Dr. Hong Xue
Dated: May 7, 2009