The Complainant is Compagnie Gervais Danone of Paris, France represented by Dreyfus & associés of Paris, France.
The first Respondent is Above, Inc Pty Ltd (“Above, Inc”) of Victoria, Australia.
The second Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“Transure Enterprise”).
The disputed domain name <wwwactivia.com> is registered with Above, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2009. On July 30, 2009, the Center transmitted by email to the first Respondent, Above, Inc. a request for registrar verification in connection with the disputed domain name. On July 31, 2009, Above, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 7, 2009 which inserted Transure Enterprise as a second Respondent to the proceedings. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on August 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2009. Neither Respondent submitted a response. Accordingly, the Center notified the Respondents' default on August 31, 2009.
The Center appointed David Williams as the sole panelist in this matter on September 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.
The Complainant asserted, and provided evidence in support of the following facts. The Panel finds these facts established.
Danone is the owner of the following Australian and International ACTIVIA trademarks designating Australia:
(i) Australian Trademark ACTIVIA n°811131, covering classes 29, 30, 32, registered on October 21, 1999;
(ii) Australian Trademark ACTIVIA n°1255016, covering class 29, registered on March 12, 2009;
(iii) Australian Trademark ACTIVIA + logo n°848070, covering classes 29, 30, 32, registered on August 28, 2000;
(iv) International Trademark ACTIVIA + logo n° 893078; covering classes 29, 30, 32, registered on June 7, 2006;
(v) International Trademark ACTIVIA + logo n° 893712, covering classes 29, 30, 32, registered on May 18, 2006.
Danone is also the owner of the following ACTIVIA international trademarks:
(i) International Trademark ACTIVIA n° 725041, covering classes 29, 30, 32, registered on October 13, 1999;
(ii) International Trademark ACTIVIA + logo n° 752427, covering classes 29, 30, 32, registered on November 28, 2000;
(iii) International Trademark ACTIVIA n° 759380, covering class 38, registered on May 18, 2001.
In addition, the Complainant also owns numerous domain names, including
(i) <activia.com> registered on October 26, 2003;
(ii) <activia.fr> registered on October 12, 2006;
(iii) <activia.us.com> registered on December 17, 2007.
The Complainant, Compagnie Gervais Danone, is a subsidiary of the French company Danone. Compagnie Gervais Danone is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition. Danone represents almost 20% of the international market in fresh dairy products and is present in 80 countries.
Activia is one of the most successful dairy products of Danone. The probiotic culture in Activia is exclusive to Danone. It consists of the actiregularis strain, a friendly bacterium that remains active in the digestive system. Each serving contains over a billion live actiregularis bacteria which aid in intestinal transit.
In 2008, 1,150,000 tons of Activia products were sold throughout the world, which is equivalent to 9 billion pots and a 2.3 billion annual turnover. The growth of the Active health yoghurts market, to which Activia belongs, gave rise to several press articles in early 2009. The Complainant states that this strong institutional promotion emphasizes the importance of the trademark in Australia.
The disputed domain name <wwwactivia.com> was registered on March 26, 2009 by Above.com, Inc., the second Respondent in this Complaint.
The first Respondent, Transure Enterprise, used a domain privacy service offered by its registrar Above.com, Inc. when registering the domain name. The Complainant only learned of the identity of Transure Enterprise when it was revealed by the domain name registrar after the filing of the original Complaint.
Privacy shields and the registrars offering that service complicate the possibility to contact the registrant of the domain name. This is why the Complainant decided not to replace Above.com, Inc. by Transure Enterprise but to file against both Respondents. Accordingly, no difference was made between each Respondent in the Complaint, nor will any difference be made in this decision. Hereinafter both will be referred to as “the Respondent”
The Complainant submits that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name.
In relation to element (i) of paragraph 4(a), the Complainant submits that the domain name is identical or at least confusingly similar to the ACTIVIA registered trademark.
In support of this submission, the Complainant points to previous WIPO UDRP decisions where the panel considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 and Accor v. Lee Dong Youn, WIPO Case No. D2008-0705). The Complainant also submits that the addition of the generic acronym “www” is not sufficient to avoid a risk of confusion and is a form of typo-squatting. Similarly, the Complainant states that the addition of the “.com” gTLD does not prevent confusion and is not distinctive, given that it is necessary for the registration of the domain name itself.
In relation to element (ii) of paragraph 4(a), the Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating its trademark. Additionally, the Respondent is not currently known, nor has been known, by the name Activia. The Complainant submits that since the domain name in dispute is so identical to Complainant's “well-known mark” (Companie Gervais Danone v. WhoisGuard / WhoisGuard Protected and Sempoihosting.com / Mohd Suhaimy Abu Bakar, WIPO Case No. D2009-0354), the Respondent cannot reasonably pretend it was intending to develop a legitimate activity. Furthermore, the Complainant submits that the term “activia” has no meaning whatsoever in English and can only refer to Complainant's trademark. The Complainant also provided evidence to show that the website found under the disputed domain name displays advertising links related to the business operated by Danone and its trademark ACTIVIA which, in the Complainant's submission, suggests that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but rather to earn profit from such activity on a pay per click basis.
In relation to element (iii) of paragraph 4(a), the Complainant submits that the domain name was registered in bad faith and with the intention of causing confusion with the Complainant's registered trademark and domain names. In particular, the Complainant submits that the Respondent's bad faith in registration is evidenced by the typo-squatted structure of the domain name and the lack of other signification of “Activia” than the Complainant's mark. The Complainant submits that it is therefore likely that the Respondent knew the Complainant's mark when it registered the domain name. The Complainant relies on a previous decision of the panel which held that the sole fact of being aware of the existence of a trademark when registering a domain name containing that trademark constitutes bad faith registration (ACCOR v. Eliah Zusstone, WIPO Case No. D2006-0362).
Moreover, the Complainant relies on the Respondent's use of a Domain Privacy service as tending to prove the Respondent's bad faith when registering the domain name. The Complainant also states that before submitting this Complaint, the Respondent tried to sell the disputed domain name to the Complainant for USD250. The Respondent never delivered any justification for the argued transfer costs and the Complainant submits that such behavior highlights that the Respondent had no other intent than to resell <wwwactivia.com> to its trademark owner for valuable consideration in excess of documented out-of-pocket costs, and that accordingly, bad faith registration can be inferred.
With respect to bad faith use, the Complainant submits that ACTIVIA is a “well-known mark”. Consequently a finding of bad faith can also be made where the Respondent “knew or should have known” of the Complainant's trademark rights, and nevertheless registered a domain name incorporating a mark, in which it had no rights or legitimate interests (Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722). In this case, the website found under the domain name contains nothing but commercial links and advertising for business related to Activia. The Complainant therefore submits that the Respondent is monetizing on the Complainant's well-known mark.
The Respondent did not reply to the Complainant's contentions and has thus failed to contest the allegations in the Complaint. The Panel notes paragraph 5(e) of the Rules, which states, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” In addition, pursuant to paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default that it considers appropriate.
The Complainant sent the Respondent a cease and desist letter via registered letter and by email on April 17, 2009. A reminder was sent to the Respondent on April 24, 2009. The Respondent replied that it would agree to transfer the domain name to the Complainant if the Complainant agreed to pay alleged registration and administrative fees of USD250. No evidence about the effective costs was provided. On May 7, 2009, the Complainant notified the Respondent by email that the Complainant would not carry unjustified fees. On May 8, the Respondent replied, providing rough details of the costs but without providing any justification. Consequently, the Complainant sent a further email to the Respondent, followed by two reminders, asking for more accurate justification. The last reminder sent by the Complainant to the Respondent was on June 11, 2009. However, since May 8, 2009 the Respondent has ceased all communication and failed to delete the domain name from the registry.
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 principles of law it deems applicable.
To succeed in its request for the transfer of the disputed domain name, the Complainant must establish the following, pursuant to paragraph 4(a) of the Policy:
(A) The domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights;
(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.
These matters are dealt with consecutively.
This question raises two issues: (1) does the Complainant have rights in the trademark? and (2) is the domain name identical or confusingly similar to such mark?
As to the first issue, the Complainant provided evidence that it owns numerous Australian and International ACTIVIA trademarks along with a number of domain names all of which include the trademark ACTIVIA. The Panel accordingly finds that Complainant has rights in the ACTIVIA trademark. Although not strictly necessary for the purposes of this decision, the Panel refers to findings of fact in other administrative decisions under the Policy, in which WIPO panels have either considered that ACTIVIA is a “well-known mark” (Companie Gervais Danone v. WhoisGuard / WhoisGuard Protected and Sempoihosting.com /Mohd Suhaimy Abu Bakar, WIPO Case No. D2009-0354) or a “fanciful mark” (CompanieGervais Danone v. Laurie Cheoux, WIPO Case No. D2008-1678).
As to the second issue of the degree of similarity between the domain name and the Complainant's mark, the Panel adopts the test enunciated by a previous panel in SANOFI-AVENTIS, AVENTIS PHARMA DEITSCHLAND GmbH, v. WEB ADVERTISING, Corp., WIPO Case No. D2006-1273:
“The issue of degree of similarity between the Complainant's mark and the disputed domain name is to be considered from the perspective of the average consumer […]”
In the present case, the Panel considers that the mere addition of the generic acronym “www” in the domain name is not sufficient to avoid a risk of confusion between the disputed domain name and Complainant's trademarks from the perspective of the average consumer. Indeed, such an adjunction increases risks of confusion. The addition of that prefix (known as “dot-squatting”) has been deemed common among “typo-squatters” who try to take advantage of the fact that Internet users often fail to insert a period between the commonly used World Wide Web prefix and the remainder of the domain name (see MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324). This practice has been considered and unequivocally condemned in a number of cases. (see for e.g., Playboy Enterprises International Inc. v. SAND WebNames – For Sale WIPO Case No. D2001-0094; Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party WIPO Case No. D2001-0224).
Similarly, the Panel is satisfied that the addition of the “.com” gTLD to the end of the domain name does not prevent likelihood of confusion nor is it distinctive since it is necessary for the registration of the domain name itself (LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling, WIPO Case No. D2008-0226 “Lancome”). The Panel also adopts the finding made in the Lancome decision that the Complainant's trademark ACTIVIA, is a coined word with no meaning, and as such, is distinctive.
Moreover, given that the disputed domain name incorporates, in its entirety, the distinctive ACTIVIA mark and taking into account the international reputation of the Complainant, the Panel considers that such factors together are of such a nature as to create in the mind of the average Internet user the reasonable impression that the domain name and its corresponding website is somehow connected to the Complainant's trademark (SANOFI-AVENTIS, AVENTIS PHARMA DEITSCHLAND GmbH, v. WEB ADVERTISING, Corp., WIPO Case No. D2006-1273).
In conclusion, the Panel does not doubt the Respondent in this case is engaging in “typo-squatting” and attempting to benefit from the typographical errors of the Complainant's consumers by registering a domain name extremely similar to the Complainant's trademark. The failure of the Respondent to refute the allegation can only lead to the conclusion that the Respondent intended to register the domain name for the very reason that it is confusingly similar to the Complainant's trademarks.
Accordingly, the Panel finds that the domain name <wwwactivia.com> is confusingly similar to the Complainant's ACTIVIA trademark.
Under 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 Respondent has not filed a response to the Complaint, and therefore has failed to assert an interest in the domain name as provided in paragraph 4(c) of the Policy. The failure to file a Response or to otherwise assert any such right or interest leads the Panel to conclude that the Respondent is unable to establish any such right or interest (See Cornell Trading Inc v. Web-Interactive.com Inc, WIPO Case No. D2000-0887 (“Cornell Trading”); Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004). As stated by the panel in Cornell Trading, the burden of proof shifts where the Complainant presents a prima facie showing.
In any event, no evidence that is before the Panel suggests that the Respondent has any rights or legitimate interest in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and have not been authorizied by the Complainant to register and use its ACTIVIA trademarks, or to seek registration of any domain name incorporating the ACTIVIA trademark. The Respondent is not known by the disputed domain name and there is no reference to any goods or services offered by the Respondent on the website of the disputed domain name, merely advertising links to the business operated by Danone and its trademark ACTIVIA and also to third party websites. As stated in the Complaint, the “Respondent earns profit from such activity on a pay per click basis. Either sponsored links or pop-up windows prove it.” This type of action by a Respondent has been deemed a deceptive practice by panels in previous decisions and this Panel also finds that it cannot be considered a legitimate interest. The Panel relies on the decision in United Parcel Service of America, Inc. v. Michael Robert, WIPO Case No. D2008-0339, where that Panel stated:
“[The] Respondent presumably earns revenues from the website at the Domain Name when Internet users click on sponsored advertising links. Respondent is thus creating a false impression of association or sponsorship between Complainant and Respondent's website which is deceptive to the Internet user and harmful to Complainant's reputation and goodwill. This does not constitute a bona fide offering of goods or services by Respondent.”
Furthermore, the Panel considers that because the disputed domain name is so similar to the Complainant's “well known mark” (Companie Gervais Danone v. WhoisGuard / WhoisGuard Protected and Sempoihosting.com / Mohd Suhaimy Abu Bakar, WIPO Case No. D2009-0354), the Respondent cannot reasonably pretend it was intending to develop a legitimate activity. As stated by the Complainant, the term “activia” has no meaning whatsoever in English and can only refer to the Complainant's trademark.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
The significance of the conjunctive requirements of registration and use in bad faith is that the Complainant must prove use in bad faith as well as registration in bad faith: Telstra Corporation Limited v. Nuclear Marshmellows, WIPO D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the 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 the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a produce.
Panels have previously held that the sole fact of being aware of the existence of a trademark when registering a domain name containing that trademark constitutes bad faith registration (ACCOR v. Eliah Zusstone, WIPO Case No. D2006-0362). As outlined above, the Complainant's trademark has been found by previous panels to be a “well known” or “fanciful” mark. Given the Respondent's insertion of the trademark “ACTIVIA” into a typo-squatted structure of the domain name combined with the lack of any meaning of the mark “ACTIVIA”, the Panel is satisfied that it is likely that the Respondent knew, or should have known, of the Complainant's mark when it registered the domain name.
Furthermore, the Panel is satisfied that the Respondent's use of a Domain Privacy service when registering the disputed domain name suggests bad faith registration. The Panel held in Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909 that the use of a Domain Privacy service is, “a factor that may often point in that direction [of bad faith registration]”. In addition, the Panel is persuaded by the submission of the Complainant that the Respondent's attempt to sell the disputed domain name to the Complainant for USD250 suggests that the Respondent's main intention was to resell the disputed domain name to its trademark owner for a valuable consideration in excess of documented out of pocket costs. The Panel is satisfied that pursuant to paragraph 4(b)(i), and in the absence of any evidence to the contrary, bad faith registration can be inferred from such behaviour.
Accordingly, the Panel is satisfied that the Respondent registered the disputed domain name in bad faith.
The Panel also finds that the Respondent's actions evidence bad faith use of the domain name under paragraph 4(b)(iv) of the Policy. By substantially incorporating the Complainant's mark in the domain name, then using the domain name for a site which offers commercial links and advertising for business related to the Complainant's mark, the Respondent must have intended to attract, for commercial gain, members of the public to its site by creating confusion as to the source or affiliation of the Respondent's website. Panels have previously held that using famous trademarks to attract Internet users to a website for commercial gains constitutes bad faith use (F.Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956).
Moreover, bad faith use can also be inferred solely from the typo-squatted format of the disputed domain name. The panel held in MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324 that, “the use of a common typographical error that [i]nternet users make when they are likely trying to find a website associated with the Complainant to direct traffic to another site has been evidence accepted to prove bad faith”. Indeed, it has been held in numerous decisions that typo-squatting per se may be a sufficient element to establish bad faith use (SurePayroll, Inc. v. Web Advertising Corp., WIPO Case No. D2007-0470; Swarovski A.G. v. Modern Empire Internet Ltd., WIPO Case No. D2006-0148).
In all the circumstances, the Panel finds that the Respondent registered and used the domain name 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 <wwwactivia.com> be transferred to the Complainant.
David A. R. Williams QC
Dated: September 21, 2009