WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yoplait Marques Internationales and Yoplait France v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2012-0067
1. The Parties
The Complainant is Yoplait Marques Internationales and Yoplait France of Paris, France, represented by SCP Deprez, Guignot et Associés, France.
The Respondent is Above.com Domain Privacy of Victoria, Australia / Host Master, Transure Enterprise Ltd of Virgin Islands (British), Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <yoplaitfrancais.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2012. On January 17, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 22, 2012, Above.com, 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 February 2, 2012 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 February 7, 2012.
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 Respondent of the Complaint, and the proceedings commenced on February 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2012.
The Center appointed Arne Ringnes as the sole panelist in this matter on March 8, 2012. 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.
Due to certain exceptional circumstances, it has been necessary for the Panel to extend the due date of the Decision to the date indicated in paragraph 7 below.
4. Factual Background
The Complainant is the owner of several trademark registrations for the mark YOPLAIT that predate the Respondent’s registration of the disputed domain name of April 4, 2011. The Complainant’s trademark registration in France dates back in 1965. Since then the Complainant has obtained several registrations throughout the world. The Complainant also holds several domain name registrations including the mark YOPLAIT.
5. Parties’ Contentions
The Complainant is the owner of several YOPLAIT trademarks and runs several domain names including this mark. The Complainant submits that the mark YOPLAIT is well-known.
The Complainant further submits that the disputed domain name reproduces the Complainant’s trademark and company name in its entirety and merely adds “francais”. According to the Complainant, the French origin of YOPLAIT is well-known and the French term “francais” is used to designate several of the YOPLAIT products. The addition of the country name does not avoid confusion, especially where the Complainant has a well established trademark. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant alleges that the Respondent is not an authorized agent or licensee of the Complainant and is granted no permission to use the Complainant’s mark. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has parked the disputed domain name and has not made any legitimate offering of goods or services. Instead, the disputed domain name diverts Internet users from the official YOPLAIT pages. The Complainant submits that the disputed domain name has been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
According to previous UDRP panels a registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has several registrations for YOPLAIT that predate the registration of the disputed domain name. The Complainant’s mark is very well known.
The disputed domain name includes the Complainant’s trademark YOPLAIT in its entirety and as a dominant element. The disputed domain name differs from the registered YOPLAIT trademark by the additional term “francais” and “.com”. The Panel finds that the term “francais”, which simply means “French” in French, is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. On the contrary, this term refers to the origin of the Complainant and its products. Previous UDRP panels have ruled that the mere addition of a non-significant element does not generally sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
Further and with respect to the addition of “.com” the Panel refers to previous UDRP panels that have ruled that the mere addition of a gTLD suffix is not sufficient to avoid confusing similarity, see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
On the basis of the above the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the Respondent has not responded the Panel concludes that it has failed to assert any rights or legitimate interests. Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent has registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long time after the Complainant registered its trademark. It is indicative of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence of any good faith use by the Respondent of the disputed domain name, the Panel considers on balance that the Respondent has registered and used the disputed domain name in bad faith. Thus, the Panel finds the third requirement of paragraph 4(a) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <yoplaitfrancais.com> be transferred to the Complainant.
Dated: April 3, 2012