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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone and Danone US, LLC v. Asther Crow

Case No. DME2019-0008

1. The Parties

The Complainant is Compagnie Gervais Danone, France and Danone US, LLC, United States of America (“United States”), represented by Dreyfus & associés, France.

The Respondent is Asther Crow, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <dannon.me> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 September 17, 2019, 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 amended Complaint on September 19, 2019.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2019.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on October 18, 2019. 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.

4. Factual Background

The Complainants, Compagnie Gervais Danone and Danone US, LLC, belong to the Danone Group. The Danone Group is a producer of dairy products. It is present in over 120 countries and employs more than 100,000 people in over 55 countries.

The Complainant, Danone US, LLC, is the proprietor of the trademark DANNON, registered inter alia as a United States trademark No. 3412771 on April 15, 2008. The Complainant, Compagnie Gervais Danone, is the proprietor of the trademark DANONE, registered inter alia as a European Union trademark No. 006765051 on October 2, 2008.

In addition, the Complainant operates various domain names such as <dannon.com> and <danone.com>.

The disputed domain name was registered on September 19, 2018 and once redirected to a website at “http://thefoxandthehound.me/” offering a variety of music albums to download. Shortly before the filing of the Complaint, the disputed domain name resolved to a different website entitled “dannon Jatt Converter” featuring a search engine and music tracks. The links embedded in the music tracks resolved to another website containing various random links. At the time of the Decision, the disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant’s trademarks DANNON and DANONE are well-known trademarks as established by previous UDRP panels. The disputed domain name incorporates the trademark DANNON in its entirety and is hence identical to the Complainant’s trademark. The disputed domain name is also confusingly similar to the Complainant’s trademark DANONE as it merely omits the letter “e” and adds the letter “n” to the Complainant’s trademark. This difference is insufficient to remove similarity between the trademark DANONE and the disputed domain name.

The Respondent has no rights or legitimate interests in the disputed domain name; the Respondent is not known by the name “Dannon” or “Danone” and has not been authorized to use the Complainant’s trademark or the disputed domain name. The disputed domain name has not been used in connection with any legitimate noncommercial or fair use of the Complainant’s trademark. The disputed domain name once redirected to “http://thefoxandthehound.me/”, a website featuring various links to download music, and now resolves to a website different website entitled “dannon Jatt Converter” featuring a search engine and music tracks. The links embedded in the music tracks resolved to another website containing various random links. At the time of the Decision, the disputed domain name does not resolve to any active website.

Because of the reputation of the Complainant’s trademarks DANNON and DANONE, the Respondent must have been aware of the Complainant when registering the disputed domain name; and the disputed domain name is used to attract, for commercial gain, Internet users to the Respondent’s website by creating confusion with the Complainant’s trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element, a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element, a complainant must establish that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

The Complainant has submitted proof that it is the proprietor of the registered trademarks DANNON and DANONE. The country code Top-Level Domain (“ccTLD”) “.me” is a standard registration requirement and as such is disregarded under the confusing similarity test.

The disputed domain name contains the Complainant’s trademark DANNON in its entirety and is hence identical with the Complainant’s trademark DANNON. The Panel also finds that the omission of the letter “e” and the addition of the letter “n” in the disputed domain name are insufficient to remove similarity between the disputed domain name and the Complainant’s trademark DANONE.

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s respective trademarks and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the Respondent’s rights or legitimate interests in a disputed domain name, the burden of production shifts to the Respondent to come forward with evidence of such rights or legitimate interests. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

In addition, the Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant (see section 2.5.1 of the WIPO Overview 3.0).

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the Respondent has] registered or has 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) [the 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

The Panel agrees with previous UDRP panels that the Complainant and its trademarks DANNON and DANONE are widely known trademarks in various countries. It is therefore inconceivable that the Respondent would not have been aware of the Complainant or its trademarks when registering the disputed domain name. This finding is supported by the fact that the disputed domain name is identical with the Complainant’s trademark DANNON.

As held by the Panel in, MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765 “likelihood of confusion will inevitably result in the diversion of Internet traffic from Complainant’s to Respondent’s site”. It is therefore evident that the Respondent is misusing the reputation of the Complainant’s trademark in order to increase traffic to the Respondent’s website and hence is seeking to benefit commercially from the Complainant’s trademark.

As the Complainant has not allowed the Respondent to use the Complainant’s trademark or the disputed domain name, and according to the section 4 above, the dispute domain name dynamically redirected to different websites, the Panel finds that the disputed domain name was used to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s trademark and the online locations of the Complainant’s authorized services providers. The inactive nature use of the dispute domain name now does not prevent a finding of bad faith in this case.

Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.

7. Decision

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 <dannon.me> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: October 19, 2019

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