WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit Anonyme des Eaux Minrales d’Evian (SAEME) v. Randall Steinmeyer

Case No. D2008-0444

 

1. The Parties

The Complainant is Socit Anonyme des Eaux Minrales d’Evian (SAEME), Evian of France, represented by Cabinet Dreyfus & associs, France.

The Respondent is Randall Steinmeyer, San Diego, California of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <e-vian.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2008. On March 25, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On March 25, 2008, Wild West Domains, 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”), 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 April 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2008.

The Center appointed Mary Padbury as the sole panelist in this matter on May 5, 2008. 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 Complainant is a subsidiary of the French company, Groupe Danone. Socit Anonyme des Eaux Minrales d’Evian (SAEME) is a company incorporated under French law. Evian water was discovered in 1789 by the Marquis of Lessert. The first official authorizations to bottle the water from the Evian stream date back to 1826. In 1901, at least 8 million bottles of Evian mineral water were sold. Today, Evian mineral water is the best selling mineral water in the world with 1.5 billion bottles sold every year. It is sold on 5 continents and in 125 countries.

SAEME is the owner of numerous international trademarks for EVIAN throughout the world including the following:

- International trademark ‘EVIAN’ N 235956, filed on September 24, 1960, renewed, and covering goods in classes 32 and 33.

- International trademark ‘EVIAN’ N 323720, filed on October 21, 1966, renewed, and covering goods in classes 32 and 33.

- International trademark ‘EVIAN’ N 411912, filed on December 16, 1974, renewed, and covering goods in class 3.

- International trademark ‘EVIAN’, N 496245, filed on September 23, 1985, renewed, and covering goods and services in classes 25.

- International trademark ‘EVIAN’ N 497482, filed on October 21, 1985, renewed, and covering goods and services in class 32.

- International trademark ‘EVIAN’ N 696812, filed on July 6, 1998, covering goods and services in classes 3, 5 14, 16, 18, 24, 25, 28, 32, 33, 42.

- International trademark ‘EVIAN’ N 757317, filed on January 29, 2001, covering goods in classes 3, 5 and 32.

- International trademark ‘EVIAN’ N 764063, filed on April 18, 2001, covering goods and services in classes 38.

SAEME is also the owner of US trademarks for EVIAN including the following:

- US trademark ‘EVIAN’ N 2770225, filed on September 15, 2000 and covering goods in class 3.

- US trademark ‘EVIAN’ N 2822102, filed on November 20, 2001 and covering goods in class 32.

- US trademark ‘EVIAN’ N 2821896, filed on November 15, 1999 and covering goods in class 32.

- US trademark ‘EVIAN’ N 2904034, filed on November 4, 1999 and covering goods in class 3.

- US trademark ‘EVIAN’ N 1155024, filed on April 3, 1979 and covering goods in class 32.

 

5. Parties’ Contentions

A. Complainant

The Complainant noticed that the domain name <e-vian.com> was registered on August 21, 2007. The Complainant sent the Respondent a warning letter dated September 13, 2007 via the registrar, Wild West Domains, Inc., by registered letter and e-mail. Despite two reminders on October 31, 2007 and on December 3, 2007, the Complainant has not received a response from the Respondent. Annex 14 to the Complaint suggests that the Respondent is the holder of a large number of domain names including some that incorporate well-known trademarks. For instance, the Respondent is the holder of the domain names <mp3napster.com>, <aol-search.biz> and <e-b-ay.biz>.

The Complainant contends that the domain name is confusingly similar with the Complainant’s trademark EVIAN. In particular, the Complainant argues that the mere inclusion of the hyphen in the domain name <e-vian.com> is not sufficient to avoid any risk of confusion with the Complainant’s trademark. Further, the Complainant notes that the authorities establish that the addition of “.com” is not a distinguishing feature and does not have an impact on the likelihood of confusion. Reference is made to Celmec International Pty Ltd. v. Bishni Subedi, WIPO Case No. D2006-0769.

The Complainant contends that the Respondent has no rights or legitimate interest in the domain name and notes that the Respondent is not affiliated with the Complainant in any way and has not been authorized to use and register its trademark or to seek the registration of any domain name incorporating its mark. Further, the Complainant contends that the Respondent has no prior rights or legitimate interests in the domain name and notes that the registration of the Complainant’s numerous trademarks for EVIAN precede the registration of the domain name by many years. The Complainant argues that the fact that the domain name is so similar to the famous trademark of the Complainant means the Respondent cannot reasonably contend it was intending to develop a legitimate activity.

Lastly, the Complainant contends that the domain name was registered and is being used in bad faith. The Complainant argues that the Respondent knew or must have known of the Complainant’s products and trademark at the time it registered the disputed domain name. It believes that EVIAN is a famous trademark particularly in the United States of America. It refers to Societ Anonyme Des Eaux Minerales d’Evian v. Evian Sport, NAF Case No. FA133620 where it was found that the distinctive nature of the EVIAN mark and its incorporation in its entirety within the <eviansport.com> domain name allowed for the inference the respondent had actual knowledge of the complainant’s rights to the EVIAN mark prior to registration. The Complainant also notes that a simple search via Google or any other search engine using the key word “evian” demonstrates that all first results relate to the Complainant’s products or news and that it is unlikely that the registration of the domain name by the Respondent was a pure coincidence. The Complainant also notes the Respondent is the holder of numerous domain names, many of them including famous domain names. It appears that the Respondent is a lawyer who has registered a large number of domain names.

The domain name in issue directs towards a search page containing “sponsored links” such as “Evian mineral spray”, “bottled water equipment”, “evian wholesale” and “by Evian”, some of which feature the Complainant’s competitors such as Veen. The Complainant contends that this constitutes bad faith under the Policy on the basis that a domain name confusingly similar to the Complainant’s mark, is being used to link to a website of the Complainant’s competitor or containing links featuring the Complainant’s competitors and that the domain name is being used to attract, for commercial gain, Internet users to the Respondent’s website or other sponsored links.

B. Respondent

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

 

6. Discussion and Findings

The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. The Complainant has the onus of proving three elements:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain name <e-vian.com> is confusingly similar to the trademark EVIAN. The domain name incorporates the Complainant’s trademark with a hyphen. The addition of a hyphen and “.com” does not preclude confusion (see National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128 and Braudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059).

B. Rights or Legitimate Interests

The Panel must decide whether the Respondent has any rights or legitimate interests to the domain name. In doing so, regard may be had to circumstances which might demonstrate this as follows:

(i) before notice to the Respondent of the dispute, the Respondent’s 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) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or

(iii) the Respondent, making a legitimate non-commercial 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 Panel accepts the contention of the Complainant that the Respondent has no rights or legitimate interests in the domain name. The use of a domain name which is confusingly similar to the Complainant’s trademarks for a site which redirects to goods which compete with those of the Complainant cannot be considered to be bona fide. There is no evidence that the Respondent, as an individual, business of other organization has been commonly known by the domain name. It is apparent that the Respondent’s use is commercial.

C. Registered and Used in Bad Faith

The Panel is satisfied that the domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith, paragraph 4(b) of the Policy:

(i) circumstances indicating that the Respondent has registered 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 for valuable consideration in excess of the Respondent’s 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 domain name in a corresponding domain name, provided 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 of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product of service on your website or location.

It appears that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Respondent’s mark as to source, sponsorship, affiliation or endorsement of the website or location of a product or service on the website or location. This is covered by paragraph 4(b)(iv) of the Policy. As such, the Panel finds evidence of registration and use in bad faith.

 

7. Decision

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 <e-vian.com> be cancelled.


Mary Padbury
Sole Panelist

Dated: June 12, 2008