Complainant is Companie Gervais Danone, of Paris, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Laurie Cheoux, of Barcelona, Spain.
The domain name at issue <activiaconsulting.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2008. On November 4, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 11, 2008, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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”).
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 November 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2008. The Response was filed with the Center on November 27, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 11, 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.
Both Complainant and Respondent submitted supplemental filings in this matter. The panel did not request such filings and sees no need for the same. Accordingly the Panel declines to accept and will not consider for any purpose the supplemental filings of Complainant and Respondent.
Complainant is a supplier of fresh dairy products, bottled mineral water, baby food, and medical nutrition. Complainant has almost 90,000 employees working in five continents. Complainant holds numerous trademarks for the word mark and mark and design ACTIVIA, including trademarks issued in Spain. (Complaint, Annex 3). The registrations issued as early as 1999 for the word mark and 2000 for the mark and design. Complainant has advertised the ACTIVIA mark on television in Spain in 2006, 2007, and 2008. (Complaint, Annex 9). In 2006 and 2007, Complainant produced almost 150,000 tons of ACTIVIA products in Spain. In 2008, it is estimated that more than 86,000 tons of ACTIVIA products will be produced in Spain.
Complainant's product identified by the ACTIVIA trademark is a yogurt with a probiotic culture. (Complaint, Annex 4).Complainant owns several domain names featuring the ACTIVIA mark as the second level domain, including <activia.com>, <activia.es>, <activia.fr>, <activia.it>, and <activia.de>. (Complaint, Annex 5).
Complainant became aware that the domain name <activiaconsulting.com> was registered on February 25, 2008. (Complaint, Annex 1). Complainant sent Respondent a cease and desist letter on June 10, 2008. (Complaint, Annex 6). On June 11, 2008, Complainant received a reply from Respondent stating that Respondent agreed to cancel the domain name at issue and acknowledged Complainant's trademark rights. (Complaint, Annex 7). On June 12, 2008, Respondent sent Complainant a letter in which Respondent said she had discussed the matter with her lawyer, and that she did not want to cancel the domain name at issue. Id. Complainant contacted Respondent's lawyer to request the basis for the refusal of the cancellation. (Complaint, Annex 8). Complainant received no response to this request.
Respondent is not affiliated with Complainant and has not been authorized by Complainant to register or to use its ACTIVIA trademarks. Respondent has not been commonly known by the domain name at issue.
Complainant contends that the domain name at issue is confusingly similar to Complainant's ACTIVIA marks, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent contends that the domain name at issue is not confusingly similar to Complainant's ACTIVIA marks, since when the logos of the two enterprises are compared they are clearly distinguishable. Respondent further contends that on March 26, 2008, Respondent applied for a trademark for A.C. ACTIVIA CONSULTING with the Spanish Trademark and Patent authority, and that the process is still ongoing. Respondent acknowledged that Complainant had filed an opposition thereto. Respondent contends that this application is evidence of rights and legitimate interests in respect of the domain name at issue. Finally Respondent contends that the addition of the word “consulting” after the word “activia” shows that Respondent intended to use the ACTIVIA brand in a different way, and that the reason that Respondent chose the word “activia” for Respondent's trademark is because the Latin root of “activia” is “act,” which suggests “movement, action, evolution and progress.” “The verb “activar” in Spanish means “activate” in English which corresponds to the foundation of ACTIVIA CONSULTING's concept.”
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
Where a domain name incorporates the complainant's mark in its entirety, the domain name is generally confusingly similar to the complainant's mark, despite the addition of other words in the domain name and despite the fact that common words may be appended or common words inserted therein. This is the so-called “objective test” adopted by the majority of WIPO UDRP panelists. See Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Therefore the Panel finds that the domain name at issue, which incorporates Complainant's ACTIVIA mark and adds the common word “consulting”, is confusingly similar to Complainant's mark
The consensus view of WIPO UDRP panelists concerning the burden of establishing the respondent's lack of rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case, Respondent contends that it has applied for the mark AC ACTIVIA CONSULTING with the Spanish trademark authorities, and that this is proof of Respondent's rights and legitimate interests in respect of the domain name at issue.
The application for a similar trademark with a national authority, especially where complainant has opposed the application, does not give one rights and legitimate interests in a domain name. Respondent has produced no evidence of an ongoing business in which the domain name at issue has been used, or of any use of the name “Activia Consulting” prior to its registration in the domain name at issue. Accordingly, the panel finds that Respondent has not demonstrated rights and legitimate interests in respect of the domain name at issue.
Respondent attempts to explain its registration of the domain name at issue by suggesting that it registered the domain name including “activia” therein, because the term “activia” is derived from a Latin root meaning “act” and that act suggests “movement,” etc. and that this somehow suggests what Respondent hopes to accomplish with Respondent's consulting business.
ACTIVIA is a fanciful mark. It is not a common or generic word. It has been advertised extensively in Spain. It is not at all related to the business of employment consulting. While the logos of Complainant and Respondent are not confusingly similar in style, the predominant colors in Complainant's colors are green and blue and the exclusive colors in Respondent's logo are green and blue. Respondent did not register the domain name at issue until long after Complainant had registered the ACTIVIA marks and after they had been advertised extensively, including in Spain, the country in which Respondent is resident. The Panel finds that under all of the facts and circumstance of this case that Respondent has registered and is using the domain name at issue in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
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, <activiaconsulting.com>, be cancelled, per the express request of Complainant.
M. Scott Donahey
Dated: December 18, 2008