WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Domain Name Proxy, LLC/Navigation Catalyst Systems, Inc.

Case No. D2010-1444

1. The Parties

The Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & Associés, France.

The Respondent is Domain Name Proxy, LLC of Scottsdale, Arizona, United States of America / Navigation Catalyst Systems, Inc. of El Segundo, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <planetedanone.com> is registered with Basic Fusion, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2010. On August 27, 2010, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the disputed domain name. On August 30, 2010, Basic Fusion, 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 31, 2010 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 3, 2010.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2010.

The Center appointed Mihaela Maravela as the sole panelist in this matter on October 4, 2010. 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 Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In these circumstances, the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules.

4. Factual Background

The following facts have been alleged by the Complainant and not refuted by the Respondent.

The Complainant, a company incorporated under French Law, is a worldwide leading company in fresh dairy products, bottled water, baby food and medical nutrition. The Complainant has registered numerous trademarks DANONE that have been used on labeling, packaging and promotional literature and have been prominently displayed in supermarkets and grocery stores in various regions around the world. Also, the Complainant is the owner of several domain names comprising “danone” including <danone.com> and also of the domain name <planetedanette.com>.

The disputed domain name was registered on April 16, 2010. The disputed domain name is directed to a web page which displays links apparently to websites offering or promoting various services. Some of these links redirect Internet users toward websites with sexual content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its trademark DANONE enjoys a worldwide reputation with regard to fresh dairy products, bottled mineral water, baby food and medical nutrition. It also refers to its trademark and domain name registrations.

The Complainant argues that the disputed domain name is confusingly similar to its trademark DANONE and that the Respondent does not have any rights and legitimate interest to it. Also, the Complainant contends that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name directs towards a website displaying sponsored links.

The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the fame of DANONE trademark is sufficient to prove bad faith registration and use of the disputed domain name. The Complainant states that since the disputed domain name directs towards a pay per click website containing various commercial links, the Respondent registered the disputed domain name in order to make profit based on these commercial links. Furthermore, the Respondent likely received some commercial advantage from offering the adult-oriented content on the website to which the disputed domain name resolves. The Complainant contends that Internet users interested in the Complainant may become confused as to the Complainant’s affiliation and sponsorship of the disputed domain name and the resolving website.

B. Respondent

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

6. Discussion and Findings

A. The Proper party or Parties Respondent/Due process

Initial WhoIs domain name search enquiries, submitted in evidence, yielded an apparent registrant name of Domain Name Proxy LLC. The Registrar, in response to the Center’s verification request, subsequently provided the registrant name as “Navigation Catalyst Systems Inc” with the contact details as set out above.

This suggests that a privacy service is in use, to shield the identity of the domain name registrant from the general public. In general there may be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service. As has been noted by previous panels, the use of privacy services is becoming an increasingly common occurrence, and is a trend which is likely to continue. Under such arrangements the name of the “true” underlying or beneficial registrant is typically not displayed in the registrar’s publicly accessible WhoIs database, and is instead disclosed (if at all) only after the complaint has been filed. At that point, some registrars, presumably in consultation with the privacy service, also apparently disclose the information directly in the WhoIs database.

Further, where information is available to the Center through either a change in the registration information or through a communication from the registrar to the provider, the Center generally invites the complainant to amend its complaint, mentioning that such amendment is commonly made by the simple addition of the newly identified registrant to the complaint. Consequently, the Complainant amended its Complaint and named both Domain Name Proxy LLC and Navigation Catalyst Systems Inc as Respondent.

Paragraph 1 of the Rules defines “Respondent” as the holder of a domain-name registration against which a complaint is initiated.

The Panel must therefore identify the appropriate Respondent or Respondents in this case. This leads to the question, addressed by previous panels as well, whether a privacy service provider should be considered as the respondent or one of the respondents in the administrative procedure, should the identity of the real registrant be disclosed before the procedure starts. In such previous cases panels either (1) treated both the initially listed registrant (privacy service provider) and the subsequently disclosed registrant as the respondent (Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620) or (2) elected to disregard the privacy service provider entirely and to analyze only the acts of the underlying registrant (Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438; Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070).

In the present case, Domain Name Proxy LLC does appear to have been correctly identified in the Complaint as the listed registrant of record in the WhoIs at the time the Complaint was filed. The Registrar appears to have subsequently disclosed the identity of the underlying/beneficial registrant, Navigation Catalyst Systems Inc, who has also been named as a Respondent by the Complainant in the amended Complaint. Accordingly, it is in the Panel’s view appropriate for both of these entities to be included as Respondent in the present case. It should also be noted that the Center sent a copy of the Complaint to both the Respondent initially named in the Complaint (e.g. the Privacy Service), as well as to the registrar-disclosed entity.

Based on the methods employed to provide the Respondent with notice of the Complaint and the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.

Because the Respondent has defaulted in providing a Response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Id.., paragraph 15(a)).

“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 15(a) of the Rules.

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and

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

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

B. Identical or Confusingly Similar

The Panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trademark or service mark.

Here, the Complainant has demonstrated ownership of the registered trademark DANONE by submitting the evidence of registration of:

- DANONE, International Trademark No. 172526, registered on October 31, 1953, duly renewed,

- DANONE, International Trademark No. 228184, registered on February 2, 1960, duly renewed,

- DANONE, United States Trademark No. 3746804 registered on February 9, 2010.

The question of resemblance for the purpose of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved.

Here, the disputed domain name has two differences from the trademark DANONE of the Complainant: the addition of the “.com” suffix and the addition of “planete” to the trademark.

The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to .DANONE since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.

Many panels have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw, WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the complainant’s trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Limited, WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290.

In this case, apart from the generic top level domain, the disputed domain name consists of the Complainant’s trademark DANONE and the prefix “planete”. The suffix “planete” is of a descriptive nature only and the distinctive element of the disputed domain name is obviously the term “danone”. Moreover, in these circumstances, Internet users finding <planetedanone.com> are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the disputed domain name.

It should also be stressed that when a disputed domain name incorporates, as here, the entirety of a complainant’s trademark – and a well-known trademark – the addition of added terms does not serve to distinguish adequately the domain name from the mark. See also F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351. The additional term in this case, “planete”, is a common term of no significance value in distinguishing the well-known mark DANONE from the disputed domain name. See also Pepsico Inc. v. Johan De Broyer, WIPO Case No. D2007-1021.

This finding is consistent with that of previous panels which found disputed domain names to be confusingly similar to the Complainant’s DANONE trademark, despite the addition of generic words (See e.g. Compagnie Gervais Danone v. Bethesda Properties LLC, WIPO Case No. D2007-1451 regarding the domain name <danonepeople.mobi>; Compagnie Gervais Danone v. Christopher Koda, WIPO Case No. D2008-1639, regarding the domain name <superdanone.com>; Compagnie Gervais Danone v. Edward Brooks, WIPO Case No. D2009-0330 regarding the domain name <blogdanone.com>; Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582, regarding the domain name <groupedanone.mobi>.

In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant’s trademarks. See also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 consensus view of WIPO panelists concerning the burden of establishing no 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 a 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.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210).

By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name; or otherwise rebut the Complainant’s prima facie case that no such rights or legitimate interests exist. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the disputed domain name resolves.

The Panel considers that the use made by the Respondent of the disputed domain name does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP. On the contrary, the Panel is satisfied that the Respondent has used and is using the disputed domain name in bad faith to divert Internet users seeking the Complainant’s website through sponsored links to other websites, thereby profiting from the deception of Internet users. This was held also by the panel in Ezeego One Travels and Tours, Ltd. v. Demand Domains, Inc., WIPO Case No. D2010-1347.

The Complainant has exclusive rights to the trademark DANONE and has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name corresponding to its trademark.

Therefore, the Panel is of the view, also taking into account the use of the disputed domain name, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See also F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, WIPO Case No. D2008-0995.

D. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:

(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 to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent documented out-of-pocket costs directly related to the domain name.

(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.

(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the said website location or of a product or service on that website location.

In this case because the disputed domain name resolves to a landing page at which competitive services are offered, the Complainant has established that the Respondent’s use of this domain name is in bad faith. The disputed domain name appears designed to attract Internet users who are looking for the Complainant’s Danone goods, appears to cause confusion with the Complainant’s marks and websites, appears to disrupt the Complainant’s business by diverting consumers away from the Complainant’s websites, and does all of these things for commercial gain because the Respondent profits from the PPC revenue generated by these websites. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The trademark DANONE is well-known. See Compagnie Gervais Danone v. ONEANDONE/ Mariam Mohanna, WIPO Case No. D2009-0730; Compagnie Gervais Danone v. Geijin Kim, WIPO Case No. D2009-0842; COMPAGNIE GERVAIS DANONE v. Zhenglingyan, Lingyan Zheng, WIPO Case No. D2008-1955; Compagnie Gervais Danone v. Australian Internet Investments Pty Ltd, WIPO Case No. D2008-1418. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also the Respondent registered the disputed domain name almost 50 years after the Complainant registered its trademarks.

The finding of the Panel is also evidenced by the fact that the use of the Respondent’s domain name is made in connection with a search engine displaying links to third parties’ websites. The Respondent is ultimately responsible for the content of the website within its control. As such, the Respondent could not avoid responsibility for the automatic generation of links at the subject website. (For examples of recent findings along these lines, in connection with a portal website, see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039; Owens Corning v. NA, WIPO Case No. D2007-1143).

Also, the disputed domain name directs toward a parking page displaying links [toward a parking page displaying links related] to the sex industry business. This Panel agrees with the opinion expressed by previous panels in the sense that use of a disputed domain name to direct Internet users to adult oriented websites is evidence that the domain name is used in bad faith. See Compagnie Gervais Danone v. Filip Skoczynski, WIPO Case No. D2009-0478; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205.

For all the reasons, the Panel concludes that the Respondent must have been aware of the Complainant’s trademarks at the time it registered the disputed domain name. Accordingly, and because the Respondent has also used the disputed domain name in bad faith to attract Internet users to its pay-per-click landing page, the Panel finds that the Complainant has satisfied its burden of proving that Respondent registered and used the disputed domain name 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 <planetedanone.com> be cancelled.

Mihaela Maravela
Sole Panelist
Dated: October 15, 2010