WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Domain By Proxy, LLC / SEO Services, Inc.

Case No. D2013-1158

1. The Parties

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

Respondents are Domain By Proxy, LLC of Scottsdale, Arizona, United States of America (“US”), and SEO Services, Inc. of Cumberland, Rhode Island, US.

2. The Domain Name and Registrar

The disputed domain name <activiacoupons.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2013. On June 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 5, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 9, 2013.

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 Respondents of the Complaint, and the proceedings commenced on July 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on July 30, 2013.

The Center appointed Christian Pirker as the sole panelist in this matter on August 7, 2013. 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

Complainant, Compagnie Gervais Danone, is a French food-products multinational corporation, selling fresh dairy products including yogurts under the trademark ACTIVIA.

Complainant’s brand, ACTIVIA, has been used by Complainant since 1987. Complainant submitted, in support of its Complaint against Respondents a list and copies of its international and United States Patent and Trademark office (USPTO) deposits:

- ACTIVIA, International Trademark Registration No. 725041, in classes 29, 30 and 32, registered on October 13, 1999.

- ACTIVIA, US Trademark Registration No. 2613732, in classes 29, 30 and 32, registered on September 3, 2002.

Additionally, Complainant owns several domain names to present its products and services:

- <activia.com> registered on October 27, 2003;

- <activia.us.com> registered on December 17, 2007.

The disputed domain name, <activiacoupons.com>, was created on August 6, 2012.

5. Parties’ Contentions

A. Complainant

First, Complainant claims that the disputed domain name <activiacoupons.com> is confusingly similar to its trademark ACTIVIA because it reproduces its “well-known” and “widely known” trademark in its entirety. Moreover, the mere addition of a generic and descriptive term as “coupons” does not distinguish the disputed domain name from Complainant’s trademark.

Further, Complainant claims that Respondents have no rights or legitimate interests in the disputed domain name because there is no connection with Complainant, and no authorization to use the trademark ACTIVIA or to seek registration of any domain name incorporating said mark. Furthermore, Respondents have no prior rights or legitimate interests in the disputed domain name.

Likewise, to Complainant, the fact that one of Respondents is an anonymous service, which has already been the respondent in 90 different cases before the Center and the National Arbitration Forum, and 26 since the beginning of the year, highlights the fact that Respondents have no rights or legitimate interests in the disputed domain name.

According to Complainant, the registration of the disputed domain name has been done in bad faith. As ACTIVIA is a well-known trademark, Respondents could not ignore its existence. The use of the trademark with a non-distinctive term as “coupons” proves that Respondents were aware of Complainant’s trademark and suggests opportunistic bad faith.

To Complainant, a quick search about ACTIVIA trademark would have revealed its existence.

Complainant alleges that there is also a use in bad faith of its trademark ACTIVIA by Respondents as they use the disputed domain name to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues. Respondents are taking undue advantage of its trademark to generate profits which constitute a use in bad faith.

Moreover, the website contains pay-per-clicks links “Yoplait coupons” and “YoCrunch Coupons”, which are Complainant’s direct competitors. According to Complainant it might create a confusion and Internet users could think those enterprises are linked to its business.

Complainant requests the Panel to issue a decision that the disputed domain name <activiacoupons.com> is transferred to the Complainant.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 (a) of the Rules instructs the Panel to:

“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 states that Complainant must prove that each of the three following elements are present:

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

(ii) that Respondents have no rights nor legitimate interests in respect of the disputed domain name; and

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

A. Identifying the Respondent(s)

From a purely procedural perspective, in the view of the Panel and as mentioned in prior UDRP decisions, it is not necessarily significant in this case who is named as a respondent in the heading of a complaint. A complainant will usually satisfy its procedural obligation under the Policy by identifying as the “respondent” the person or persons named in the publically available WhoIs register at the time that the Complaint is filed with the Center. See e.g. Rapidshare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and Rapidshare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894.

That said, in this Panel’s view the individual or entity named as the formal respondent in this proceeding in practice does not necessarily matter. “The reason for this is that it is the motives and interests of the person, who de facto controls the domain name, and has been responsible for its registration, which is significant when addressing issues under the Policy. Take for example the position of an agent who has registered a domain name in his name on behalf of another. If the person actually controlling the domain name registered that domain name in bad faith, it is no answer to this that the named agent had no knowledge of a complainant’s mark and so far as he alone was concerned had acted in good faith. To hold otherwise would drive a coach and horses through the operation of the Policy. In such circumstances the knowledge of the principal is to be imputed to the agent. There is no reason why a privacy service should be treated in different way to any other agent in this respect.” See e.g Rapidshare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and Rapidshare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894.

In conclusion, as stated in RapidShare AG, Christian Schmid, supra, which addresses the use of privacy or proxy services and the UDRP, this Panel considers in this case that the relevant domain name is in fact controlled by both persons, the privacy service as public registrant and the underlying registrant and that naming both entity as Respondents respects the UDRP rules (see, for example, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED., WIPO Case No. D2008-1675).

B. Identical or Confusingly Similar

The term “Activia” is included in Complainant’s trademarks which are registered in numerous countries including the US and in various classes (e.g. 29, 30 and 32), mainly for Fresh dairy products.

As mentioned above, the disputed domain name is <activiacoupons.com> and the question is therefore whether the disputed domain name is identical or confusingly similar to Complainant’s trademark. Previous UDRP panels have decided that “essential” or “virtual” identity is sufficient:

In the present case, the trademark appears to be ACTIVIA. Accordingly, this trademark in its entirety is included in the disputed domain name. Moreover, the adjunction of the word “coupons” to the trademark ACTIVIA in the disputed domain name does not diminish the confusing similarity with the trademark, since the essential part of the disputed domain name and the trademark is the term “Activia” and the word “coupons” is an ordinary English world. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark.

It further appears to the Panel that such descriptive component added to Complainant’s trademark even adds to the confusion by leading users to believe that Complainant operates the website associated to the disputed domain name. See e.g. Dr. Ing.h.c.F.Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888, AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.

Accordingly, the Panel finds that the disputed domain name <activiacoupons.com> is confusingly similar to Complainant’s trademark ACTIVIA in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy a respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent 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) have been commonly known by the Domain Name, even if the Respondent have 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.

It is for Complainant to demonstrate that this condition is met prima facie. Provided that Complainant is successful in demonstrating that the condition is met prima facie, it is for Respondents to demonstrate their rights or legitimate interests. Accordingly, the burden of production shifts to Respondents.

Complainant alleges that Respondents have no rights or legitimate interests in the disputed domain name.

Respondents failed to respond to the Complaint.

Moreover, there is no evidence in the file that Respondents have rights or legitimate interests in the disputed domain name.

Accordingly, the Panel considers that Respondents do not have any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

The third element to be established by Complainant is that the disputed domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.

(i) Circumstances indicating that the Respondent has registered or the Respondent 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 your 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 of a competitor; or

(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or your location.

The Panel notes that some UDRP panelists in certain default cases have accepted credible factual allegations from a complainant as true, particularly as these pertain to paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, e.g., Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939.

Complainant’s allegations in this case going to the disputed domain name having been registered and being used in bad faith could be accepted as true. That being said, the Panel further states the following:

The disputed domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001).

The Panel considers that the evidence submitted establishes that the choice of the disputed domain name by Respondents could hardly be a coincidence. First, adding the word “coupons” to Complainant’s trademark indicates Respondents’ purposeful choice – and awareness - of a domain name that is confusingly similar to Complainant’s trademark and products. Further, the disputed domain name reverts to a website containing advertising links which are likely to generate revenues. Accordingly, the Panel considers that the disputed domain name was registered in bad faith.

It is the Panel’s opinion that the intention behind Respondents’ registration of a domain name containing Complainant’s trademark is merely to capture Complainant’s customers who are seeking for its product “Activia” yogurt, and maybe more specifically for discount coupons, and to re-direct them to other websites. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, paragraph 4(b)(iv) (e.g., Compagnie Générale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752).

Further, the Panel finds that the circumstances in this case lead to the conclusion of bad faith use for the following reasons:

- The disputed domain name may lead customers or potential customers of Complainant’s product “Activia” to believe that they are on Complainant’s website. Further, the disputed domain name is currently used as a “click-through” revenue generating site which provides income to Respondents by inducing Internet users to click through sponsored links. Such use of a domain name is neither legitimate, nor in good faith

- Respondents’ use of the disputed domain name has no relation to Complainant’s activities except for misleading potential customers.

- Respondents did not actively participate in the proceedings.

As a result, the Panel holds that both elements of paragraph 4(a)(iii) of the Policy have been met. The Panel thus concludes that Complainant has established that Respondents registered and are using the disputed domain name in bad faith.

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 <activiacoupons.com> be transferred to Complainant.

Christian Pirker
Sole Panelist
Date: August 21, 2013