WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. charles, charleswang / Xiamen eName Network Co., Ltd.

Case No. D2014-1961

1. The Parties

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

The Respondent is charles, charleswang of Beijing, China; Xiamen eName Network Co., Ltd. of Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <danonechina.com> is registered with eName Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2014. On November 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2014, 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 November 10, 2014 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 November 10, 2014.

On November 10, 2014, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On November 10, 2014, the Complainant confirmed its request that English be the language of the proceeding by email to the Center. The Respondent did not submit its comments within the specified due date.

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 in English and Chinese, and the proceedings commenced on November 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2014. On December 8 and 10, 2014, the Center received informal response from the Respondent. Accordingly, the Center notified the Respondent of the proceeding to the panel appointment on December 9, 2014.

The Center appointed Jonathan Agmon as the sole panelist in this matter on December 18, 2014. 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, Compagnie Gervais Danone, is a company incorporated in France. The Complainant is part of the Danone Group, and it is the legal owner of all rights title and interests on DANONE trademark worldwide.

The Danone Group is the global leader in dairy products and number two in bottled water and baby food products. The Danone Group employs more than 104,000 people. The Danone Group annual turnover in 2013 was USD 21.29 billion.

The trademark DANONE has become a well-known brand for yogurts.

The Complainant is the owner of numerous trademark registrations for the trademark DANONE worldwide. Among others, the Complainant is the owner of Chinese Trademark registration No. 216985 – DANONE, with the registration date of December 15, 1984; Chinese Trademark registration No. 947448 – DANONE, with the registration date of February 14,, 2007; International Trademark registration No. 849889 – DANONE (designating China), with the registration date of October 29, 2004; and many more.

The Complainant has also registered the trademark DANONE as a domain name under numerous generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs) worldwide, among these: <danone.com>, <danone.com.cn> and <danone.cn>.

The disputed domain name <danonechina.com> was registered on July 29, 2014 long after the Complainant has registered the trademark DANONE worldwide.

The disputed domain name does not point to an active website.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the DANONE trademark, in which the Complainant has rights, seeing that it incorporates the DANONE trademark as a whole.

The Complainant further argues that the disputed domain name reproduces entirely its trademark DANONE with the association of the English geographical term "China" and it is insufficient to avoid confusing similarity with the DANONE trademark.

The Complainant further argues that by registering the disputed domain name the Respondent created a likelihood of confusion with Complainant's trademark.

The Complainant further argues that the Respondent is neither commonly known by the name "Danone" nor in any way affiliated with Complainant, nor authorized or licensed to use the DANONE trademark, or to seek registration of any domain name incorporating the DANONE trademark.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its

DANONE trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not using the disputed domain name, and that it has registered more than 230 domain names reproducing other well-known trademarks, thus it cannot be inferred that the Respondent is making any legitimate use of the disputed domain name.

The Complainant further argues that it is implausible that the Respondent was unaware of the Complainant when it registered that disputed domain name.

The Complainant further argues that from the Respondent's pattern of conduct it can be assumed that it had knowledge of the DANONE trademark at the time of registering.

The Complainant further argues that the Respondent registered the disputed domain name and the domain name <fonterrachina.com> which is associated with the Complainant's supplier in an attempt to take undue advantage of the domain names to either sell them to the Complainant or its competitors.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant argues that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name.

The Complainant further argues that the Respondent does not use the disputed domain name at present and its passive use is considered bad faith.

The Complainant further argues that the Respondent registered around 230 domain names reproducing other well-known trademarks and that the Respondent is involved in cybersquatting behavior which is also an evidence of use in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not formally reply to the Complainant's contentions. The Center only received two emails in Chinese from the Respondent on December 8 and 10, 2014, in which the Respondent argues that "Danone" is a common name and has no distinctiveness.

6. Discussion and Findings

A. Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name <danonechina.com> consists of Latin-script letters, rather than Chinese characters;

b) The disputed domain name includes the Complainant's mark, as well as the English name of the country China;

c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns numerous worldwide trademark registrations for the mark DANONE. For example: Chinese Trademark registration No. 216985 – DANONE, with the registration date of December 15, 1984; Chinese Trademark registration No. 947448 – DANONE, with the registration date of February 14, 2007; International Trademark registration No. 849889 – DANONE (designating China), with the registration date of October 29, 2004; and many more.

The Complainant also owns the domain name with the trademark DANONE, i.e., <danone.com>

The disputed domain name <danonechina.com> is identical to the registered trademark DANONE apart from the addition of the geographical term "china". The disputed domain name integrates the Complainant's trademark DANONE in its entirety, as a dominant element.

The addition of the geographical term "china" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant DANONE trademark as "china" stands for the where the Complainant also conducts business. It is clear that the most prominent element in the disputed domain name is the term "danone". Consequently, the panel finds that the disputed domain name is confusingly similar to the Complainant's DANONE trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, "the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark." (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, "[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark" (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the addition of a gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the DANONE trademark, or a variation thereof.

The Respondent had not submitted a formal Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark DANONE and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark, the Complainant has owned a registration for the DANONE trademark at least since the year 1984. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

In addition, the evidence shows that the Respondent has not been using the disputed domain name. Evidence of passive holding of a domain name has been held under some circumstances amount to the Respondent acting in bad faith. The Panel in particular is taking into consideration the Complainant's argument and evidence that the Respondent has registered more than 230 other domain names which are reproduction of other well-known trademarks, arguments that were not rejected by the Respondent, moreover, the Panel notes that Respondent's failure to provide evidence of any actual or contemplated good faith use of the disputed domain name meet paragraph 4(a)(iii) of the Policy while holding a domain name passively would be regarded as evidence of bad faith use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In the instant case, the Complainant has provided sufficient evidence to show that its DANONE trademark has strong reputation and is widely known. The record also shows that the Respondent provided no evidence of use of the disputed domain name and did not formally respond to the Complaint. The Respondent's passive holding of the disputed domain name also indicates in this case bad faith registration and use of the disputed domain name: "The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept." See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754. See also: "The significance of the distinction is that the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." (Telstra Corporation Limited v. Nuclear Marshmallow, supra).

Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant's DANONE trademark, as a domain name may be considered as a clear indication of bad faith use. (See Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441). Another indication for the Respondent's bad faith use is raised from the incorporation of the Complainant well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so. (Intel Corporation v. The Pentium Group, WIPO Case No. 2009-0273). The circumstances of this case, and especially the use of the Complainant well-known trademark as the prominent part of the disputed domain name may also indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith registration and use of the disputed domain name. Finally, the evidence shows that the Respondent has been engaged in systematic activity of registering domain names comprising trademarks of known brands and companies. Such systematic behavior is further evidence of bad faith registration and use of the disputed domain name.

In light of the Complainant's distinctive registered trademark and the Respondent's use of a confusingly similar disputed domain name, the Panel finds that the Respondent registered and is 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 <danonechina.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: January 1, 2015