WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Confident

Case No. D2015-0507

1. The Parties

The Complainant is Société Anonyme des Eaux Minérales d'Evian (SAEME) of Evian-les-Bains, France, represented by Dreyfus & associés, France.

The Respondent is Confident of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <evian1992.com> is registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2015. On March 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On March 25, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 25, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 proceeding commenced on April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 23, 2015.The Center appointed Jonathan Agmon as the sole panelist in this matter on May 6, 2015. 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, Société Anonyme des Eaux Minérales d'Evian (SAEME), is a French Company and a subsidiary of the French Danone Group. The Complainant has been active since 1878 and is one of the world's most known suppliers of mineral water. The brand EVIAN is sold in 143 countries, including in China where the Respondent is located.

The Complainant is the owner of multiple trademark registrations for the EVIAN marks around the world, including in China where the Respondent is located. For example: International Registration designating China No. 696812 – EVIAN (logo), dated of July 6, 1998 (renewed), covering services in classes 3, 5, 14, 16, 18, 24, 25, 28, 32, 42; International Registration designating China No. 734748 – Mountain logo dated of May 19, 2000, and International Registration designating China No. 855738 – EVIAN dated of June 6, 2005.

Through extensive use around the world, the EVIAN trademarks have generated vast goodwill and have become well-known.

The Complainant also developed an extensive presence on the Internet and is the owner of several domain names, which contain the name "evian". For example: <evian.com> and <evian.ch>.

The disputed domain name <evian1992.com> was registered on April 4, 2014.

The disputed domain name resolves to a website operating in Chinese offering cosmetics for sale and displaying the wording "evian les-bains" and a designed element similar to the Evian Mountain logo trademark.

The Complainant sent the Respondent a cease-and-desist letter, to which no response was received.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's EVIAN trademark and name. The Complainant further contends that the addition of the numerical term "1992" does not avoid a finding of confusing similarity.

The Complainant further argues that the EVIAN trademark has generated vast good will through the Complainant's extensive use around the world and specifically in China and has become a well-known trademark.

The Complainant further argues that the public associates the mark EVIAN exclusively with high quality products by the Complainant.

The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its EVIAN trademark and is not affiliated or otherwise connected to the Respondent.

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

The Complainant argues that the disputed domain name was improperly registered and is being improperly used. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official EVIAN website and is affiliated with the Complainant.

The Complainant further argues that the Respondent has not only used the EVIAN mark under the disputed domain name, but also displays the EVIAN mountain logo on the home page.

The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant's famous and well-known trademark when registering the disputed domain name.

The Complainant further argues that the Respondent has done nothing to identify himself as being independent from the Complainant. On the contrary, the Respondent incorporates the Complainant's trademark in the website to which the disputed domain name resolves.

The Complainant argues that it sent the Respondent a cease-and-desist letter in an attempt to resolve the dispute outside the administrative proceeding, to which the Respondent did not respond, which further supports the Respondent's bad faith.

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

B. Respondent

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

6. Discussion and Findings

A. Procedural Issue – 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 appears to be in Chinese.

The Complainant requested that the language of proceedings 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).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name consists of Latin characters, rather than Chinese characters;

b) 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 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.

Also, the Complainant's rights in the well-known EVIAN marks have been established in numerous UDRP decisions (Société Anonyme des Eaux Minérales d'Evian (SAEME) v. usbevian.com Private Registrant, WIPO Case No. D2013-0848; Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Evian Dayspa, WIPO Case No. D2010-0416; Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Nadex Aktiebolag, WIPO Case No. D2010-0328; Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080; Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Vivi Bui and Evian Dayspa, WIPO Case No. D2008-1869).

The disputed domain name differs from the registered EVIAN trademark by the additional numerical term "1992" and the additional generic Top-Level Domain ("gTLD") ".com".

The disputed domain name integrates the Complainant's EVIAN trademark in its entirety, as a dominant element.

The additional term "1992" and the gTLD ".com" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's 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 the Complainant's SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant's marks" (Swarovski Aktiengesellschaft v. cao zhiming, WIPO Case No. D2012-1028).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks 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. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has 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 EVIAN trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any 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 has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark, which is widely known. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the EVIAN trademark for decades and has been using it for over a century. It is suggestive of the Respondent's bad faith in these particular circumstances that 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).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name resolved, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.

The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Respondent's use of the distinctive "mountain" logo trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent's bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant:

"By registering and using the Domain Name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent" (see Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).

Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant's allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore.

Indeed, "when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'" (Tata Sons Limited v. TATA Telecom Inc./Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Panel also finds that the Respondent's attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website falls under paragraph 4(b)(iv) of the Policy.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademarks and the Respondent's use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

The Respondent's lack of response to the cease-and-desist letter sent by the Complainant, is a further indication of the Respondent's bad faith registration and use of the disputed domain name.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant's trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant's mark, and failure to answer the cease-and-desist letter, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <evian1992.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: May 20, 2015