WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Gervais Danone v. marylee, Lee / Xiamen eName Network Co.
Case No. D2015-0832
1. The Parties
The Complainant is Compagnie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.
The Respondent is marylee, Lee of Shanghai, China / Xiamen eName Network Co. of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <danone-china.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 May 13, 2015. On May 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2015, 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 May 15, 2015 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 May 18, 2015.
On May 15, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On May 18, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
The Center verified that 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 May 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2015.
The Center appointed Sok Ling MOI as the sole panelist in this matter on June 26, 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, part of the Danone Group, is a company incorporated in France. The DANONE brand, which is also the Complainant’s company name, originated around 1919 in Barcelona, Spain when it was launched for yogurts. The Danone Group is one of the global leaders in dairy products and in bottled water and baby food products and has a worldwide presence.
The Complainant is the owner of numerous trade mark registrations for the trade mark DANONE worldwide. Among others, the Complainant is the owner of Chinese Trade Mark registration No. 216985 – DANONE (with registration date of December 15, 1984); Chinese Trade Mark registration No. 947448 – DANONE (with registration date of February 14, 2007); International Trade Mark registration No. 849889 – DANONE (designating China) (with registration date of October 29, 2004).
The Complainant has also registered the domain names <danone.com>, registered on December 14, 1995 and <danone.com.cn>, registered on October 17, 2001, reflecting its trade mark DANONE.
The disputed domain name <danone-china.com> was registered on December 8, 2014 long after the Complainant has registered the trade mark DANONE worldwide. As of the date of this decision, the disputed domain name remains inactive and does not resolve to any active website.
5. Parties’ Contentions
The Danone Group is the global leader in dairy products and number two in bottled water and baby food products. The Danone Group makes up 26 percent of the world market in fresh dairy products and is present in 140 countries. It has invested in China since 1987 and currently employs some 10,000 employees in China. The trade mark DANONE has become a well-known brand for yogurts. The Complainant and its trade mark DANONE enjoy a worldwide reputation.
The Complainant is the legal owner of all rights, titles and interests in the trade mark DANONE and owns numerous trade mark registrations for DANONE worldwide. The Complainant and its affiliates operate domain names such as <danone.com> and <danone.com.cn> reflecting its trade mark DANONE.
A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
The disputed domain name is confusingly similar to the Complainant’s trade mark DANONE as it incorporates the DANONE trade mark as a whole.
The addition of the English geographical term “China” is insufficient to avoid confusing similarity with the DANONE trade mark, and in fact is likely to lead Internet users into believing that the disputed domain name will either lead them to a website endorsed by the Complainant or that it is somehow connected to the owner of the registered trade mark in China.
The addition of a hyphen “-” and the generic Top-Level Domain (gTLD) “.com” cannot abolish the likelihood of confusion between the Complainant’s trade mark and the disputed domain name.
A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent is not commonly known by the name “Danone”, nor in any way affiliated with the Complainant, nor authorized or licensed to use the DANONE trade mark, or to seek registration of any domain name incorporating the DANONE trade mark. Accordingly, the Respondent cannot claim any bona fide or legitimate use of the disputed domain name.
The Respondent has no prior rights or legitimate interests in the disputed domain name since the registration of the DANONE trade mark by the Complainant preceded the registration of the disputed domain name by several years.
The disputed domain name resolves to an inactive page. This shows that the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. The Respondent has also failed to show any intention of noncommercial or fair use of the disputed domain name. All these point to the likely fact that the Respondent has no rights or legitimate interests in the disputed domain name.
Further, the Respondent registered the disputed domain name with a privacy shield service to hide its identity. Such a behavior reinforces the conclusion that the Respondent has no rights or legitimate interests in the disputed domain name.
A3. The disputed domain name was registered and is being used in bad faith:
It is implausible that the Respondent was unaware of the Complainant when it registered that disputed domain name. DANONE is a well-known trade mark throughout the world including in China. Previous UDRP panels have decided that bad faith can be found where a person with no connection to the trade mark selects a domain name so similar to a well-known trade mark.
It is the Respondent’s duty to verify that its registration of the disputed domain name would not infringe the rights of any third party, since under the ICANN Policy, it is taken to have given that warranty and representation at the point of registration. Its failure to verify is evidence of its bad faith.
A basic keyword search on Internet would have disclosed the existence of the Complainant and its DANONE trade mark. Therefore, it is difficult to believe the Respondent was unaware of the Complainant and its DANONE trade mark at the time of registration of the disputed domain name. This is clearly bad faith registration.
Further, the Respondent registered the disputed domain name with a privacy shield service to hide its identity. The Complainant had previously directed an inverse WhoIs search and discovered that the original registrant was one Charles Wang who had registered some 230 domain names reproducing other well-known trade marks such as <bimba-y-lola.com>, <boeing-china.com>, <claudie-pierlot.com>, <coca-colachina.com>, <ford-china.com>, <gap-china.com>, <gucci-timeless.com>, <jean-paulgaultier.com>, <lvmhchina.com>, < ralphlauren-watches.com>, <so-sofitel.com> etc. These domain names as well as the disputed domain name were subsequently found to be registered in the name of the Registrar, Xiamen eName Network Co. Ltd and then MaryLee. Previous UDRP panels have decided that a deliberate concealment of identity and contact information may suggest registration in bad faith.
The Respondent is not using the disputed domain name. Previous UDRP Panels have decided that passive holding does not preclude a finding of bad faith. Where the Complainant’s trade mark has a strong reputation and the Respondent is unable to provide evidence of actual good faith use and has further taken steps to conceal its identity and provided false contact information, then bad faith is to be inferred.
The Respondent has likely registered the disputed domain name to prevent the Complainant from reflecting its trade mark in the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding for the following reasons:
(a) The Complainant is located in France and has no knowledge of Chinese. To proceed in this language, the Complainant would have to retain specialized translation services which would impose a significant burden on the Complainant.
(b) The domain name includes only Latin characters which strongly suggests that Respondent has knowledge of English.
(c) English is the primary language for international relations.
The Panel has taken into consideration the fact that the Complainant is a company from France, and requesting the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantages the Complainant. The proceeding would be unnecessarily delayed.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) The disputed domain name <danone-china.com> is registered in Latin characters, rather than Chinese script;
(b) The disputed domain name <danone-china.com> includes the Complainant’s mark as well as the English name of the country, China;
(c) The Respondent has an English name, Mary;
(d) The Respondent has registered other domain names consisting of Latin characters, for example<boc-aviation.com>, <icbc-leasing.com> and <gl-class.com> based on a reverse WhoIs lookup which the Panel independently conducted;
(e) The Center has notified the Respondent of the proceeding in both Chinese and English;
(f) The Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and
(g) The Center informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.
6.2 Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in DANONE by virtue of its use and registration worldwide of the same as a trade mark. The disputed domain name incorporates the Complainant’s trade mark DANONE in its entirety. The trade mark DANONE is clearly identifiable and is the prominent element of the disputed domain name. The addition of the geographical term “china” does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant DANONE trade mark as “china” stands for where the Complainant also conducts business. The addition of a hyphen “-” and the gTLD “.com” does not detract from the similarity.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c):
(i) Before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited 诉. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.)
The Panel is satisfied that the Complainant has made out a prima facie caseshowing that the Respondent lacks rights or legitimate interests in the disputed domain name. In the Panel’s opinion, the evidence furnished by the Complainant, discussed further in section 5 above, is sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence to rebut the presumption. The Respondent has however failed to respond.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites 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 Respondent’s websites or location or of a product.
The Panel notes that the disputed domain name does not resolve to any active website, and there is no evidence that the Respondent has attempted to sell the disputed domain name or to contact the Complainant. Nevertheless, the consensus view of previous UDRP panels is that passive holding does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2).
The Complainant has a worldwide reputation and has had an industrial presence in China for over 25 years. A cursory Internet search would have disclosed the DANONE trade mark and its extensive use by the Complainant. Thus this Panel finds a presumption arises that the Respondent was aware of the Complainant’s DANONE trademarks and related domain names when it registered the disputed domain name.
The Respondent has failed to respond to the Complaint and thus provided no evidence of bona fide use of the disputed domain name. Furthermore, efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details. There also appeared to be attempts to conceal the registrant’s identity by the use of the privacy shield service.
The Panel is satisfied on balance that there is evidence that the Respondent is engaged in a pattern of cybersquatting.
The Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case and taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
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 <danone-china.com> be transferred to the Complainant.
Sok Ling MOI
Date: July 12, 2015