WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Dannon Company Inc., Compagnie Gervais Danone v. Muhammad Bashir Ibrahim
Case No. D2016-2270
1. The Parties
The Complainants are The Dannon Company Inc. of White Plains, New York, United States of America (“United States”) and Compagnie Gervais Danone of Paris, France, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Muhammad Bashir Ibrahim of Ras Al Khaimah, United Arab Emirates, represented by Abdulmalik Makama & Associates, Nigeria.
2. The Domain Names and Registrar
The disputed domain names <dannoneducation.com> and <dannongroup.com> are registered with LiquidNet Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2016. On November 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 9, 2016, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2016. The Response was filed with the Center on December 1, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 5, 2016. 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 Complainants are subsidiaries of the internationally well-known French company Danone S.A., whose origins are found in a Spanish company founded by Isaac Carasso in 1919 and named after his son, Daniel. The Dannon Company Inc. (“the First Complainant”) focuses mainly on the United States. Compagnie Gervais Danone (“the Second Complainant”) focuses mainly on countries in Europe and other continents. Both Complainants mainly produce and distribute dairy products, bottled water, medical and baby nutrition products. The First Complainant’s name was introduced by Daniel Carasso, after he moved to the United States in 1942, in order to make the brand sound more American. The First Complainant was the first commercial yogurt manufacturer in the United States. In February 2016, the Danone brand was ranked 156th in the top 500 most valuable brands as determined in the Brand Finance Global 500 report.
The Complainants own multiple registered trademarks relating respectively to the marks DANNON and DANONE. For example, the First Complainant is the owner of United States registered trademark no. 1265165 for the word mark DANNON in international class 29 (yogurt) registered on January 24, 1984 and the Second Complainant is the owner of International registered trademark no. 172526 for the word mark DANONE in international classes 1 and 5 (dairy products) and 29 (yogurt) registered on October 31, 1953 and designated for 21 territories worldwide. The Complainants also claim common law rights in the DANNON and DANONE trademarks.
The disputed domain name <dannongroup.com> was created on October 18, 2015. The disputed domain name <dannoneducation.com> was created on May 1, 2016. Neither of the disputed domain names resolves to an active website. The Respondent is an individual with an address in Ras Al Khaimah, United Arab Emirates. The Respondent indicates that he has founded two Nigerian companies and a Free Zone Company in the United Arab Emirates, each of which use the word “Dannon” in their names.
5. Parties’ Contentions
The Complainants contend that the disputed domain names are identical or confusingly similar to a trademark in which they own rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names have been registered and are being used in bad faith.
The Complainants assert their rights in various registered trademarks including those set out in the factual background above and further submit that they have common law rights in the DANNON and DANONE trademarks by virtue of long history and continuous extensive use in the course of international trade for almost a century in the case of DANONE and more than 70 years in the case of DANNON. The Complainants add that their products are available in over 140 countries, that their brand value has been independently rated at USD 8.632 million. The Complainants note that the DANNON and DANONE marks are linked and are used as the name of the Complainants in the trade and the main brand of their produced and distributed products. The Complainants state that they have promoted their businesses through the websites “www.dannon.com” and “www.danone.com” respectively since 1995.
The Complainants assert that the jurisdiction, location or goods or services for which their respective trademarks were registered are irrelevant for the purposes of determining whether they own the relevant rights under the UDRP. The Complainants submit that the disputed domain names incorporate the well-known trademark DANNON, adding that each couples this to a generic and descriptive word: “group” and “education” respectively and are thus confusingly similar thereto. The Complainants submit that the descriptive words do not distinguish each disputed domain name from the respective trademark and note with regard to the “education” modifier that further confusion arises from the Complainants’ group’s operation of the Danone/Dannon Institute, originally established as a non-profit organization in 1991 in France to promote research and education regarding public health, diet and nutrition and now active through 15 Danone Institutes in 19 countries worldwide including the United States where the relevant institute is named the Dannon Institute. The Complainants note that the “dannon” element of each domain name is aurally similar to the Second Complainant’s DANONE mark.
The Complainants submit that the mark DANNON is solely associated with the Complainants’ business internationally and add that this may be demonstrated by an Internet search, whether for the word or for images. The Complainants assert that any member of the public performing such a search would be presented with the Complainants as the only business that can legitimately claim ownership of the DANNON mark. The Complainants thus contend that there is no other entity that can legitimately claim to have rights or legitimate interests in a domain name that incorporates, as a distinctive element, the Complainants’ well-known DANNON trademark. The Complainants submit that any commercial use of the disputed domain names would be in conflict with the Complainants’ rights and that it would be improper for the Respondent to seek to rely on such use.
The Complainants note that when the disputed domain names were created the DANNON and DANONE marks had been used extensively, internationally, for numerous years, were already well-known and were among the most reputable brands worldwide. The Complainants assert that it is unlikely that the Respondent was not aware of this when the disputed domain names were registered. The Complainants add that given the unique nature and distinctiveness of the marks, including the fact that they are not ordinary dictionary words used in everyday language, it is highly unlikely that the Respondent may have independently conceived the disputed domain names without reference to the Complainants’ well-known brands and businesses. The Complainants indicate that the distinctiveness and well-known nature of the DANNON mark has been acknowledged by a panel in a previous case under the UDRP.
The Complainants suggest that the Respondent incorporated the Complainants’ marks in the disputed domain names to cause confusion, to bring attention to its business and to lure the public to its website in the belief that it is associated with the Complainants’ reputable business. The Complainants state that this will lead to the Respondent unduly benefiting from the Complainants’ reputation and goodwill.
The Respondent notes the international classes covered by the Complainants’ marks and adds that the production of yogurt is distinctively different from the nature of the Respondent’s business and its purpose of registering the disputed domain names. The Respondent states that although the disputed domain names contain the word “Dannon” this neither sufficiently or automatically makes them identical or confusingly similar to the Complainants’ marks nor makes this the dominant and distinctive element of the disputed domain names.
The Respondent explains that an availability search was carried out by the Registrar prior to the registration of the disputed domain names and contends that the proposed names would be denied further registration if conflicting with an existing domain name, adding that no such denial was made in the present case. The Respondent contends that this clearly and evidently shows that the disputed domain names are not in any way identical or confusingly similar to the Complainants’ marks.
The Respondent expressly disagrees with the Complainants’ contention that the word “group” does not effectively distinguish the disputed domain name from the Complainants’ DANNON mark “on grounds that the word DANNON is not an English word and does not in any way or manner describe the products, goods and/or services rendered by the Complainants”. The Respondent adds: “It would have been in the affirmative if the word were an English word whose meaning ought to be the same or related with the products, goods or services rendered by the Complainants”.
The Respondent notes that it has active incorporated companies: Dannon Constructions and Properties, incorporated in the Federal Republic of Nigeria on April 19, 2011 and Dannon Investment and Management Consultancy Limited incorporated in the Federal Republic of Nigeria on April 19, 2012. The Respondent provides evidence therefor by way of Certificates of Incorporation. The Respondent states that these companies are “into active and excellent investment consultancy in import and export of construction materials, education and other related items” as evidenced by (1) a RAK International Companies Certificate of Good Standing dated November 3, 2014 in respect of a company named Dannon Limited originally incorporated on November 12, 2007 and (2) a Consulting/Service License for the RAK Free Trade Zone for an entity named Dannon Investment Consultancy FZC for the activity of an investment consultancy issued on April 18, 2010 and with a “valid date” of April 17, 2016. The Respondent adds that these companies operate in the Middle East, United Arab Emirates, Benin, Niger, Nigeria and other African countries as evidenced by (1) the said Consulting/Service License, (2) a Republic of Benin Importer’s Card in name of the Respondent in respect of a company named Dannon SARL for the activities of “importation of construction materials” issued by the Directorates General for External Trade and Business Formalization, and (3) a Certificate of Registration in the Trade and Investment Register of Zinder dated November 15, 2016 for an entity named “Entreprise Dannon «E.D»” in respect of the activities on import, export and sale of goods of all kinds and general trade”.
The Respondent contends that it is evident that the Respondent has been using the name “Dannon” from the commencement of his investment consultancy business which was derived from his indigenous language. The Respondent adds that the word “group” was added to shelter all companies under a single platform. The Respondent asserts that Dannon Constructions and Properties and Dannon Investment and Management Consultancy Limited are well-known companies in the field of investment consultancy services such as import and export of construction materials and other related items, and advertising and sourcing of students from one country to another for the purpose of studying overseas with standing scholarships. The Respondent submits that it has no relationship with the products, goods and/or services offered by the Complainants and in the locations where the Complainants operate and argues that its registration of the disputed domain names will not be in conflict or confusingly similar with the Complainants’ marks.
The Respondent contends that the disputed domain name <dannoneducation.com> was registered in respect of the Respondent’s involvement in advertising and sourcing of students who have an interest in studying overseas and has nothing to do with the business of the Complainants.
The Respondent notes that his companies have recorded extensive performance which can be demonstrated from a search against the company names on the “Google” search engine. The Respondent adds that the essence of registration of the disputed domain names is for the purpose of the bona fide offering of goods and services to existing and prospective customers worldwide only in respect of the services rendered by his companies. The Respondent notes that the disputed domain names were registered mainly for the purpose of legitimate noncommercial or fair use and adds that it has no intention to mislead or divert consumers for commercial gain or to tarnish the trademark or services of the Complainants.
The Respondent disputes the Complainants’ contention that the Respondent has registered and used the disputed domain names in bad faith on the grounds that the Respondent has been in business in several countries and over several years under the name “Dannon” which has nothing to do with the Complainants because the Parties are in different lines of business. The Respondent adds that he did not register the disputed domain names to sell them to the Complainants and is not a competitor of the Complainants. The Respondent submits that the disputed domain names were not registered to disrupt the Complainants’ business or to attract users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademarks.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Issue - Consolidation of Complainants
The Panel notes that the present Complaint has been filed by multiple Complainants. On this subject, paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides inter alia as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
In the present case, the Complainants have asserted that their history is intertwined, that each plays a significant role in the overall business of their parent company, that each has rights in relevant trademarks which are exposed to risk of exploitation and confusion as a result of the registration and use of the disputed domain names by the Respondent and that each has a common interest in ensuring the protection of their marks from confusion, deception and exploitation.
The Panel is content that these submissions establish common interests and a common grievance against the Respondent. There seems no reason to the Panel why it would not be equitable and procedurally efficient to permit consolidation of the complaints and, more importantly, the Respondent has neither objected to such consolidation, nor does there appear to be any prejudice arising to the Respondent were such consolidation to be ordered by the Panel.
In these circumstances, the Panel allows the Complainants to consolidate their respective complaints against the Respondent and on that basis will proceed to a decision.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have UDRP-relevant rights in the DANNON and DANONE trademarks respectively and that these are constituted by their respective registered trademarks. It is not therefore necessary on this topic for the Panel to examine the Complainants’ submissions or evidence as to the alleged existence of common law marks in such terms.
The Respondent has made extensive submissions on this topic regarding the alleged difference between the goods and services which he offers through his various companies and those offered by the Complainants. The Complainants however assert that goods or services are irrelevant for the purposes of determining whether they own the relevant rights under the UDRP.
The test of identity or confusing similarity under the UDRP is not necessarily the same test as might be applied by the trademark law of a particular jurisdiction. In Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 the panel stated:
“The Policy is not based on proof of trademark infringement. Rather, this “standing” element of the Policy concerns only the identity or confusing similarity of the Domain Name and a mark in which the Complainant currently has rights. UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trademark. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.”
Furthermore, in the case of Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743 the panel noted:
“UDRP panels deciding proceedings under the Policy need not engage in an evidentiary analysis of the likelihood of confusion between a contested domain name and a registered mark, as is common in many legal actions under national trademark laws. The nature of Policy proceedings — providing a swift administrative remedy with no hearings, no evidentiary discovery, and a limited factual and legal record — militates against such analysis. Rather, Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is “confusingly similar” to the mark.”
In these circumstances, the Panel does not consider it necessary to address the Respondent’s submissions as to the lack of confusing similarity by comparison of goods offered and will proceed to an alphanumeric comparison of the respective strings. The generic Top-Level Domain (“gTLD”), in both cases, “.com”, is commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that it is required for technical reasons only. This leaves the Panel with the second levels of the disputed domain names: “dannongroup” and “dannoneducation” respectively. It is clear from an alphanumeric comparison between these and the Complainants’ mark that both of the disputed domain names incorporate the DANNON mark at the beginning and in each case couple this with a generic word: “group” and “education” respectively. The additional words, being of a generic nature, are insufficient to prevent threshold Internet user confusion. Contrary to the Respondent’s assertion, the dominant element in each of the second levels of the disputed domain names is the DANNON mark.
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainants’ trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
The Panel is satisfied that the Complainants have established the requisite prima facie case, based on their submissions that the DANNON mark is well-known, is solely associated with the Complainants’ business internationally and that no other entity can legitimately claim to have rights or legitimate interests in a domain name that incorporates such mark. The Panel therefore turns to consider what evidence the Respondent has brought forward of rights and legitimate interests.
The focus of the Respondent’s submissions is that it has used the disputed domain name in connection with a bona fide offering of goods and services before notice to it of the dispute and that it has been commonly known by the disputed domain name even if it has acquired no trademark or service mark rights. These submissions refer to paragraphs 4(c)(i) and 4(c)(ii) of the Policy respectively and they share in common the Respondent’s reliance upon the alleged use of the term “Dannon” in the corporate names of the entities described in the Response and through which the Respondent states that he does business in import/export of construction materials and advertising and sourcing of students.
There is a lack of clarity in the Respondent’s case as to exactly which entities he is claiming to have set up using the “Dannon” name. The Response refers to Dannon Constructions and Properties and Dannon Investment and Management Consultancy Limited, both incorporated in Nigeria. However, while the evidence produced with the Response shows copy Certificates of Incorporation for each of these entities it also contains documentation apparently relating to a plethora of alternative entities, namely, Dannon Limited, Dannon Investment Consultancy FZC, Dannon SARL and Entreprise Dannon «E.D». The Respondent makes no attempt to explain this apparent discrepancy.
Further and in any event, while the Respondent has produced evidence of the registration of company names containing the term “Dannon” and the obtaining of trade licenses or permissions in a variety of other names, that evidence on its own is insufficient to establish that the Respondent was “commonly known by the domain name(s)” at the time of their registration. As the panel in Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 noted in similar circumstances:
“… proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name.
If the intention of the Policy were otherwise, every cybersquatter would be able to avoid the operation of the Policy by the simple expedient of: (i) quietly registering someone else’s trademark as a corporation name (possibly in some jurisdiction having no connection with either the trademark owner or the cybersquatter); (ii) waiting some decent interval of time before registering the corporation name as a domain name; and (iii) resisting the trademark owner’s challenge under the Policy by claiming that the fact of the registration of the corporation proves that the corporation has been "commonly known by" the corporation name/trademark/domain name, and therefore has a legitimate interest in the domain name.
Any construction of the Policy which could open the door to a result like that cannot be right, and it seems to the Panel that the words "commonly known by" in paragraph 4(c)(ii) of the Policy call for at least some use of the name by the corporation prior to the registration of the corporation name as a domain name. In other words "commonly known by" must mean commonly known by at least some other people (ie other than those responsible for the registration of the corporation).”
In addition to there being no actual evidence of the use of the company name, other than to obtain the documentation produced, there is no evidence to support a submission that the Respondent is making a bona fide offering of goods and services under that name. There is no independent verification of the nature and extent of the Respondent’s alleged business offerings in construction materials and sourcing of students. There are no details of customers, suppliers or educational institutions served, no advertising or promotional materials, no details of an online presence, no financial information such as the level of sales achieved, no example invoices and no evidence of dealings with professional advisors or investors. In short, where the Respondent claims to have a business which has been trading for some five years the Panel would reasonably expect it to be in a position to provide more than merely a variety of certificate(s) of incorporation and trading license(s) to support a submission that it is commonly known by, and/or actively making an offering of goods or services under, the name concerned. The lack of any such additional evidence reasonably calls the credibility of the Respondent’s case into question.
The Respondent’s case is not assisted by its explanation for adopting the “Dannon” element of its company name(s). It is merely indicated in passing that the name is derived from the Respondent’s indigenous language. No details of the language concerned are provided, nor is any information given as to how the derivation was obtained. By contrast, the Complainants provide a clear and cogent explanation as to the origins of their DANNON mark, explaining that this is a unique distinctive term which was an Americanization of the DANONE mark created upon Daniel Carasso’s move to the United States in 1942. The Panel would have expected at least a comparable level of detail from the Respondent. The lack of suitable supporting evidence raises further doubts regarding the credibility of the Respondent’s case.
Both the Complainants and Respondent have claimed that their use of the name “Dannon” is well-known and that this is evident from an Internet search on the “Google” search engine. However, only the Complainants have produced examples of such searches, which feature results for both word and image searches. Almost without exception, the Complainants’ search refers to the Complainants’ business. There are no references to the Respondent’s business which are apparent to the Panel in those searches. The Panel finds it curious that, having sought to rely upon search engine results, the Respondent chose not to perform and supply a search which it contended would disclose the fact that it is well-known.
In these circumstances, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case regarding rights and legitimate interests and finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
It follows from the discussion in the previous section that the evidence before the Panel is not supportive of the notion that the disputed domain names have been registered and used in good faith. The Complainants have established to the Panel’s satisfaction that their DANNON mark is a well-known mark and a unique distinctive term, which has been in use for more than 70 years before the disputed domain names were registered. The Panel also notes that a similar finding was made in Compagnie Gervais Danone and The Dannon Company, Inc. v. PRIVATE WHOIS, WIPO Case No. D2009-1233. This creates a high bar for the Respondent to overcome regarding its assertion of an independent, good faith motivation for registering and passively holding the disputed domain names.
The Respondent’s explanation that it came upon the name “Dannon” independently of the Complainants and has proceeded to use this on a wholly unconnected basis, without any intent to gain commercial advantage from the goodwill established in the Complainants’ marks, has not been made out on the evidence before the Panel. Indeed, the credibility of the Respondent’s case has been fatally undermined by the distinct lack of supportive evidence beyond various company documents which in any event are not entirely consistent with the Respondent’s submissions.
In all the circumstances of this case, the Panel finds on the balance of probabilities that the disputed domain names have been registered and are being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 names <dannoneducation.com> and <dannongroup.com> be transferred to the First Complainant.
Andrew D. S. Lothian
Date: December 19, 2016