WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Orlin Zefirov / Domain Administrator PrivacyGuardian.org

Case No. D2013-0850

1. The Parties

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

Respondents are Orlin Zefirov of Stara Zagora, Bulgaria / Domain Administrator PrivacyGuardian.org of Phoenix, Arizona, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2013. On May 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 2013, 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 amendment to the Complaint on May 17, 2013.

The Center verified that the Complaint together with the amendment to 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 proceedings commenced on May 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2013. The Respondent did not submit a formal response, however, two e-mail communications were received, dated May 16 and May 23, 2013. Accordingly, the Center notified the Respondent’s default on June 13, 2013.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 16, 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 is Société Anonyme des Eaux Minérales d’Evian, a company incorporated under the French Law and a subsidiary of the French Company GROUPE DANONE.

Dated back to the 19th century, Evian is today a worldwide leading company in the sales and distribution of mineral water field. The trademark EVIAN is present on the 5 continents, in 125 countries, including in the United States where Respondent Orlin Zefirov seems to be located.

Complainant is owner of several trademark registrations in different classes (as per Annex 12 of the Complaint), including the following in the United States of America:

- US trademark EVIAN N° 2822102, registered on March 16, 2004, in class 32;

- US trademark EVIAN N° 2904034, registered on November 23, 2004, in class 5;

- US trademark EVIAN N° 1155024, registered on May 19, 1981, in class 32.

In addition, Complainant is the owner of several domain names which incorporate the trademark EVIAN (as per Annex 13 of the Complaint):

- <evian.us> registered on April 19, 2002;

- <evian.com> registered on May 14, 1997;

- <evian.fr> registered on January 22, 1996.

The present dispute concerns the domain name <eviantclip.com>, registered by Respondent Orlin Zefirov, on November 24, 2012.

5. Parties’ Contentions

A. Complainant

According to Complainant, Evian water was born 8,000 years ago. Discovered in 1789 by the marquis of Lessert, the source of Cachat became Les Eaux d’Evian les Bains in 1869. The first official authorizations to bottle the water from the Evian stream dated back to 1826.

Complaint claims that, since 1878, Evian has been recognized as favorable by the Medicine Academy and has become the reference water in the hospital environment. EVIAN is today the best selling trademark of mineral water in the world, with 1,5 billion bottles sold every year. The trademark EVIAN is present on the 5 continents, in 125 countries, and also includes beauty and health products such as mineral water sprays (as per Annex 5 of the Complaint).

Complainant states that its trademark EVIAN is particularly known for its famous advertisement clips starring swimming babies, roller-skating babies and more recently dancing babies. In 2009, Complainant launched a new slogan: “Live Young”. These last years, Complainant released special “haute couture” (high culture) bottles, designed by well-known couturiers, stylists or fashion house: Christian Lacroix, Jean Paul Gaultier, Paul Smith, Issey Miyake, Courrèges and Diane von Fürstenberg.

Complainant affirms that the disputed domain name resolves to a page which redirects Internet users towards several different websites including an erotic adult dating website, a survey website and an auction website (as per Annex 8 of the Complaint).

Complainant contends that before filing the present Complaint, on January 23, 2013, it sent a cease-and-desist letter by email and a registered letter to Respondent Domain Administrator See PrivacyGuardian.org on the basis of its trademarks rights to request the cancellation of the disputed domain name (as per Annexes 9 and 10 of the Complaint), and despite several reminders, Respondent never replied.

Complainant argues that the disputed domain name is confusingly similar to Complainant’s trademark EVIAN, since the disputed domain name reproduces Complainant’s trademark in its entirety, which previous Panels have considered to be “well-known” or “famous” (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 and Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Vivi Bui and Evian Dayspa WIPO Case No. D2008-1869, Annex 14 of the Complaint).

In addition, Complainant owns and mainly communicates on the Internet via various websites such as “www.evian.fr” for France or “www.evian.us” for the United States of America, in order to present and to propose to Internet users its services and products. Complainant affirms that the disputed domain name is also confusingly similar to these domain names owned by Complainant.

Complainant claims that Respondents are not affiliated with Complainant in any way nor have been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark, and that Respondents have no prior rights or legitimate interest in the domain name, given that the registrations of the EVIAN trademark preceded the registration of the disputed domain name.

Complainant argues that the disputed domain name features generic and descriptive words “clip” and the letter “t” added to the trademark. The letter “t” bears no meaning by itself and is thus not sufficient to distinguish the disputed domain name from Complainant’s trademark. Moreover, it claims it is well established that the mere adjunction of descriptive words, such as “clip”, is insufficient to give any distinctiveness to the domain name in dispute. Indeed, the added term is a common English word and Complainant’s mark is particularly associated with this term as Complainant produced several advertisement clips.

It further argues that the adjunction of such generic word is not sufficient to distinguish the disputed domain name from Complainant’s trademark, on the contrary, it increases the likelihood of confusion. In this sense, Complainant cites eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434, Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774 and Johnson & Johnson Corporation v. Gidget's Active Organics, Janet Rossi, WIPO Case No. D2011-0015.

Additionally, Complainant alleges that Respondent Orlin Zefirov cannot reasonably sustain it was unaware of Complainant’s company and well know trademarks when registering the disputed domain name. Thereby, Complainant argues that the sole objective of Respondent Orlin Zefirov, when registering the disputed domain name <eviantclip.com>, was to benefit from the reputation of Complainant's success and of its well-known trademarks.

Also, Complainant claims that Respondent Orlin Zefirov registered the disputed domain name with a privacy shield service to hide his identity and prevent Complainant from contacting them. Thus, such a behavior highlights the fact that the Respondents have no rights or legitimate interests in respect of the disputed domain name.

B. Respondents

The Respondents did not submit a formal response to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:

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

(ii) that Respondents have no rights or 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. Identical or Confusingly Similar

Initially, the Panel notes that it is the consensus view among UDRP Panelists that “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name (…)” (item 4.5. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

Complainant proved that it is the owner of several trademark registrations for EVIAN, a widely known trademark, and that such trademark is entirely incorporated in the disputed domain name <eviantclip.com>.

However, while undertaking limited factual research, the Panel consulted the website at “www.eviant.com”, and further discovered the existence of the trademark EVIANT. This mark appears to be used by a company specialized in electronic products and accessories, such as televisions, CD and MP3 players, speakers, radios for vehicles, GPS navigation units, alarm clocks, digital photo frames, USB cables, etc.

The Panel verified that the trademark EVIANT is registered before the United States Patent and Trademark Office since February 23, 2010 (Registration no. 3753221). Thus, said trademark coexists with Complainant’s trademark EVIAN in the United States, since Complainant also owns trademark registrations in that location.

The Panel notes that the disputed domain name resolves to a website which displays several links to different sites, including ones for movies, English courses, Youtube clips and music video clips.

It is, therefore, necessary to decide whether there may be a finding of confusing similarity in this case, where (i) there exists a third party trademark within the disputed domain name (EVIANT), and where (ii) the web page hosted under the URL of the disputed domain name makes no mention of products akin or related to those of Complainant.

Item 1.2 of WIPO Overview 2.0 answers these matters in the following manner:

“1.2 What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?

(…)

The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.

(…)

The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).”

In light of the above considerations, the Panel shall not take into account for the analysis of this first requisite neither the existence of the trademark EVIANT nor the contents of the web page to which the disputed domain name resolves. Instead, the Panel shall simply compare Complainant’s trademark EVIAN with the disputed domain name <eviantclip.com> and conclude that the trademark is entirely reproduced within the disputed domain name and that the additional terms contained in the domain name, i.e. the letter “t” and the word “clip” do not add enough distinctiveness so as to avoid a finding of similarity.

For the above-mentioned reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark EVIAN.

B. Rights or Legitimate Interests

In view of the Panel’s finding below, it is not necessary for the Panel to consider this requirement.

C. Registered and Used in Bad Faith

Absence of a formal response by Respondents to Complainant’s contentions, does not trigger an automatic finding in favor of Complainant. As set forth in item 4.6 of WIPO Overview 2.0: “A respondent's default does not automatically result in a decision in favor of the complainant. (…) the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case.”

This is one of such cases: considering the existence of the trademark EVIANT, which coexists in the marketplace with Complainant’s trademark EVIAN, and the fact that the disputed domain name resolves to a page that does not make any reference to Complainant’s trademark EVIAN, nor to mineral water or any sort of drinks and beverages, the Panel finds there is no compelling evidence of bad faith of Respondents towards Complainant.

It is indeed true that Complainant is famous for its “video clips” advertisements with dancing babies, but from that it does not automatically follow that Respondent’s intent was to take advantage of Complainant's publicity campaign by e.g. benefitting from an Internet user’s typing mistake (“typosquatting”). This Panel finds that if Respondent’s intent were to “typosquat” it would more likely have registered all possible letters between “evian” and “clip” (which is not the case here), or have chosen a letter that in the QWERTY keyboards (the more commonly used in the Western Hemisphere) were located close to the “N” (the last letter of “evian”) or to the “C” (the first letter of “CLIP”). Instead, Respondent chose the letter “T” that is located far in the QWERTY keyboard from both “N” and “C”, which make virtually impossible for a typographical mistake of the Internet user to occur. In other words, the Panel’s view is that a person will only type “eviant” if they intend to do so, and not inadvertantly.

The third element of the UDRP requires that a respondent has targeted the trademark and goodwill established by a complainant. It is the Panel’s opinion, on the present record, that there is not sufficient evidence that Respondents targeted Complainant when registering the disputed domain name. It is important to stress that any attempt of Respondents to make profit on the goodwill of the electronics company and their trademark EVIANT can only be subject of an objection filed by such company, and not by Complainant. It is not for the Panel to decide this Complaint based on rights that are presumed to belong to a third party, not involved in the proceedings.

It is also important to stress that the UDRP is a limited legal proceeding, designed for clear cases of bad faith conduct, that can be shown within the narrow scope of the expedite proceedings. In many UDRP cases bad faith is inferred from the overall factual circumstances of the case. But any such inference of bad faith must be based on the overall circumstances of the case and in the present case the overall circumstances do not allow the Panel to conclude that Respondents have targeted the trademark or the goodwill of Complainant.

In short, despite the fact that the disputed domain name incorporates the trademark EVIAN, the disputed domain name also incorporates the trademark EVIANT and the website at the disputed domain name displays links to commercial webpages which the Panel finds to be more likely related to the trademark EVIANT. In light of the aforesaid, the Panel notes that the disputed domain name might have been registered with an intention of being connected to trademark EVIANT, but this is not for the Panel to decide here. What is at stake in this proceeding is only whether the disputed domain name was registered and used with an intention of being connected to Complainant’s trademark EVIAN and to this question the Panel answers that not only there is no proof of such intention in the current record, but also that certain aspects of the record may point to the opposite direction, i.e. that Respondent’s intention was not to target Complainant.

Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons the Complaint is denied.

Gabriel F. Leonardos
Sole Panelist
Date: August 12, 2013