WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie GERVAIS DANONE v. Lim Sang Woon

Case No. D2017-1762

1. The Parties

The Complainant is Compagnie GERVAIS DANONE of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Lim Sang Woon of Seoul, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <danonewhitewave.com> is registered with Gabia, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean, confirming that the Respondent is listed as the registrant, and providing the Respondent's contact details.

On September 18, 2017, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain is Korean. On September 20, 2017, the Respondent requested for Korean to be the language of the proceeding and submitted an email inquiring how to settle with the Complainant. Accordingly, the Center informed the Parties on the same day that if the Parties wished to explore settlement options, the Complainant should submit a request for suspension by September 27, 2017.

On September 20, 2017, the Complainant filed an amended Complaint and requested for English to be the language of the proceeding but did not request a suspension to explore settlement options.

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 October 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 25, 2017.

The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on November 16, 2017. 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 and its trademarks DANONE enjoy a worldwide reputation as a global leader in dairy products and number two in bottled water and baby food products. The Complainant is notably the owner of the following trademark registrations:

- International Trademark DANONE No. 172526 registered on October 31, 1953, duly renewed and covering goods and services in classes 1, 5, and 29; and

- In addition, the Complainant operates, among others, domain names reflecting its trademarks: <danone.com> registered on December 14, 1995; and

- The disputed domain name was registered on July 7, 2016.

5. Parties' Contentions

A. Complainant

Danone Company is a global leader in dairy products and number two in bottled water and baby food products. Danone Company started to commercialize its products in France, it quickly became a world leading company. By the early 1990s, while seeking growth drivers further afield, Eastern Europe, Asia, and Latin America markets were targeted, and its first major Asian acquisition came in 1991 with Hong Kong based Amoy, a specialist in soy sauces and frozen foods. Currently, Danone Company is still reinforcing its positioning as a global leader in the consumer goods industry, with a growing emphasis on health and nutrition. Compagnie Gervais Danone is a company incorporated under the French law and a subsidiary of the French company Danone whose headquarters are located 17 boulevard Haussmann 75009 in Paris, France. Compagnie Gervais Danone is the legal owner of all rights, titles and interests on the well-known trademark DANONE, which has been registered worldwide. Compagnie Gervais Danone's main brand DANONE originated around 1919 in Barcelona, Spain, when it was launched for yogurts. At that time, DANONE was the result of the collaboration between Isaac Carasso and Elie Metchikof, the director of the Pasteur Institute. The Complainant's trademark DANONE has been using on labeling, packaging and promotional literature for its products and has been prominently displaying in supermarkets and grocery stores in various regions around the world. In fact, Danone is operating in more than 130 countries across the five continents. It does represent a rich array of geographical specificities, cultures, communities and lifestyles to understand in order to create, tailor the best offer as possible.

In Korea, there is also a substantive presence of Danone and its product Activia, the world's best-selling yogurt brand, is already the second best-selling drinking yogurt in local Korean hypermarkets. Until 2013, the subsidiary company of Danone in Korea was known as Danone Korea Ltd. In 2013, a press release stated that Danone joined hands with Korean fresh food maker Pulmuone. The company is now known as Pulmuone Danone Co., Ltd. Moreover, on July 6,, 2016, Danone acquired WhiteWave, a United States company specialized in food and beverages. This alliance brought together two leaders in food and beverages, with complementary portfolios in some of the fastest-growing, health-focused categories. In addition to dairy, waters, early life nutrition, and medical nutrition, the combined offer now includes premium organic and fresh foods, non-GMO, plant-based products and coffee creamers. Danone and WhiteWave now combine their activities in North America to operate as a Strategic Business Unit, named "DanoneWave". As a result, as part of the acquisition, DanoneWave will become the biggest public benefit corporation in the United States as it intends to be one of the top 15 food and beverage companies, and No.1 in refrigerated dairy (excluding cheese).

In such a context, the Complainant noticed that the disputed domain name <danonewhitewave.com> was registered by the Respondent.

1) The disputed domain name is confusingly similar to a trademark or service mark on which Complainant has rights;

(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

i) The Complainant and its trademarks DANONE enjoy a worldwide reputation.

The Complainant is notably the owner of the following trademark registrations.:

- International Trademark DANONE No. 172526 registered on October 31, 1953, duly renewed and covering goods and services in classes 1, 5, and 29;

In addition, the Complainant operates, among others, domain names reflecting its trademark:

- <danone.com> registered on December 14, 1995;

The disputed domain name is confusingly similar to the Complainant's trademark DANONE.

2) The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

For all of the below-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

3) The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b);Rules, paragraph 3(b)(ix)(3))

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered or used the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that bad faith registration and bad faith use be proven.

a) Registration in bad faith

It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Bad faith can be found where the respondent "knew or should have known" of the Complainant's trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest ( WIPO Case No. D2009-0320, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot; WIPO Case No. D2009-0113, TheGap, Inc. v. Deng Youqian).

B. Respondent

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

Preliminary Issue

According to paragraph 11 of the UDRP, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the language selection by giving full consideration to the parties' level of comfort with each language, the expenses that may be incurred, the possibility of a delay in the proceeding if translations are required, and other relevant factors. The Registrar confirmed the language of the Registration Agreement of <danonewhitewave.com> is Korean. The complaint is submitted in English and the Complainant requests that the language of proceedings be English for the following reasons: As indicated by the Panel in the decision, Caiso Keisanki Kabushiki Kaisha dba Casio Computer Co., Ltd. v. Taizbou Kaixuan Entertainment Co. Ltd., WIPO Case No. D2005-0870, "one important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties". Here, the Complainant is located in France and has no knowledge of Korean. To proceed in this language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. Consequently, the use of another language than English in the proceeding would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings.

Many UDRP decisions have recognized that using the Registration Agreement's language, which in the present case is Korean, would lay an undue burden on the Complainant ( WIPO Case No. D2003-0679, Deutsche Messe AG v. Kim Hyungho).

In many relevant UDRP decisions, the Panel decided that since the Complainant was unable to communicate in the language of the Registration Agreement, the proceeding would inevitably be delayed unduly, and the Complainant would have to incur substantial expenses to submit all documents in said language ( WIPO Case No. D2006-0593, Solvay SA v. Hyun-Jun Shin).

Additionally, it should be noted that the disputed domain name includes only Latin characters which strongly suggest that the Respondent has knowledge of languages other than Korean. It can thus be assumed that the Respondent has knowledge of English ( WIPO Case No. D2012-1412, Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Lin jinqing). Moreover, today English is the primary language for international relations.

In view of all the above-mentioned arguments and evidence, the Complainant requests that the language of the present proceedings be English. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.

6. Discussion and Findings

A. Identical or Confusingly Similar

- The disputed domain name is confusingly similar to a trademark or service mark on which Complainant has rights;

(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

i) Complainant and its trademarks DANONE enjoy a worldwide reputation.

Complainant is notably the owner of the following trademark registrations:

- International Trademark DANONE No. 172526 registered on October 31, 1953, duly renewed and covering goods and services in classes 1, 5, and 29:

In addition, Complainant operates, among others, domain names reflecting its trademarks:

- <danone.com> registered on December 14, 1995:

The disputed domain name is confusingly similar to the Complainant's trademark DANONE.

Indeed, the disputed domain name reproduces the Complainant's trademark DANONE in its entirety, which previous Panels have considered as "well-known" and "distinctive" ( WIPO Case No. D2015-0832, Compagnie Gervais Danone v. marylee, Lee / Xiamen eName Network Co., WIPO Case No. D2008-1418 Compagnie Gervais Danone v. Australian Internet Investments Pty Ltd, WIPO Case No. D2014-1961, Compagnie Gervais Danone v. Charles, charleswang / Xiamen eName Network Co., Ltd.).

In many UDRP decisions, the panels have considered that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant's registered trademarks ( WIPO Case No. D2013-0150, Swarovski Aktiengesellschaft v. mei xudong; WIPO Case No. D2010-1059, RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin).

The disputed domain name <danonewhitewave.com> reproduces entirely the Complainant's trademark DANONE with the adjunction of the terms "white" and "wave" giving a false impression to Internet users that the disputed domain name is connected to the Complainant since the latter has made the acquisition of a company, named WhiteWave. Hence, the risk of confusion is rather heightened by the presence of the terms "white wave" in the domain name.

It is established that the incorporation of a complainant's distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant's trademark and the addition of a non-distinctive element to the disputed domain name does not sufficiently differentiate the disputed domain name from the trademark ( WIPO Case No. D2013-0188, Groupe Auchan v. Gan Yu).

The extension ".com" is not to be taken into consideration when examining the identity or similarity between the complainant's trademarks and the disputed domain name ( WIPO Case No. D2005-0016, Accor v. Noldc Inc.). The mere adjunction of a gTLD such as ".com" is irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity ( WIPO Case No. D2013-0820, L'Oréal v Tina Smith, WIPO Case No. D2008-0820, Titoni AG v Runxin Wang and WIPO Case No. D2009-0877, Alstom v. Itete Peru S.A.).

Moreover, the Complainant has been using the trademark DANONE in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under this trademark as being those of the Complainant. Therefore, the public would reasonably assume that the disputed domain name would be owned by the Complainant or at least assume that they are related to the Complainant.

Accordingly, the disputed domain name creates confusion with the Complainant's trademark DANONE. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant and thus may heighten the risk of confusion.

For all of the above-mentioned reasons, the Panel finds that the disputed domain name is confusingly similar to the trademark DANONE owned by the Complainant, and therefore the condition of paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the disputed domain name; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under the Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. ( WIPO Case No. D2007-0912, Banco Itau S.A. v. Laercio Teixeira; WIPO Case No. D2012-0285, Wal-Mart Stores, Inc. v. WalMart Careers, Inc.).

The Complainant contends that the Respondent is not affiliated with Complainant in any way nor it has been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating the aforesaid trademark.

The Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of the DANONE trademarks preceded the registration of the disputed domain name for years.

The disputed domain name is so identical to the famous DANONE trademark of Complainant and products which are known worldwide, that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.

Moreover, the Respondent is neither known by the name of DANONE nor in any way affiliated with Complainant, nor authorized or licensed to use the trademark DANONE or to seek registration of any domain name incorporating the aforementioned trademark. In previous decisions, panels found that in the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed ( WIPO Case No. D2013-0188, Groupe Auchan v. Gan Yu; WIPO Case No. D2010-0138, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master).

Besides, the disputed domain name resolves to an inactive page. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that the Respondent has no legitimate interest or rights in the disputed domain name.

WhoIs searches revealed that the Respondent has registered around 577 domain names reproducing other well-known trademarks like Dell, Google, Facebook, and Samsung just to name a few. Thus, the Respondent seems to be engaged in a cybersquatting pattern of conduct. As a matter of fact, it cannot be inferred that the Respondent is making any legitimate use of the disputed domain name or has any rights in it.

The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent. As the Respondent has not filed a response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names is undoubtedly established that Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant contends that firstly, DANONE is a well-known trademark throughout the world including Korea – the home country of Respondent. Indeed, several Panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant's proprietary rights on the trademark. Secondly, the disputed domain name <danonewhitewave.com> has been registered on the exact same day as the acquisition of "WhiteWave" company by the Complainant. As the disputed domain name <danonewhitewave.com> is composed of the distinctive trademark DANONE combined with the newly acquired company name "WhiteWave" by Complainant, it is impossible that the Respondent didn't know about it while registering the disputed domain name.

Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith ( WIPO Case No. D2013-0091, LEGO Juris A/S v. store24hour; WIPO Case No. D2008-0226, Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling; WIPO Case No. D2006-0464, Caixa D´Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam). Given the reputation of the DANONE trademark, registration in bad faith can be inferred.

Under paragraph 2 of the UDRP, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. Which means that it was Respondent's duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering the said domain name ( WIPO Case No. D2009-0901, Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART; WIPO Case No. D2000-1397, Nike, Inc. v. B.B. de Boer, WIPO Case No. D2002-0806, Carolina Herrera, Ltd. v. Alberto Rincon Garcia).

Moreover, a quick search would have revealed to the Respondent the existence of the Complainant and its trademarks. The Respondent's failure to do so is a contributory factor to its bad faith ( WIPO Case No. D2008-0226, Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling).

Supposing that the Respondent was not aware of the possibility of searching online before registering a domain name, a simple search via Google or any other search engine using the keyword "DANONE" and/or "DANONE WHITEWAVE" would have demonstrated that all first results related to Complainant's products or news.

In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide and strong reputation of Complainant and its trademark, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name.

It has been held in previous cases that knowledge of a corresponding trademark at the time of the registration of the domain name suggests bad faith ( WIPO Case No. D2000-0270, Document Technologies, Inc. v. International Electronic Communications Inc. and WIPO Case No. D2006-0464, Caixa D'Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam).

Previous, panels have established that knowledge of the complainant's intellectual property rights, including trademarks, at the time of registration of a disputed domain name proves bad faith registration ( WIPO Case No. D2008-0287, Alstom v. Domain Investments LLC; WIPO Case No. D2007-0077, NBC Universal Inc. v. Szk.com).

In addition, as will be discussed below, the Respondent does not make any use of the disputed domain name presently since the disputed domain name is inactive. This demonstrates a lack of legitimate interests regarding said domain name, and suggests evident bad faith behind the registration.

Subsequently, the Complainant avers that from the Respondent's pattern of conduct it can be assumed that it has perfect knowledge of the trademark at time of registration. Indeed, according to the inverse Whois searches conducted by the Complainant, the latter has registered other domain names reproducing other famous trademarks. Hence, from the latter's behaviour it can easily be deduced that it is of bad faith and most probably intends to derive profit from the registration of domain names reproducing famous trademarks.

As a matter of fact, this set of behaviour cannot reasonably be deemed to be a registration in good faith. Indeed, previous panels have held that multiple registrations made by respondents involved in cybersquatting behaviour are registrations made in bad faith ( WIPO Case No. D2012-0730, Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Rajeev Sankaran).

Consequently, in view of the above-mentioned circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith.

Some elements may be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith.

Previous Panels have considered that in the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed ( WIPO Case No. D2000-0055, Guerlain S.A. v. Peikang; WIPO Case No. D2008-0281, Alstom, Bouygues v. Webmaster).

The Respondent does not use the disputed domain name at present as it is currently inactive. In any case, this state of inactivity does not mean that the domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith: "A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose" ( WIPO Case No. D2011-0421, Cleveland Browns Football Company LLC v. Andrea Denise Dinoia).

Previous Panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all the circumstances of respondent's behaviour ( WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).

In Telstra Corporation Limited v. Nuclear Marshmallows, the Panel concluded that respondent's passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by respondent because: (1) complainant's trademark had a strong reputation and was widely known; (2) respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.

Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.

It is more likely that the Respondent's primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights, through the creation of initial interest of confusion. The particular circumstances of this case that the Panel has considered are:

i) The Complainant is the global leader in dairy products and second largest in bottled water and baby food products;

ii) The disputed domain name <danonewhitewave.com> has been registered on the exact same day as the acquisition of "WhiteWave" company by the Complainant; and

iii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.

Taking into account all of the above, the Panel concludes that the Respondent's passive holding of the disputed domain names constitutes bad faith under the Policy, paragraph 4(a)(iii) and that the Respondent is using the disputed domain names in bad faith.

Finally, it is likely that the Respondent registered the domain name to prevent the Complainant from using its trademark in the disputed domain name. According to former panel, this type of conduct constitutes evidence of respondent's bad faith ( WIPO Case No. D2009-0242, L'oreal v. Chenxiansheng). All aforementioned circumstances confirm that the disputed domain name is used in bad faith.

Consequently, the Panel determines that the Respondent both registered and used the disputed domain name in bad faith in accordance with 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, <danonewhitewave.com> be transferred to the Complainant.

Ho-Hyun Nahm
Sole Panelist
Date: November 28, 2017