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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Bruce Roarson

Case No. D2007-1719

1. The Parties

The Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Bruce Roarson, West Point, Iowa, United States of America.

2. The Domain Name and Registrar

The disputed domain name <danonecancer.com> is registered with EstDomains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2007. On November 23, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On November 23, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 4, 2007. 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”), 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 December 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2008.

The Center appointed Ian Blackshaw as the sole panelist in this matter on January 17, 2008. 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 is a subsidiary of “Groupe Danone” a company incorporated under French laws.

The Complainant’s main brand DANONE originated around 1919 in Barcelona, Spain, when it was launched for yogurts. At that time, “Danone” yogurt was the result of the collaboration between Isaac Carasso and Elie Metchikof, the director of the Pasteur Institute.

“Danone” quickly internationalized and started to commercialize its products in France. Around 1932, “Danone” opened its factory for fresh dairy products at Levallois-Perret, France.

In 1967, “Danone” merged with the company “Gervais” and formed “Gervais Danone” developing its activities in several sectors.

In 1973, “Gervais Danone” merged with BSN to form “Bsn-Gervais Danone”, France’s largest food and beverage group, with consolidated sales in 1973 of approximately 1.4 billion euros, consisting of 52% food and beverage sales.

Today, the Complainant is a worldwide company leading in fresh dairy products and employs more than 89,499 people throughout the world.

The Complainant’s trademark DANONE is also the world’s top brand for fresh dairy products and represents almost 20% of the international market. Furthermore, the trademark DANONE is present in 40 countries worldwide. Evidence of this has been provided to the Panel.

The Complainant’s trademark DANONE has been used on labeling, packaging and promotional literature for its products and has been prominently displayed in supermarkets and grocery stores in various regions around the world.

Moreover, the Complainant, as a subsidiary of “Groupe Danone”, is closely linked with Institut Danone which is well-known throughout the world. Institut Danone is a non-profit organization, whose mission is to promote research in nutrition; promote knowledge on nutrition and health; and to improve the quality of food for the entire population.

Since 1991, a truly international network has been deployed in Germany, Belgium, Canada, China, Spain, Israel, Italy, Japan, Mexico, Poland, Russia, Czech Republic, Turkey, USA, with the creation of the Institut Danone International. Again, evidence of this has been provided to the Panel.

More particularly, Institut Danone is well aware of issues related to diet and cancer. The Panel has been provided with evidence in support of this claim.

The Complainant sent the Respondent a ‘cease and desist’ letter dated August 14, 2007 by registered letter and by e-mail, of which a copy has been provided to the Panel.

Despite two reminders sent on September 3, 2007 and on September 27, 2007, copies of which have been provided to the Panel, the Complainant never received any response from the Respondent.

The Complainant is the owner of numerous DANONE trademarks protected throughout the world, among which are the following:

- International trademark DANONE N° 172526, filed on October 31, 1953 renewed and covering goods in classes 1, 5 and 29.

- International trademark DANONE N° 228184, filed on February 2, 1960 renewed and covering goods in classes 1, 5, 29, 30, 31, 32 and 33.

- International trademark DANONE + logo, N° 482337, filed on January 23, 1984 renewed and covering goods in classes 5, 29, 30 and 32.

- International trademark DANONE + logo, N° 639073, filed on January 6, 1995 renewed and covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42.

- International trademark DANONE N° 649535, filed on December 1, 1995 renewed and covering goods and services in classes 5, 29, 30, 31, 32 and 42.

- International trademark DANONE N° 667644, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark DANONE N° 667645, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark DANONE N° 667646, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark DANONE N° 667837, filed on January 21, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark DANONE N° 668079, filed on February 3, 1997 renewed and covering goods in classes 5, 29, 30, and 32.

- International trademark DANONE N° 849889, filed on October 29, 2004 and covering goods in classes 5, 29, 30, 32, 35, 38 and 43.

Copies of the above cited trademark registrations have been provided to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain name reproduces precisely and entirely the trademark DANONE. The trademark DANONE is also clearly identifiable in the disputed domain name and the mere adjunction of the common term “cancer” is not sufficient to avoid any risk of confusion with the trademark.

Such a change is not enough to overcome the confusingly similar aspects of the Respondent's domain name with the Complainant’s trademarks DANONE. This was held in a decision of the National Arbitration Forum (NAF) regarding the domain name <groupedanone.com> transferred in favor of the Complainant (Compagnie Gervais Danone v. Youngmi Park, NAF Case No. FA0508000546800, October 3, 2005). On the contrary, it seems to increase the likelihood of confusion by making people think that the disputed domain name is specific to the Complainant’s activities and the reference to ‘cancer’ increases the confusion as the Complainant is closely linked with Institut Danone and issues related to diet and cancer.

Moreover, it is well established that the mere adjunction of the gTLD “.com”, “.net”, “.mobi”, “.info”, “.biz” is not a distinguishing feature and does not have an impact on the likelihood of confusion. It has been held in numerous decisions that the addition of the domain name extension does not remove the likelihood of confusion (Telstra Corp Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003); merely because it is necessary for the registration of the domain name itself. As a consequence, the extension “.com” is not to be taken into consideration when examining the identity or similarity between the previous mark and the disputed domain name.

It clearly appears that the disputed domain name is a clear and obvious infringement of the Complainant’s trademarks DANONE.

For all the above-cited reasons, it is established that the Complainant has trademark rights in the name that is reproduced in the disputed domain name, and, therefore, the condition of Paragraph 4(a)(i) is fulfilled.

A2. 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)).

The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register their trademarks, or to seek the registration of any domain name incorporating such marks.

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

In fact, since the disputed domain name is so identical to the famous trademarks of the Complainant, the Respondent cannot reasonably pretend it was intending to develop a legitimate activity.

For all the above-cited reasons, it is undoubtedly established that the Respondent

has no rights or legitimate interests in respect of the disputed domain name under

Paragraph 4(a)(ii) of the Policy.

A3. 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 and used the disputed domain name in bad faith. Paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use is proved.

With regard to registration in bad faith, it is obvious that the Respondent knew or must have known of the Complainant’s trademarks at the time he registered the disputed domain name.

The Complainant is a well-known worldwide firm and DANONE is not only a famous trademark but also a famous trade name. The term “danone” is also used in the corporate name of the Complainant, Compagnie Gervais Danone. A simple search via Google, or any other research engine, using the keyword “danone” demonstrates that all first results relate to the Complainant’s products or news. A copy of the corresponding Google search result has been provided to the Panel.

The mere addition of the word “cancer”, a generic term, indirectly linked with one of the Complainant’s activities, clearly indicates that the Respondent had the Complainant in mind while registering the disputed domain name. It is unlikely that the registration of the domain name was a coincidence.

All above mentioned circumstances confirm that the disputed domain name was registered in bad faith.

Furthermore, there are elements that prove the finding that the Respondent also used the disputed domain name in bad faith.

The disputed domain name directs Internet users to a page proposing commercial links for different goods and services, evidence of which has been provided to the Panel. It appears that the Respondent registered the disputed domain name in order to create traffic taking advantage of the notoriety of the Complainant’s trademarks. It clearly indicates that the Respondent registered the disputed domain name in order to make profit based on these commercial links. It is evidence of use of the domain name in bad faith (Compagnie Gervais Danone c. Isaac Simon, WIPO Case No. DFR2007-0030).

Moreover, a finding of bad faith can be made where the Respondent “knew or should have known” of the Complainant’s trademarks rights, and nevertheless registered a domain name incorporating these marks, in circumstances where the Respondent himself had no rights or legitimate interests (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763).

Moreover, the postal address provided by the Respondent in the form Whois is false, postal evidence of which has been provided to the Panel. As a result, the Respondent did not receive the ‘cease and desist’ registered letter sent by the Complainant dated August 14, 2007. Last, but not least, the lack of response to the Complainant’s ‘cease and desist’ letter constitutes additional evidence of the Respondent’s bad faith.

This leads the Complainant to conclude that the disputed domain name is registered and used in bad faith.

Consequently, in view of all the above, it is established that the Respondent both registered and used the domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.

The Complainant requests cancellation of the disputed domain name.

B. Respondent

The Respondent, having been duly notified of the Complaint of these proceedings, did not reply to the Complainant’s contentions or take any part in them.

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s trademark DANONE. The only difference between the disputed domain name and the Complainant’s DANONE mark rests in the mere addition by the Respondent of the descriptive term “cancer” to the DANONE mark. This difference is immaterial for trademark distinguishing purposes. See Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273 (finding that the combination of the complainant’s mark “yahoo” with a number of generic words such as a city name or single and two letter abbreviations for a country name, gave rise to a domain name which was confusingly similar to the registered mark of the complainant); see also, eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (applying the same principle and finding that <gayebay.com> was confusingly similar to <ebay.com>); see further Group Kaitu, LLC v. Sergei Vasiliev WIPO Case No. D2006-1229 (finding that <erosporn.com> was confusingly similar to <eros.com>).

Furthermore, the Panel would agree with the Complainant’s contention that the addition of the descriptive term “cancer” increases the likelihood of confusion particularly in light of the work of Complainant’s Institut Danone.

For the sake of completeness, the Panel would also agree with the Complainant’s contention that the addition of the suffix “.com” is not a distinguishing feature for purposes or comparison under the first element of the Policy. See Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark DANONE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through registration and use in commerce for many years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s well-known trademark DANONE and its widespread use, including in the United States of America, the Respondent must in all likelihood have known, when registering the disputed domain name, that the Respondent could not have - or, indeed, claimed - any such rights or interests. Indeed, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant’s well-known and widely-used trademark DANONE when he registered the disputed domain name. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977.

Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark DANONE or business name DANONE in the disputed domain name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its trademark DANONE and thereby unfairly attracting to its own business the goodwill that the Complainant has established in its trademark through extensive advertising, promotion and marketing of its leading brand, as well as commercial use over many years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that contains commercial links to other websites offering different goods and services than those of the Complainant. See QVC, Inc. and ER Marks, Inc. v. ActiveIdeas.com, WIPO Case No. D2005-1303, in which it was held that “[t]he use of a domain name that merely offers links to other websites is not a bona fide offering of good and services pursuant to paragraph 49(c)(i).”

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its well-known and widely-used trademark DANONE. Furthermore, the fact that the Respondent’s website contains links to other websites offering products and services other than those of the Complainant suggests that the Respondent must have been aware of the Complainant’s trademark and, as such, amounts to bad faith on the part of the Respondent. See TAG HEUER v. Whois Privacy Protection Service, Inc., WIPO Case No. D2005-0133. In the circumstances of the present case, the Panel agrees with the Complainant’s contention that it was unlikely that the registration of the disputed domain name by the Respondent was a coincidence.

Again, by registering and using the disputed domain name incorporating the Complainant’s well-known and widely-used trademark DANONE, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004 0649.

Furthermore, the fact that the disputed domain name includes the well-known and widely-used registered trademark of the Complainant, registered by the Complainant many years before the Respondent registered the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the position in the present case.

The Panel, for the reasons and in line with the two previous WIPO UDRP cases cited above by the Complainant, finds that the Respondent has acted in bad faith in both registering and using the disputed domain name.

Likewise, the failure by the Respondent to reply to the Complainant’s ‘cease and desist’ letters for the reasons stated above by the Complainant and also to answer the present Complaint or otherwise take any part in these proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <danonecancer.com> be cancelled as requested by the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: January 22, 2008