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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Danup.com

Case No. D2008-0076

 

1. The Parties

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

The Respondent is Danup.com, Gran Canaria, Spain.

 

2. The Domain Name and Registrar

The disputed domain name <danup.com> is registered with Interdomain, S.A.U.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2008. On January 18, 2008, the Center transmitted by email to Interdomain, S.A.U. a request for registrar verification in connection with the domain name at issue. After several reminders, on February 1^st, 2008, Interdomain, S.A.U. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 (with the Center’s covering document both in Spanish and English), and the proceedings commenced on February 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2008. The Respondent submitted an informal Response on February 7, 2008.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on February 29, 2008 (the “Panel”). 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.

3.1 Language

The language of the registration agreement is Spanish. The Complainant filed its Complaint in English, arguing that Complainant had exchanged correspondence with the Respondent in English, that therefore the Respondent had sufficient ability to understand and write the English language, and that it would be burdensome, costly, time consuming and unnecessary to request the Complainant to produce Spanish translations (citing, inter alia, CPS Realty LP v. DomainAgent.com., WIPO Case No. D2005-0869). The Panel in this case has reviewed the uncontested evidence of correspondence exchanged among the Parties hereto. Said Parties did communicate in English.

The Respondent sent the Center an email communication in Spanish arguing that the language of the proceedings should be Spanish, that the language of the registration agreement is Spanish, asserting that he did not know the English language, and that he would require the assistance of English-speaking third parties to participate in this process.

The Center admitted the Complaint in English and communicated the parties that a bilingual Panelist would be appointed, so that communications and documents from both parties could be analyzed and taken into consideration in English and Spanish. The Center’s communications with the Parties have, in addition to indicating that a Response may be submitted in either Spanish or English, been made in both Spanish and English.

The Panel has analyzed the submissions filed by both Parties. The nature of this procedure is that of an expeditious one, in which each party has typically a single opportunity to prove its case. Both parties have been granted such opportunity within the terms set forth in the Policy. Paragraph 11(a) of the Rules addresses the language of the proceedings in the following terms:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Under the circumstances of the present case, the Panel is satisfied that the preliminary determination by the Center to admit the Complaint in English was appropriate. The Panel is further satisfied not only in view of the Respondent’s apparent familiarity with English, but also because of the communication translations and possibility to file a response in either Spanish or English, that no substantive disadvantage has resulted for the Respondent.

 

4. Factual Background

The Complainant is the holder of the following trademark registrations, inter alia:

TRADEMARK	REG. No.	Class (Int’l)	DATE OF REGISTRATION	COUNTRY
LOS PIN’UP DE DAN’UP	M1754444	35	March 1, 1994	Spain
DANUP	005173026	29 32	June 30, 2006	Community
DAN’UP	479099	29 30	September 19, 1983	International (SP)
DAN’UP	490961	29	February 4, 1985	International (SP)
DAN’UP	759696	38	May 18, 2001	International (SP)
DANUP	789144	29 30 32	August 2, 2002	International (SP)

The Complainant and its affiliated group are also holders of the following domain name registrations:

DOMAIN NAME	DATE OF REGISTRATION
<danup.it>	December 29, 1999
<danup.es>	March 6, 2001
<danup.info>	August 27, 2001
<danup.biz>	November 19, 2001
<danup.com.mx>	May 27, 2002
<dan-up.eu>	August 7, 2006
<danup.pt>	December 5, 2006

The disputed domain name <danup.com> was registered on November 13, 2000.

 

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

I. Identical or Confusingly Similar

- That it is a subsidiary of Goupe Danone.

- That Groupe Danone is the leader in the international market of fresh dairy products, especially in Western Europe where Groupe Danone realizes 8.2 billion Euros of revenue.

- That DANUP is a trademark launched in Mexico since at least 1986 and has ever since been launched in Brazil and Spain, among others.

- That since 1999, it has launched important advertising campaigns regarding DANUP in Spain.

- That Complainant is the owner of numerous DANUP trademarks protected throughout the world (see point 4 supra).

- That Complainant and Groupe Danone’s subsidiaries are the owners of several domain names (id.).

- That is it is well established that “.com”, “.net”, “.mobi”, “.info” or “.biz” are not a distinguishing feature and do not have an impact on the likelihood of confusion (and cites Telstra Corp, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-00003).

- That the domain name <danup.com> is identical to Complainant’s trademarks DANUP.

- That the Complainant has trademark rights in the name that is reproduced in the domain name in dispute.

II. Rights or Legitimate Interests

- That the Respondent is not affiliated with the Complainant in any way.

- That the Respondent has not been authorized by the Complainant to use and register its trademarks, or to seek the registration of any domain name incorporating said trademarks.

- That the Respondent has no prior rights or legitimate interests in the domain name.

- That registration of several DANUP trademarks by the Complainant preceded the registration of the domain name <danup.com>.

- That since the disputed domain name is virtually identical to the famous trademarks of the Complainant, the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity.

III. Registered and Used in Bad Faith

- That the Respondent knew or must have known of the Complainant’s trademarks at the time when it registered the disputed domain name.

- That the Complainant is very famous all over the world and is the leader in the business of fresh dairy products.

- That in an e-mail dated August 17, 2007, the Respondent mentioned another domain name <danette.com> while negotiating the domain name <danup.com>.

- That the Respondent made a direct link between said domain names and the trademarks DANETTE and DANUP held by Complainant.

- That the domain name <danette.com> is also identical to the Complainant’s Spanish trademark, which is protected since 1983.

- That the Respondent knew that the disputed domain name reproduces the Complainant’s trademark.

- That the Respondent’s knowledge of the Complainant’s trademark at the time of registration of the disputed domain name constitutes evidence of Respondent’s bad faith in the domain registration (and cites NBC Universal, Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077; ACCOR v. Eliah Zusstone, WIPO Case No. D2006-0362; Expedia, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0137; Documents Technologies v. International Electronic communications, Inc., WIPO Case No. D2000-0270; Prisma Presse v. BUYDOMAINS.COM, WIPO Case No. D2001-1073.

- That trademark searches on the date of the registration of the domain name would have revealed Complainant’s registrations in Spain. To that effect, the Complainant cites BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc v. Rarenames, Webreg; WIPO Case No. D2006-0964; RRI Financial Inc v. Ray Chen WIPO Case No. D2001-1242.

- That the domain name is in fact under the control of the administrative contact of the domain name, i.e. Mr. Garcнa.

- That Mr. Garcнa presented himself as being the actual owner of the disputed domain name.

- That Complainant suspects that the administrative contact for this domain name, i.e., M. Garcнa, is Miguel Garcнa Quintas, who has been a Respondent in many UDRP cases, e.g., Mundial SA Productos de Consumo v. Movie Name Company S.L. / Miguel Garcia Quintas, WIPO Case No. D2005-0950; Excmo Ayuntamiento de Las Palmas de Gran Canaria v. Miguel Garcie Quintas, WIPO Case No. D2002-0833; Eresmas Interectiva SA y Alehop Internet SL v. Alehop.com/M. Garcia, WIPO Case No. D2001-0949; Banco Zaragozano SA v. Don Miguel Garcia Quintas, WIPO Case No. D2004-0050; Valencia Club de Futbol SAD v. Miguel Garcia, WIPO Case No. D2004-0009; Metrovacesa SA v. Metrovacesa.com (M. Garcia), WIPO Case No. D2001-0511.

- That the practice of registering domain names containing the trademarks of other companies can indicate that the contested domain names were registered and are being used in bad faith.

- That ownership of numerous domain names that correspond to the names or marks of well-known business entities suggests intent of profit from the activities of others (and cites Nikon, Inc and Nikon Corporation v. Technilab, WIPO Case No. D2000-1774; Volvo Trademark Holding AB v. Unasi, Inc, WIPO Case No. D2005-0556).

- That it appears that the Respondent registered the disputed domain name in order to make a profit from his illegitimate registration.

- That on May 18, 2001, the domain name <danup.com> was directed to a page offering it for sale.

- That on September 27, 2002, the disputed domain name was directed to another page offering the domain name for sale, for an amount of USD 2,500.

- That the Respondent offered the Complainant to sell the disputed domain name for an amount of 1,500 Euros.

- That it has been established in previous WIPO UDRP decisions that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration costs is an evidence of bad faith (and cites Adidas Saloman AG v. Vincent Stipo, WIPO Case No. D2006-0414).

B. Respondent.

The Respondent did not reply to the substance of the Complainant’s arguments. In his informal response of February 7, 2008, the Respondent argued:

- that he does not know the English language; and

- that the language of the registration agreement is Spanish; and

- that the language that is to be used in this procedure is Spanish.

 

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), the Complainant must prove that:

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

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

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

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

A. Identical or Confusingly Similar

The Complainant has submitted evidence showing the existence of trademark registrations for DANUP and DAN’UP, together with evidence of advertising campaigns regarding said trademarks. Some of these trademark registrations predate the date of registration of the domain name (see point 4, supra).

The disputed domain name <danup.com> is identical to the Complainant’s trademark DANUP.

Said domain name is also confusingly similar to the trademark DAN’UP. The elimination of the apostrophe in the domain name is not relevant (see Fry’s Electronics Inc. v. N.A. Domain Administrator, WIPO Case No. D2007-0340; Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694; Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684, mutatis mutandis (regarding <s-m-i-r-n-o-f-f.com>): “The addition of dashes between the letters of a single word does not alter the way the Domain Name is pronounced and cannot, in context, differentiate it from the same word absent the dashes.”).

The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a Panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409).

The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:

“(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.” (Policy, paragraph 4(c)).

The Respondent has not submitted evidence showing its preparations to use the disputed domain name with a bona fide offering of goods or services, nor has said Respondent proven that it has been commonly known as <danup.com >, or that it is making a legitimate, noncommercial or fair use of the disputed name.

The trademarks DAN’UP and DANUP have been created by the Complainant. They are arbitrary marks. They have been heavily advertised too, in different jurisdictions, including Spain, where the Respondent has declared to have his domicile. The incorporation of a highly recognized trademark, which is featured on mass media, in a domain name, does not seem to be a coincidence.

The evidence at hand does not show any rights or legitimate interests on the side of the Respondent. Respondent openly offered to sell the domain name to the Complainant, for commercial gain. No rights or interests can be derived from this conduct.

The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Complainant’s arguments and evidence, which were not contested by the Respondent, show that the Respondent offered the disputed domain name to Complainant for sale, for valuable consideration in excess of documented out-of-pocket costs directly related to the name. Complainant’s counsel pointed out this fact to the Respondent in the electronic correspondence exchanged among them, and responded insisted in selling the domain name for amounts such as 3,500 Euros, 2,000 Euros, or 1,500 Euros. This conduct constitutes bad faith registration and use under paragraph 4(b)(i) of the Policy (see, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044; Jordan Grand Prix Ltd. v. Gerry Sweeney, WIPO Case No. D2000-0233; Capcom Co. Ltd. and Capcom U.S.A. Inc. v. Dan Walker trading as “Namesale”, WIPO Case No. D2000-0200; Adidas Saloman AG v. Vincent Stipo, WIPO Case No. D2006-0414).

The third element of the Policy has been met.

 

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 <danup.com> be transferred to the Complainant.

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Kiyoshi I. Tsuru
Sole Panelist

Dated: March 14, 2008