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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Justin Nassie

Case No. DME2008-0004

1. The Parties

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

The Respondent is Justin Nassie, of Irvine, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <danone.me> (the "Domain Name") is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2008. On November 10, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 10, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") as approved by doMEn, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") as approved by doMEn, 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 November 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 11, 2008.

The Center appointed David Taylor as the sole panelist in this matter on January 7, 2009. 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.

Prior to initiating these proceedings the Complainant sent a cease and desist letter to the Respondent on October 21, 2008 and a reminder on October 23, 2008, requesting the transfer of the Domain Name. On January 16, 2009, the Respondent wrote an email communication to the Center indicating that he could not attend the appointment of the Panel and enquiring if it was possible to defer the appointment to another date. Attached to the Respondent's email communication was a letter from the Respondent's authorised representative dated January 14, 2009, indicating that the Respondent had spent much of October and November in Nepal working and that he had therefore been unable to reply to the Complainant's cease and desist letter of October 21, 2008. In the letter the Respondent also offered to sell the Domain Name to the Complainant for an amount of USD 25,000.

 

4. Factual Background

The Complainant is Compagnie Gervais Danone, a company incorporated under French law and a subsidiary of the French company Groupe Danone. The Complainant produces dairy products, bottled water, baby food and medical nutrition under a wide range of trade marks. The Complainant's business dates back as far as 1919, when the Complainant launched its main brand DANONE for yoghurt products in Barcelona, Spain. In about 1932, the Complainant opened its factory for fresh dairy products at Levallois-Perret, France.

Today the Complainant is an international market leader in fresh dairy products and employs nearly 90,000 people throughout the world. Its DANONE products represent almost 20% of the total market for fresh dairy products and are marketed in 40 countries around the world. The Complainant has extensively applied and marketed its DANONE brand on labelling, packaging and in promotional literature.

Compagnie Gervais Danone owns numerous trade marks in the term DANONE, including the following United States Of America ("US") and international trade marks (including Montenegro):

- International trade mark DANONE (stylized), registration number 649535 registered on December 1, 1995, renewed and covering goods in classes 5, 29, 30, 31, 32 and 42;

- International trade mark DANONE (word), registration number 750755, registered on January 29, 2001 and covering goods in class 38;

- US trade mark DANONE (stylized), registration number 2827606, registered on March 30, 2004 and covering goods in class 32;

- US trade mark DANONE (stylized), registration number 2924636, registered on February 8, 2005 and covering goods in classes 5, 29 and 30.

The Complainant maintains a website at "www.danone.com" and is the holder of many domain names representing its DANONE trade mark, such as <danone.eu>, <danone.fr>, <danone.net>, <danone.tv> and <danone.us>.

The Domain Name was first registered on July 17, 2008 and is currently registered to the Respondent.

 

5. Parties' Contentions

A. Complainant

(i) The Complainant contends that the Domain Name is identical to the DANONE marks in which the Complainant has rights.

The Complainant states that the mere addition of the Montenegrin country code top level domain (ccTLD) ".me" is irrelevant because the top level is not to be taken into account when assessing the first element of the Policy. The Complainant also submits that, given the distinctiveness of its trade marks and their extensive use in commerce, it is obvious that the Respondent targeted the Complainant's trade marks when choosing the Domain Name.

(ii) The Complainant also contends that the Respondent has no rights or legitimate interests with respect to the Domain Name.

The Complainant submits that the Respondent cannot establish that he falls into any of the categories set out under paragraph 4(c) of the Policy.

With regard to paragraph 4(c)(i) of the Policy, the Complainant asserts that the Respondent, before receiving notice of the current dispute, did not make any 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. The Complainant points out that the Domain Name is linked to a website with pay-per-click links provided by the registrar, which it argues cannot be considered to be use in good faith in the sense of paragraph 4(c)(i) of the Policy. Additionally, the Complainant argues that such use also fails to meet the exception of paragraph 4(c)(iii) of the Policy, as it cannot be considered to be legitimate, non-commercial, fair or without intent for commercial gain.

Secondly, the Complainant submits that the Respondent has not been commonly known by the Domain Name and that therefore the exception in paragraph 4(c)(ii) of the Policy does not apply. Furthermore, the Complainant states that the Respondent is not affiliated with the Complainant in any way and that he has not been authorised to use the DANONE trade mark.

The Complainant also points out that its rights in the DANONE trade mark predate the registration of the Domain Name. The Respondent has not proven that he is the holder of prior rights and it would be very hard for the Respondent to assert such rights, in light of the distinctiveness and fame of the Complainant's trade mark. In this respect the Complainant states that it is very unlikely that the term "danone" has a particular meaning in English or in any other language.

Prior to initiating these proceedings, the Complainant sent a cease and desist letter to the Respondent in October 2008 and a further reminder requesting the transfer of the Domain Name. The Respondent did not reply to these letters. In the view of the Complainant the fact that the Respondent has chosen not to reply to the Complainant's cease and desist letter is a further indication that the Respondent lacks any legitimate interests in the Domain Name.

(iii) The Complainant also asserts that the Domain Name has been registered and is being used in bad faith under the criteria set forth in paragraph 4(b) of the Policy.

The Complainant asserts that, in light of the fame of the Complainant's DANONE trade mark, the Respondent must have been fully aware of the Complainant's rights when he registered the Domain Name. In support of this allegation, the Complainant refers to a number of WIPO UDRP decisions where the panels have found that the DANONE trade mark is well-known and has been used in trade extensively.

The Complainant also points out that a trade mark search on the term "danone" on the date of the registration of the Domain Name would have revealed the Complainant's US trade marks. Similarly, performing a search on the term "danone" through an Internet search engine would have brought up a great deal of information relating to the Complainant and its DANONE branded products. The Complainant therefore submits that the Respondent should have been aware of the Complainant and its DANONE trade marks.

According to the Complainant, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's marks, in the sense of paragraph 4(b)(iv) of the Policy. In support of this allegation, the Complainant states that the website linked to the Domain Name provides sponsored links to the Complainant and its competitors. The Complainant asserts that it is likely that some of the Internet users accessing the website linked to the Domain Name will be confused into thinking that it is endorsed or operated by the Complainant. In the view of the Complainant, the Respondent is thus capitalising on the fame of the DANONE brand by attracting Internet users for commercial gain to the website linked to the Domain Name.

As a further indication of bad faith, the Complainant mentions the lack of a reply from the Respondent to its cease and desist letter.

The Complainant also submits that the registration of the Domain Name in the name of the Respondent prevents the Complainant from registering its brand under the ccTLD ".me".

For all the foregoing reasons, the Complainant submits that the Domain Name was registered and has been used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.

The Complainant requests that the Domain Name be transferred to it.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 15(a) of the Rules states that a panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a party, paragraph 14 of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the panel shall draw such inferences therefrom as it deems appropriate. In this case, the Respondent has not submitted any Response and consequently, despite the opportunity given, has not contested any of the contentions by the Complainant. The Panel will therefore have to proceed on the basis of the factual statements contained in the Complaint and the documents available to support the contentions.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) the Domain Name registered to the Respondent is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the evidence produced by the Complainant, the Panel finds that the Complainant has rights in the DANONE trade marks.

Numerous UDRP decisions have established that the addition of a top level domain such as ".me" can be ignored when assessing the issue of similarity between a disputed domain name and a trade mark. The relevant second level of the Domain Name is identical to the Complainant's DANONE trade marks.

The Panel therefore finds that the Domain Name is identical to trade marks in which the Complainant has rights. Consequently the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy sets out various ways in which the Respondent may demonstrate rights or legitimate interests in the Domain Name, as follows:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has presented a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name. As a result of his default, the Respondent has failed to rebut that showing.

In the Panel's view, it is inconceivable that the Respondent created the website under the Domain Name for any reason other than generating advertising revenue from click-through traffic based on the derived trade mark value of the Domain Name. The Panel considers that such use does not qualify as a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name within the meaning of paragraph 4(c)(i) and (iii) of the Policy. Similarly paragraph (4)(c)(ii) is not satisfied as there is no evidence the Respondent has ever been commonly known by the Domain Name.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. Consequently the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element that the Complainant must prove is that the Domain Name has been registered and is being used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the panel as evidence of the registration and use of the domain name in bad faith, as follows:

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 has demonstrated that its DANONE trade mark is distinctive, fanciful and well-known. The Panel cannot therefore conceive that the registration of the Domain Name was unintentional or occurred in a haphazard fashion.

In the Panel's view, the Respondent's email communication to the Center of January 16, 2009 and the letter attached thereto clearly demonstrate that the Respondent's primary purpose when he registered the Domain Name was to sell it to the Complainant for an amount well in excess of the Respondent's out-of-pocket costs related to the registration of the Domain Name. The general facts surrounding the registration of the Domain Name have led the Panel to believe that the Domain Name was registered primarily to profit from the intrinsic value and fame of the DANONE brand. The Panel therefore finds that paragraph 4(b)(i) of the Policy has been satisfied.

As the Complainant points out, the use of the Domain Name in connection with a website featuring pay-per-click links to the Complainant and its competitors provides evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. By using the Domain Name in this manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website.

Although the Complainant has already established bad faith registration and use of the Domain Name in the sense of paragraph 4(b) of the Policy, for completeness' sake the Panel finds that the Respondent's failure to reply to the Complainant's cease and desist letter is a further indication of bad faith. Even if the Respondent was working abroad in late 2008 (the Panel notes that no evidence has been submitted in support of this account), the email from the Respondent of January 16, 2009 originates from the same email address to which all previous correspondence, including the Notification of Complaint, was sent. Under these circumstances, the Panel finds that the reluctance on the part of the Respondent to reply to the Complainant's contentions or to submit a substantial reply in these proceedings illustrates bad faith.

It is also clear that the registration of the Domain Name in the name of the Respondent has prevented the Complainant from registering its brand under the ".me" top level without legitimate cause.

The Panel therefore finds that the Complainant has succeeded in proving that the Domain Name has been registered and is being used in bad faith. Consequently the Complainant has established the third element of paragraph 4(a) of the Policy.

 

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, <danone.me>, be transferred to the Complainant.

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David Taylor
Sole Panelist

Dated: January 21, 2009