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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Companie Gervais Danone v. WhoisGuard / WhoisGuard Protected

and Sempoihosting.com / Mohd Suhaimy Abu Bakar

Case No. D2009-0354

1. The Parties

The Complainant is Companie Gervais Danone of Paris, France, represented by Dreyfus & associés, France.

The Respondents are WhoisGuard / WhoisGuard Protected of Westchester, California, United States of America and Sempoihosting.com / Mohd Suhaimy Abu Bakar of Kuala Lumpur, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <activianutrition.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2009. On March 18, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 18, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 26, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on April 22, 2009.

The Center appointed Amarjit Singh as the sole panelist in this matter on May 5, 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.

4. Factual Background

The Complainant, Compagnie Gervais Danone (hereinafter, "Danone"), is a worldwide leading company in fresh dairy products, bottled mineral water, baby food and medical nutrition. Danone owns numerous trademarks which are protected throughout the world. Its trademarks are very well-known, especially in the filed of food products, including DANONE, ACTIVIA, ACTIMEL, VITALINEA, DANETTE, etc.

ACTIVIA is one of the most successful dairy products of DANONE and it is the first and only probiotic yogurt available in the United States.

Danone owns several domains names, including <activia.us>, <activia.com>, <activia.es>, <activia.fr>, <activia.it> and <activia.de>.

5. Parties` Contentions

A. Complainant

The Complainant contends that the Complainant`s trademark ACTIVIA is internationally well-known mark and enjoys a particularly strong reputation in the United States where one of the Respondents may be assumed to be located. The Respondents should have had notice of Complainant`s trademark rights when it registered the disputed domain name. Actual or constructive knowledge of the Complainant`s rights in its trademark is a factor supporting bad faith.

The Respondent Sempoihosting.com / Mohd Suhaimy Abu Bakar have taken active steps to hide its true identity by using a privacy shield. It is difficult to see why this Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.

Before introducing said UDRP action, the Complainant sent a cease-and-desist letter by email and registered letter dated October 17, 2008 to the Respondents based on its trademarks rights asking the same to amicably cancel the disputed domain name (Annex 05).

The registered letter came back to the Complainant with the message "unclaimed" (Annex 06).

The Respondents never answered the cease-and-desist letter despite the Complainant`s reminders (Annex 07).

As no amicable settlement could be found, the Complainant was forced to start this present procedure in order to obtain a transfer of the disputed domain name.

B. Respondent

The Respondents did not reply to the Complainant`s contentions.

6. Discussion and Findings

The Respondents were given notice of these proceedings in accordance with the rules. The Center discharged its responsibility under the Rules, paragraph 2(a), to employ reasonably available means calculated to achieve notice to the Respondents of the Complaint.

However, as stated above, the Respondents have failed to file any reply to the Complaint and have not sought to answer the Complainant`s assertions, evidence or contentions in any manner. The Panel finds that the Respondents have been given the opportunity to present their case as provided by the Policy and Rules, and the panel will proceed to render a decision.

The Respondents` default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy, paragraph 4(a). To succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove the three following elements:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);

2. The Respondents have no rights or legitimate interests in respect of the disputed domain name (see below, section 6.B); and

3. The disputed domain name has been registered and is being used in bad faith (see below, section 6.C).

Pursuant to 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(b) of the Rules, the Panel may draw inferences it considers appropriate from the Respondents` failure to reply to the Complainant`s assertions and evidence. In these circumstances, the Panel`s decision is based upon the Complainant`s assertions and evidence and inferences drawn from the Respondents failure to reply.

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence of its rights in the trademark ACTIVIA. The Complaint is owner of the trademark ACTIVIA and has registered it in various parts of the world, including in the United States including in classes 29, 30, 32 & 38.

The Complainant also owns several domain names including <activia.us>, <activia.com>, <activia.es>, <activia.fr> and <activia.biz>.

The disputed domain name consists of the Complainant`s trademark and includes the generic term "nutrition".

Adding a common or a generic term to a well-known mark does not sufficiently distinguish the domain name from a complainant`s trademark. This view has been expressed repeatedly by other panels. See, e.g. Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814; Nokia Corporation v. Marlon Sorken, WIPO Case No. D2002-0276; Nokia Corporation v. Liquid SMS Limited, WIPO Case No. D2002-0292.

For these reasons, the panel finds that the disputed domain name is confusingly similar to the trademark ACTIVIA.

B. Rights or Legitimate Interests

Even though the Respondents have not filed any response to the Complaint and have not contested the Complainant`s assertions, it is the Panel`s responsibility to consider whether the Respondents use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to the Policy, paragraph 4(c), the following circumstances, if proved, demonstrate a registrant`s rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant`s mark.

To satisfy the Policy, paragraph 4(c)(i), the Respondents` use of the disputed domain name must be in connection with a bona fide offering of goods or services. In this case, the Respondents` use of the disputed domain names is not bona fide within the meaning of the Policy, paragraph 4(c)(i). That is, there is no apparent legitimate justification for the Respondents` registration and use of the <activianutrition.com> domain name which is confusingly similar to the Complainant`s trademark.

The Respondents are not affiliated with the Complainant in any way and have not been authorized by the Complainant to register and use its ACTIVIA.

There is no evidence to show that the Respondents have been commonly known by the domain name.

The Complainant has not licensed or otherwise permitted the Respondents to use the trademark ACTIVIA.

In addition, the Panel draws an adverse inference from the Respondents` failure to provide any explanation or rationale for its use of the disputed domain names for their websites.

Policy, paragraph 4(c)(ii) is not applicable. The Respondents do not contend, and there is no evidence that the Respondents have been commonly known by the disputed domain name.

For these reasons, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name

C. Registered and Used in Bad Faith

Policy, paragraph 4(a)(iii), requires the Complainant to prove that the Respondents registered and have used the disputed domain name in bad faith. The language of the Policy, paragraph 4(a)(iii), requires that both bad faith registration and bad faith use be proved.

Policy, paragraph 4(b), provides that the following circumstances are evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicate that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark), or to a Complainant competitor, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

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

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

(iv) by using the domain name, the registrant 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 its website or location or of a product or service on its website or location.

The Panel finds that the Respondents` silence on the Complainant cease-desist letter dated October 17, 2008 and Google search results on the keyword "activia" demonstrates the bad faith registration and use on part of the Respondents.

The Respondents are not using the domain name and have passively hold same. The Respondents have also failed to reply to the assertion that has been made by the Complainant in this matter to substantiate its claim in the domain name <activianutrition.com>.

The Complaint has made reliance on AT& T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith), claiming that the registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.

The Panel finds that the Respondents have registered the disputed domain name in bad faith for reasons stated herein above.

7. Decision

For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <activianutrition.com> be transferred.

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Amarjit Singh
Sole Panelist

Dated: May 19, 2009