Compagnie Gervais Danone v. Bethesda Properties LLC
Case No. D2007-1451
1. The Parties
The Complainant is Compagnie Gervais Danone, of Paris, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Bethesda Properties LLC of Bethesda, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <danonepeople.mobi> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2007. On October 4, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On October 4, 2007, GoDaddy.com, Inc. 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 October 16, 2007, 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 amendment to the Complaint on October 17, 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 October 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2007.
The Center appointed Adam Taylor as the sole panelist in this matter on December 4, 2007. 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 company incorporated under French law. The Complainant’s main brand DANONE was launched for yoghurt products in Barcelona, Spain around 1919. In about 1932, the Complainant opened its factory for fresh dairy products at Levallois-Perret, France.
In 1967, the Complainant merged with another company to form Gervais Danone. In 1973, that company 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.
Today the Complainant is an international market leader in fresh dairy products and employs more than 89,000 people throughout the world. Its DANONE products represent almost 20% of the total market for fresh dairy products and is marketed in 40 countries. The Complainant has used DANONE on labeling, packaging and promotional literature and has been prominently displayed in supermarkets and grocery stores.
The Complainant launched a project called “Share the danone people dream” through domain names at <danonepeople.com> and <danonepeople.fr>. These directed users to a page on the official website whose aim is to provide direct access to internships and jobs within Danone, to provide “danone people stories” and to encourage networking amongst the Complainant’s employees.
The Complainant owns numerous DANONE trademarks worldwide including the following:
- International trademark DANONE N° 17252, 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.
- United States national trademark DANONE ACTIV n°2951239, filed on July 5, 2000 and covering goods in classes 29, 30 and 32.
- United States national trademark DANONE + logo n°2827606, filed on November 19, 2001 and covering goods in class 32.
- United States national trademark DANONE + logo n°2924636, filed on July 15, 2002 and covering goods in classes 5, 29 and 30.
- United States national trademark DANONE CREME DE YAOURT n°2839555, filed on August 5, 2002 and covering goods in classes 29 and 30.
The disputed domain name was registered on June 1, 2007.
The original registrant was a proxy service DomainsbyProxy. The Complainant sent a cease and desist letter dated August 10, 2007. DomainsbyProxy replied on August 30, 2007 explaining that the letter had been forwarded to its customer. No response was received from the customer.
At some point thereafter the registrant name was changed to the Respondent.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The domain name in dispute includes the entire trademark DANONE in the first part of the name with the mere addition of the generic word “people”.
The Complainant submits that such a change is not enough to distinguish the domain name from the Complainant’s trademark DANONE. On the contrary, it increases the likelihood of confusion by suggesting that the domain name is relevant to Danone’s activities. It makes reference to “people” buying products under this trademark or “people” working within or with the Complainant.
This argument is further supported by the existence of the Complainant’s “Share the danone people dream” project.
The extension “.mobi” is not to be taken into consideration when examining the identity or similarity between the mark and the domain name.
Accordingly, the Complainant contends, the disputed domain name <danonepeople.mobi> is confusingly similar to the Complainant’s trademark DANONE.
Rights or Legitimate Interests
The Respondent is not affiliated with Complainant in any way and the Complainant has not authorized the Respondent to use and register its trademarks, or to register any domain name incorporating those marks.
Furthermore, the Respondent has no prior rights or legitimate interest in the domain name. The registration of various DANONE trademarks preceded the registration of the disputed domain name by many years.
It is unlikely that the term “Danone” has a special meaning in English.
The Complainant further submits that since the disputed domain name is so similar to the famous trademarks of the Complainant, the Respondent can not reasonably claim that it was intending to develop a legitimate activity.
Registered and Used in Bad Faith
It is obvious that Respondent knew or must have known of the Complainant’s dairy products at the time it registered the disputed domain name.
The Complainant is a well-known firm worldwide and DANONE is a famous trademark and trade name. The term “Danone” is also used in the Complainant’s corporate name.
The mere addition of the word “people”, a generic term, clearly indicates that the Respondent had the Complainant in mind while registering the domain name.
There are elements indicating that the Respondent also used the domain name in bad faith.
The Complainant submits that the disputed domain name directs to a Godaddy parking page suggesting Internet users buy .mobi domain names. The lack of active use, in addition to the registration of said domain name corresponding to a famous trademark which the Respondent must have been aware of, demonstrates bad faith. The word “use” does not necessarily mean active use according to the consensus view in UDRP panel decisions, see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Moreover, a finding of bad faith can be made where the Respondent “knew or should have known” of the Complainant’s trademark rights, and nevertheless registered a domain name incorporating that mark, in circumstances where the Respondent itself had no rights or legitimate interests (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763).
The lack of response to the Complainant’s cease and desist letter constitutes additional evidence of the Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established trademark rights in DANONE by virtue of its many registered trademarks as well as its extensive worldwide trading activities under that name.
Disregarding the domain suffix “.mobi”, the disputed domain name differs from the Complainant’s trademark only by the addition of the generic term “people”. This is insufficient to differentiate the domain name and trade mark; rather, it enhances the connection as it is indicative of persons connected with the Complainant such as customers or employees.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,
WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any bona fide use of the disputed domain name.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must demonstrate bad faith registration and use. There is no evidence that the disputed domain name has been actively used for a website. However, in the well known case of Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panelist noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The panelist stated that “it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”
He went on to say that “[t]he question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
See also paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions which states the following consensus view on this issue: “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
The Panel notes the following:
1. The Complainant’s trademark DANONE has a strong reputation and is widely known.
2. The Complainant itself has used domain names at <danonepeople.com> and <danonepeople.fr> for its own project called “Share the danone people dream”. The Panel considers it highly likely that the Respondent registered the disputed domain name with the Complainant’s project in mind.
3. It is impossible here to conceive of any plausible, genuine use of the disputed domain name by the Respondent.
4. The Respondent has not replied to the Complainant’s pre-action correspondence nor has it filed a Response denying the Complainant’s allegations in the Complaint.
The Panel considers that these factors, taken together, are indicative of both bad faith registration and use of the disputed domain name. The Complainant has therefore established the third element 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 <danonepeople.mobi> be transferred to the Complainant.
Adam Taylor Sole Panelist
Date: December 18, 2007
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