WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone, The Dannon Company, Inc. v. Maison Tropicale SA

Case No. D2007-1944

1. The Parties

Complainants are Compagnie Gervais Danone Paris, France and The Dannon Company, Inc., New York, United States of America.

Respondent is Maison Tropicale SA, Anguilla, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain names <dannonyogert.com> and <yogourtdanone.com> are registered with Capitoldomains, LLC and BelgiumDomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2007. On December 31, 2007, the Center transmitted by email to Capitoldomains, LLC and to BelgiumDomains, LLC a request for registrar verification in connection with the domain names at issue. On January 3, 2008, Capitoldomains, LLC and BelgiumDomains, LLC transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant of the disputed domain names and providing the related contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on January 22, 2008. 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 Respondent of the Complaint, and the proceedings commenced on January 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 18, 2008. On March 26, 2008, Respondent sent an email to the Center to express its willingness to transfer the domain names to the rightful owner.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 27, 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

Complainants’ main brands DANONE and DANNON originated around 1919 in Barcelona, Spain and were launched for yogurts. Danone then opened in France in 1932 and merged with Gervais in 1967. It finally merged again with BSN in 1973 to form France’s largest food and beverage group with consolidated sales in 1973 of approximately 1.4 billion Euro.

The DANONE and DANNON trademarks have been registered by Complainants in various forms in many countries. Complainants have produced a long list of registered trademarks.

Complainants submit to be a worldwide leading company in fresh dairy products employing more than 89,499 people throughout the world. The DANONE and DANNON trademarks are the world’s top brands for fresh dairy products and represent almost 20% of the international market. Furthermore, the trademark DANONE is present in 40 countries worldwide.

Respondent registered the domain name <dannonyogert.com> on June 27, 2007 and the domain name <yogourtdanone.com> on September 21, 2007.

5. Parties’ Contentions

A. Complainant

Complainants claim that: (i) the disputed domain names are confusingly similar to Complainants’ registered trademarks; (ii) Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain names; (iii) Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

Respondent did not file a substantive reply to Complainants’ contentions, but in response to the receipt of the Notification of Respondent Default offered to transfer the disputed domain names to Complainants.

6. Discussion and Findings

In the present case Complainants have requested that the disputed domain names be cancelled. On the other side, Respondent after receiving the Notification of Respondent Default, sent an email to the Center expressing its willingness to transfer the domain names to Complainants “if you drop the UDRP”.

Since Respondent’s email was sent after the deadline set by the Center, it is to be considered as a supplemental filing. This Panel taking into consideration the WIPO Overview of WIPO Panel Views on unsolicited supplemental filings, agrees with the Majority, that affirms that: “While panels must be mindful of the need for procedural efficiency, they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. It is also helpful if the party submitting its filing can show its relevance to the case and why it was unable to provide that information in the complaint or response. Omissis”.

In this case, the Panel considers that accepting Respondent’s email is fair for both parties and relevant for the case. In fact, in this email Respondent clearly states its willingness “to transfer the domain names to the rightful owner”.

Regarding how to consider Respondent’s request to transfer the domain names to Complainants, it should be noted that, as described in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, panels, when faced with a “unilateral consent to transfer,” have taken three different approaches. Some panels have granted the relief requested on the basis of respondent’s consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398. Still other Panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745.

In this proceeding noting that Respondent’s consent to transfer does not appear to be entirely unconditional, the Panel finds, that: 1) Complainants have established prior rights on the worldwide renowned trademarks DANONE and DANNON and the domain names are confusingly similar to those marks; 2) and Respondent has recognized Complainants as the rightful owners of the domain names and Respondent does not appear to be making a legitimate use of the disputed domain names but appears to have disclosed commercial links on the websites with the disputed domain names; and 3) Respondent’s previous path of conduct, which appears from many UDRP decisions issued against it suggests bad faith. The Panel therefore finds that the three elements of the Policy have been satisfied.

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 names <dannonyogert.com> and <yogourtdanone.com> be cancelled.

Fabrizio Bedarida
Sole Panelist

Dated: April 10, 2008