Compagnie Gervais Danone v. Ibrahim kosun, danonesu.com
Case No. D2008-1085
1. The Parties
Complainant is Compagnie Gervais Danone, Paris, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Ibrahim kosun, danonesu.com, Izmir, Buca, Turkey.
2. The Domain Name and Registrar
The disputed domain name <danonesu.com> is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2008. On July 18, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue. On July 19, 2008 Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that Respondent was not listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 4, 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 August 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 29, 2008.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on September 10, 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
Complainant is a leading company worldwide in fresh dairy products, bottled mineral water, and baby food among other things. Complainant's company has existed and traded internationally for many years, having begun in the early 20th century supplying yogurts through pharmacies. Complainant credibly claims that it is the global leader for fresh dairy products with 20 percent market share, and number two in the global market for bottled waters.
Complainant owns numerous DANONE trademarks around the world and specifically in Turkey, including:
- International Trademark PETIT DANONE + logo n° 661639, covering classes 5, 29, 30
- International Trademark DANONE FJORD + logo n° 707966, covering classes 29, 32
- International Trademark DANONE + logo n° 718777, covering classes 5, 29, 30, 32, 42
- International Trademark DANONE LE YOGHOURT NATURE + logo n° 719532, covering class 29
- International Trademark DANONE + logo n° 722533, covering classes 29, 30, 32
- International Trademark DANONE + logo n° 722534, covering classes 29, 30, 32
- International Trademark DANONE + logo n° 722535, covering classes 29, 30, 32
- International Trademark DANONE + logo n° 722536, covering classes 29, 30, 32
- International Trademark DANONE VELOUTE + logo n° 723633, covering classes 5, 29, 30, 32
- International Trademark DANONE + logo n° 724578, covering classes 29, 30, 32
- International Trademark DANONE + logo n° 725755, covering classes 29, 30, 32
- International Trademark DANONE GERVAIS AUX FRUITS + logo n° 740510, covering classes 29, 30, 32
- International Trademark DANONE DANETTE + logo n° 743277, covering classes 29, 30, 32
- International Trademark DANONE ACTIMEL + logo n° 743602, covering classes 5, 29, 30, 32
- International Trademark DANONE ACTIV + logo n° 744003, covering classes 29, 30, 32
- International Trademark DANONE VELOUTE + logo n° 750737, covering classes 29, 32
- International Trademark DANONE n° 750755, covering class 38
-- International Trademark DANONE AYUDEMOS A LOS NINOS A CRECER + logo n° 751854, covering classes 5, 29, 30, 32, 35, 36, 41, 42
- International Trademark DANONE AIDONS LES ENFANTS A GRANDIR + logo n° 755973, covering classes 5, 29, 30, 32, 35, 36, 41, 42
- International Trademark DANONE + logo n° 757567, covering class 32
- International Trademark DANONE HELPING OUR CHILDREN TO GROW + logo n° 758941, covering classes 5, 29, 30, 32, 35, 36, 41, 42
- International Trademark DANONE + logo n° 765873, covering classes 5, 29, 30, 32
- International Trademark DANONE + logo n° 765874, covering classes 5, 29, 30, 32
- International Trademark DANONE + logo n° 767954, covering class 29
- International Trademark DANONE PASSION + logo n° 784711, covering class 29
- International Trademark DANONE ACTIMEL + logo n° 784715, cover classes 5, 29, 32
- International Trademark DANONE CRÈME DE YAOURT + logo n° 784727, covering class 29
- International Trademark DANONE + logo n° 787008, covering classes 29, 30, 32
- International Trademark DANONE + logo n° 788143, covering classes 5, 29, 30
- International Trademark DANONE ACTIMEL + logo n° 789118, covering classes 29, 30, 32
- International Trademark DANONE + logo n° 810981, covering classes 5, 29, 30
- International Trademark DANONE ACTIVIA SENSATION + logo n° 812046, covering class 29
- International Trademark TRUST BY DANONE + logo n° 838807, covering classes 16, 28, 35, 41
- International Trademark DANONE + logo n° 849889, covering classes 5, 29, 30, 32, 35, 38, 43
- International Trademark DANONE NATIONS CUP + logo n° 893131, covering classes 16, 29, 41
Complainant also own registrations for the domain names <danonewater.com>, <danone.com>, and <danone.com.tr>.
Respondent registered the disputed domain name <danonesu.com> on February 7, 2008.
The website to which the disputed domain name resolves dramatically displays against a black background a picture of a howling red wolf and three red crescents and contains, in Turkish in capital letters, the words “EVEN IN THESE CIRCUMSTANCES IT IS YOUR DUTY TO PRESERVE THE INDEPENDENCEOF TURKEY AND THE REPUBLIC.”
These words on the website are attributed to the founder and first President of the Republic of Turkey, Mustafa Kemal Atatürk.1 The website contains no visible links, advertisements, contact or other information.
5. Parties' Contentions
A. Complainant
Complainant avers that Complainant is the market leader in producing bottled waters in Turkey and that it produces and sells bottled water under the trademark DANONE in Turkey. Noting that the public has come to perceive the word DANONE as being related to Complainant and its goods, Complainant contends that the public could reasonably assume that the domain name <danonesu.com> would be owned by Complainant. Moreover, the addition of the Turkish work “su” after DANONE contributes to confusion and leads internet users to think that the disputed domain name is related to Complainant because the word “su” means “water” in Turkish, citing UDRP decisions in ACCOR SA v. Gary Weber,
WIPO Case No. D2007-1053 and ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,
WIPO Case No. D2002-0625. Therefore, Complainant argues, the disputed domain name is identical and confusingly similar to its trademarks.
In summary fashion, Complainant also contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant writes:
The Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's DANONE trademark or to seek registration of any domain name incorporating said mark.
Further, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the numerous DANONE trademarks preceded the registration of the disputed domain name. Additionally, the Respondent does not seem to go by the name DANONE, or have gone by it [sic] in the past.
Complainant describes how it sent a cease and desist letter to Respondent and that Respondent, failing to answer the letter, did not present any legitimate reasons for use of the disputed domain name. Citing a recent favorable UDRP decision in a prior case Complainant brought against a third party, Complainant contends that because it has a world-famous, renowned trademark, Complainant “could not reasonably pretend that it was attempting to engage in a legitimate activity when it registered the disputed domain name.”
To establish the element of registration of the disputed domain name in bad faith, Complainant explains that DANONE is a famous trademark and trade name. Having chosen to combine DANONE with the Turkish term for water in creating the disputed <danonesu.com> domain name, while Complainant is prominent in the market for bottled waters, Complainant concludes that Respondent must have known about Complainants marks when registering. Complainant notes that a simple Internet search would have lead Respondent to find references to Complainant.
To establish that Respondent also uses the disputed domain name in bad faith, Complainant argues that:
Panels have previously stated that bad faith is present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”, Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
Here, the Respondent is clearly using the Complainant's DANONE name to divert Internet users to a website containing political views. Such conduct is not only a violation of the Complainant's trademark rights, but could lead to an adverse reputation and a loss in business if people don't agree with the political statement of the website and think that it is related to the Complainant.
Complainant concludes, noting that Respondent's failure to respond to the cease and desist letter is also, under UDRP cases, evidence of use of the disputed domain name in bad faith.
On this basis, Complainant seeks transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition, in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center notified the proceedings to Respondent by using a courier service, directed to the address listed in the WhoIs record for the domain name. The courier package was delivered. The Center also notified Respondent by using the WhoIs listed office fax numbers and an email address provided by the registrar in its verification response to the Center.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a 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. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,
WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009).
C. Identical or Confusingly Similar
The Panel agrees with Complainant that Respondent's domain name <danonesu.com> is confusingly similar to Complainant's DANONE trademarks.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,
WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,
WIPO Case No. D2006-1315.
The Panel concludes that the addition of the descriptive term “su” does not negate the confusion created by Respondent's complete inclusion of the DANONE trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,
WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,
WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629. In fact, the addition of the Turkish term for “water” simply increases the confusion that Internet users would experience. Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, supra (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the domain name in connection with a bona fide offering of goods and services; (2) an entity being commonly known by the domain name; or (3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy paragraphs 4(c)(i)(iii).
A complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,
WIPO Case No. DTV2002-0005).
Complainant alleges that Respondent did not have legitimate interests because Respondent is not affiliated with Complainant, Respondent was not authorized by Complainant to register and use Complainant's trademark, and that Respondent has no prior rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel accepts these allegations as true.
Complainant does not, however, address the significant question of whether Respondent, by using the disputed domain name as a platform for posting political speech, is making a fair use of the domain name, “without intent for commercial gain to misleadingly divert consumers.” If so, Complainant would be unable to establish that Respondent has no rights or legitimate interest under Policy paragraph 4(a)(ii).
Several panels have considered this question in other decisions. With some consistency, they have found that where political comment is made using another's trademarks, and that comment bears no relation to the trademark holder or its activities, use of the trademark in the disputed domain name is a violation of the UDRP. E.g.,Washington Magazine, Inc. v. dannyBOY, Inc., WIPO Case No. D2002-0514 (violation of UDRP in using washingtonianmagazine.com domain name to redirect users to websites posting anti-abortion advocacy and information); PepsiCo, Inc. v. “The Holy See”, WIPO Case No. D2003-0229) (using confusingly similar domain names for anti-abortion speech, unrelated to complainant's activities, violates UDRP), citingAmerica Online, Inc. v. Chris Hoffman,
WIPO Case No. D2001-1184, Preston Gates & Ellis, LLP v. defaultdata.com and Brian Wick, WIPO Case No. D2001-1381 and Barnes & Noble College Bookstores, Inc. v. Good Domains, WIPO Case No. D2002-0812.2
In the present case, there is no indication that Respondent's use of the confusingly similar domain name has any relation at all to Complainant's activities or identity. The Panel finds, therefore, that Respondent's use does not confer any right or legitimate interest in respect of the domain name. Respondent may have the right to publish its political speech on the Internet, but it does not have the right to use Complainant's name to do so.
Filing no Reply, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and a lack of conceivable good-faith uses for the domain name. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Under the circumstances, the Panel does not hesitate in ruling that Respondent registered the disputed domain name in bad faith. Complainant's trademarks are famous, and there are few, if any conceivable good-faith uses for the domain name by others. The combination of words registered, as averred by Complainant, proves that Respondent knew of Complainant's marks when Respondent registered, and the Panel so finds.
The Panel also finds that the domain name is being used in bad faith. Without so much as a disclaimer or any contact information on his website, Respondent is using a domain name confusingly similar to Complainant's marks as a platform for political speech that is wholly unrelated to Complainant. The Panel considers the use of the disputed domain name for political speech without any conceivable relevance to Complainant to be evidence of bad faith use. Federal Reserve Banks v. Chris Hoffman,
WIPO Case No. D2004-0918 (“As many other Panels have found, the misdirection of Internet users seeking Complainant's website to a highly charged political website involves Complainant in a political debate in which it has no part' and tarnishes Complainant's mark.” quoting PRIMEDIA Special Interest Publications Inc. v. Anti-Globalization Domains, WIPO Case No. D2003-0869); PepsiCo, Inc. v. “The Holy See”, supra (citing both WIPO and NAF UDRP decisions).
Moreover, Respondent also chose not to respond to Complainant's cease and desist letter and to make no response or appearance in the present proceedings.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) 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, <danonesu.com> be transferred to Complainant.
Nasser A. Khasawneh Sole Panelist
Date: September 24, 2008
1 Atatürk was known as a revolutionary and formidable military officer who sought to transform the ruins of the Ottoman Empire into a modern, democratic, secular, nation-state.
2 See Justice for Children v. R neetso / Robert W. O'Steen,
WIPO Case No. D2004-0175 (ordering transfer even where criticism was expressly targetted at complainant's activities); Lockheed Martin Corporation v. Ning Ye,
WIPO Case No. D2000-1733 (anti-Chinese government criticism, although there was some evidence of commercial use); compareBridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers,
WIPO Case No. D2000-0190 (protected speech where criticism related to complainant company).
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