Compagnie Gervais Danone v. Domain Management, Syed Hussain
Case No. D2008-1239
1. The Parties
1.1 The Complainant is Compagnie Gervais Danone, of Paris, France represented by Cabinet Dreyfus & Associés, of France.
1.2 The Respondent is Domain Management, Syed Hussain, of Closter, New Jersey, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <yakultdanone.com> (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2008 with Protected Domain Services of Denver, Colorado, United States of America named as the Respondent. On August 15, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
3.2 On August 15, 2008 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2008 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 August 19, 2008 identifying “Domain Management, Syed Hussain” as the Respondent. The Center verified that the Complaint together with the subsequent amendment 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”).
3.3 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 August 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2008.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 18, 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
4.1 The Complainant is a company engaged in the sale of dairy products, bottled water, baby food and medical nutrition products. It employs nearly 90,000 people worldwide and is present in 40 countries, including the United States of America.
4.2 The Complainant owns a large number of trade marks around the world that comprise or incorporate the name “Danone”. They include, for example, Madrid international trade mark registration no. 172526 dated October 31, 1953 for the word “Danone” in classes 1, 5, 29 with over 20 designated countries. The Complainant also operates webites from a number of websites that incorporate the DANONE mark, including “www.danone.com” and “www.danone.fr”.
4.3 In a number of previous cases under the Policy panels have held the DANONE trade mark to be well-known throughout the world1.
4.4 “Yakult” is the name of a widely known probiotic yoghurt drink originally developed in Japan and subsequently exploited world wide by Yakult Honsha Co. Yakult Honsha Co is a competitor to the Complainant.
4.5 The Respondent would appear to be an individual located in the United States of America. The Respondent registered the Domain Name on December 19, 2007.
4.6 At all relevant times a website has operated from the Domain Name that has borne all the hallmarks of having been generated by a domain name parking service. The page comprises a banner incorporating the text <yakultdanone.com>, below which are a series of links under the heading “Related Searches” and another series of link, this time to various commercial organisations under the heading “Sponsored Listings”. Many of the sponsored links have some form of dairy product connection. As at the date of this decision the links seem by an Internet user accessing the site from the United Kingdom to include “Oddono’s Gelati”, “Frozen Yoghurt Recipes” and “Kid Me Not Goats”.
4.7 Further, the domain name parking page operating from the Domain Name contains a link comprising the words “Enquire about this domain”. When clicked upon that link takes the Internet user to a web page generated by NameDrive with the following text:
“If you are interested in a possible purchase of this domain or would like to contact the owner, please fill in the following information and submit your message”
Beneath this is an online form with a box in which it is possible to make an offer for the Domain Name in US dollars, euros or pounds sterling.
4.8 On January 24, 2007 the Complainant’s French lawyers sent a letter to the entity then listed on the Whois registry for the Domain Name. That letter alleged that the Domain Name had been registered in bad faith and was contrary to trade mark law. It demanded, inter alia, that the Domain Name be cancelled.
4.9 In July 2007 the Complainant’s French lawyers entered into email correspondence with Mr. Syed Hussain. How the Complainant came to learn of Mr. Hussain’s connection with the Domain Name is unclear. However, Mr. Hussain responded by email as follows:
“If you or your client are so much interested in our domain name, you may acquire it from us for a very reasonable price otherwise please do not send us any lengthy letters or emails. We are not obliged to respond in time. By the way our domain has nothing to do to any French food company”.
4.10 When the Complainant’s lawyers responded that the Complainant did not want the domain name but was demanding its cancellation, Mr. Hussain replied as follows:
“I have nothing much to add into our discussion about the subjected domain expect to let you know my bottom line price which is 600 Euro. If your client is interested to acquire the domain immediately then you may offer through sedo.com or escrow.com”.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant contends that the Domain Name is identical or confusingly similar to its trade marks. The Domain Name is said to be “the Complainant’s DANONE trademark in its entirety coupled [with] the YAKULT trademark of its owner”. As a consequence it is asserted “that the public would reasonable assume” that the Domain Name would be owned by the Complainant, it’s competitor or both”.
5.2 The Complainant asserts that the Respondent is not affiliated with the Complainant in any way and has not been authorised by the complainant to register and use the DANONE trade marks. Further, it contends that the Respondent is not known by the Danone name.
5.3 Instead, the Complainant contends that the Respondent has a long history of cybersquatting and points to the decision of the panel in Allianz AG and Dresdner Bank AG v. MIC,WIPO Case No. D2001-1298 as a previous example of a case in which the Respondent is said to have registered domain names containing the trade marks of two competing businesses. In the circumstances, it is claimed that the Respondent has no rights or legitimate interests in the Domain Name.
5.4 So far as bad faith is concerned, the Complainant having referred to the well- known nature of its trade mark, asserts that it “highly unlikely” that the registration of the Domain Name that comprises that mark and the trade mark of a competitor “was a coincidence”. It claims that the Respondent must have been aware of the Complainant’s mark at the time of registration.
5.5 The Complainant also contends that subsequent use of the Domain Name has been in bad faith. Reference is made to the fact that the Domain Name has been used in connection with a domain name parking service and the Complainant asserts that the “use of a domain parking service is usually considered bad faith use by WIPO Panelists”. Further, the Complainant contends 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”.
5.6 The Complainant also makes reference to the Respondent’s offers to sell the Domain Name. This is said to indicate “circumstances indicating that you have registered ... the domain name primarily for the purpose of selling ... the domain name registration to the complainant ... for a valuable consideration in excess of your documented out of pocket costs directly related to the domain name ...” within the meaning of paragraph 4(a)(iii) of the Policy.
5.7 The Complainant seeks a decision that the Domain Name be cancelled.
B. Respondent
5.8 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Panel has reviewed the documents submitted by the Complainant in this case. In the light of this material, the Panel finds as set out below.
6.2 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.5 The Panel agrees with the Complainant that the Domain Name can only sensibly be understood as a combination of the “Danone” name and the “Yakult” name of its competitor. The Complainant also clearly possesses a large number of marks that incorporate the “Danone” name, including registrations in various countries that comprise the word “Danone” alone. In the circumstances, the Panel concludes that the Domain Name is confusingly similar to marks in which the Complainant has rights. The incorporation of the name of a competitor in the Domain Name does not so distract from the “Danone” name so as to prevent a finding of confusing similarity.
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 The Panel accepts the Complainant’s claims that the Respondent has never engaged in a substantial business activity under the Danone name and accordingly has not as a consequence of this established a right or legitimate interest.
6.8 The only activity in which the Respondent appears to have been engaged is the operation of website from the Domain Name. As has already been described, these web sites show the classic hallmarks of a parking site. How these sorts of site operate is described in greater detail in the context of bad faith later on in this decision. In the view of the Panel there is no real doubt that in this case the Respondent has registered this Domain Name with a view to earning a share of the click through revenue generated by the domain name parking page in question.
6.9 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see
paragraph 2.2 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.10 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainant’s mark in mind and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little.
6.11 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the unequivocal answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.12 The Panel has little difficulty in concluding in this case that the Domain Name has been registered and used in bad faith.
6.13 First, there is the use of the Domain Name in connection with a Domain Name parking service. It is now well-known how these sorts of page operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA,WIPO Case No. D2007-1143).
6.14 In this case the pages appended to the Complaint suggest that in this case the link to the sponsored searches is indirect. Either sponsored links are produced when the Internet user undertakes a search in the search box provided on the page or chooses one of the “Related Searches” that are displayed.
6.15 The generation of revenue from domain name parking activities is not necessarily activity in bad faith2. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of internet users being drawn to that page (see for example Express Scripts, Inc. v Windgather Investments Ltd supra.).
6.16 In this case the reputation of the DANONE mark means that it seems likely that the Domain Name was chosen with the Complainant in mind and with to view to creating confusion between the Domain Name and the Complainant’s marks in order to attract a greater number of Internet users to the relevant domain name parking pages. The combination of that name with the term “yakult”, which is itself a distinctive name of a dairy product (albeit one of a competitor to the Complainant), places this beyond any reasonable doubt.
6.17 Of course, it seems likely that the Respondent also sought to take advantage of the “Yakult” name, a name in which the Complainant has no interest. As is described later on in this decision, this may have an impact on what relief the Panel would be prepared to grant in a particular case. However, the fact that a registrant seeks by means of a single domain name to take advantage of the reputation in two separate marks, does not in the opinion of the Panel prevent the owner of one of those marks from successfully bringing proceedings under the Policy.
6.18 Second, there is the fact that the Respondent seems at all relevant times to have been willing to sell the Domain Name for more than the out of pocket expenses associated with the registration of the Domain Name. Not only is there the fact that the Respondent was prepared to sell the Domain Name to the Complainant for Euros 600, but the fact that the web page operating from the Domain Name linked to a page that invites from members of the public financial offers for the Domain Name. The Complainant contends that this activity falls within paragraph 4(b)(i) of the Policy. The Panel doubts that this is technically correct. The reason for this is that the way that this aspect of the Policy is concerned is that it requires registration for the purpose of sale to be the “primary” purpose of registration. However, in practice in this case this does not really matter. The point is that these dealings provide further evidence of the fact that the Respondent has sought by means of the Domain Name to gain some personal advantage from the reputation that the Complainant has built up in the DANONE mark through the intentional use of a domain name that is similar to that mark. That advantage may be though the use of a domain name parking service or through the sale of the Domain Name or probably with an open mind as to either. Even if sale was merely one of a number of possible means by which this might be achieved rather that the “primary” purpose of registration, the Respondent’s action when considered as a whole involve bad faith registration and use (see NAF NAF v. Hostmaster Hostmaster,WIPO Case No. D2007-1175).
6.19 Third, there is the fact that the Respondent appears to have a long history of having engaged in abusive registration. The Complainant refers to the decision of Allianz AG and Dresdner Bank AG v MIC,WIPO Case No. D2001-1298. In that case the respondent was “MIC”, but MIC has the same address as the Respondent in this case, i.e. 15 5th Street, Closter, New Jersey, USA, and Mr. Syed Hussain was also listed as the technical contact for the Domain Name.
6.20 These were proceedings that were commenced when the Policy had been operational for less than two years and yet by that stage the Respondent already had achieved an extensive record of cybersquatting. The complainant in the Allianz proceedings listed no less than 23 cases in which either the Respondent or entities with which the Respondent was involved had been held to have engaged in abusive registrations. These were:
- Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. CPIC NET,WIPO Case No. D2000-1742
6.22 This is far from a complete list of case. A quick and far from comprehensive search of the WIPO and NAF decision databases by the Panel reveals that additional cases in which Mr. Hussain appears to have been involved include:
6.23 The Panel notes that in a number of these cases, panels have been highly critical of Mr. Hussain’s behaviour and made adverse comments as to Mr. Hussain’s honesty. For example, in Tata Sons Limited v. Tatasky International Corporation,
WIPO Case No. D2005-0783, the panel accepted the claims of the complainant that Mr. Hussain had registered the domain name in a fictitious name “in order to bring in some guise of legitimacy/justification for having registered/acquired the domain name, having realized administrative proceedings had been initiated against him.”
6.24 The Panel also suspects that these cases are the tip of the iceberg so far as Mr. Hussain’s cybersquatting activities are concerned. In this respect the Panel notes that the Respondent was prepared to transfer the Domain Name to the Complainant in return for a payment of Euros 600. This is a sum, which whilst in excess of the Respondent’s out of pocket registration expenses, is nevertheless likely to be somewhat less than the costs that a complainant will incur in terms of fees to the Center (let alone legal fees) in pursuing proceedings under the Policy. When faced with this sort of offer a rights owner, although reluctant to do any deal with a “cybersquatter” and aware that there is a broader public interest in the activities of a cybersquatter being publicised through a decision3, may find the offer commercially irresistible.
6.25 In short, the Respondent’s track record suggests that he has for a number of years engaged in the registration of domain names with a cynical disregard for the rights of others and with a view to gaining a personal financial advantage from the unauthorised exploitation of those trade mark rights. He has also shown himself willing to engage in dishonest practices in order to disguise and further his activities.
6.26 There is also the Respondent’s use of domain name Who-is privacy service. There have now been a large number of cases under the Policy in which panels held that the use of such a service can be an indicator of bad faith. For example, in Canadian Tire Corporation Limited v. CK Aspen,
WIPO Case No. DTV2007-0015, the panel stated as follows:
“6.23 The Panel also accepts that another factor that weighs in the Complainant’s favour on the issue of bad faith is the use by the Respondent of a Domain Name privacy service to hide his identity.
6.24 It is sometimes argued by those who use such services that the provision of registration and contact details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. To hide one’s contact details so as to prevent such unsolicited contact is said to be legitimate (particularly if the registrant is an individual). Therefore, it is argued that no inference of bad faith can be drawn from the use of these services. However, even if this argument were accepted by this Panel, it is difficult to see why it would justify the masking of a registrant’s identity as opposed to just its contact details. Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.
6.25 The Panel believes that its approach on the question of the use of domain name privacy services is consistent with the decision of other panels on this issue including TDS TelecommunicationsCorporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,
WIPO Case No. D2006-1620 and The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 as well as the Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service,
WIPO Case No. D2004-0108 and Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,
WIPO Case No. D2005-0642, cases cited on this issue by the Complainant.”
6.27 These comments equally apply in this case. The Respondent although an individual is engaged in commercial activity. The name of the Respondent, and not just its contact details, has been disguised and no explanation has been offered by the Respondent as to why the domain name privacy service has been used.
6.28 The Respondent has not sought to justify his behaviour save for asserting in an early email that the Domain Name “has nothing to do to [sic] any French food company”. For the reasons already given, this suggestion is risible.
6.29 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
7.1 Unusually, in this case the Complainant has not sought the transfer of the Domain Name to itself, but instead seeks an order that the Domain Name be cancelled. However, given the fact that the Domain Name incorporates the trade name of a competitor that is not a party to these proceedings, the request for cancellation is both understandable and sensible4.
7.2 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 <yakultdanone.com> be cancelled.
2 The Complainant cites Carrefour v Iwana,WIPO Case
No. D2007-1522 and Charlotte Russe Holding Inc. v. Whois ID Theft Protection,
WIPO Case No. D2007-0371 as authority for the proposition that the “use of a domain name in connection with a domain parking service is usually considered bad faith use”. However, the Panel does not understand either of these cases to be suggesting that the use of a domain name parking service of itself involves use in bad faith.
