Compagnie Gervais Danone v. Duxpoint and Alejandro Gomez
Case No. D2008-1799
1. The Parties
Complainant is Compagnie Gervais Danone, of Paris, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Duxpoint and Alejandro Gomez, of Aguascalientes, Distrito Federal, Mexico.
2. The Domain Name and Registrar
The disputed domain name <danonino.org> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On November 24, 2008, Wild West Domains, Inc. 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 Complainant on December 1, 2008 providing the registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 2, 2008. 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 Respondent of the Complaint, and the proceedings commenced on December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 31, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on January 22, 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
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% market share.
Complainant owns numerous trademarks registered around the world and specifically in Mexico, among which are the following:
DANONINO, No. 245.078 registered July 06, 2004 (renewal) in classes 2, 5, 29, 30, 31 and 32;
Complainant also holds International trademark registration for DANONINO, No. 764.513 registered April 27, 2001 in classes 29, 30 and 32.
Complainant also owns several domain names which include the trademark DANONINO: <danonino.com>, <danonino.mobi>, <danonino.net>, <danonino.info>, <danonino.eu>, <danonino.fr>, <danonino.dk>, <danonino.no>, <danonino.ch>, <danonino.cl>, <danonino.co.uk>, <danonino.it> <danonino.ru>, <danonino.us> and <danonino.com.mx>.
The disputed domain name was registered on August 10, 2004.
The website to which the disputed domain name resolves displays, in Spanish, computer programming tips, blogs and soccer-related commentary.1 The website also displays Google advertisements and other links to third-party websites, none of which appear to be related Complainant's products or brands.
5. Parties' Contentions
A. Complainant
I. Correspondence between the Parties
Complainant avers that it sent a demand letter on August 27, 2008 based on its trademark rights, asking Respondent to transfer the disputed domain name.2 On August 28, 2008, Complainant continues, Respondent replied to Complainant's demand letter, denying bad faith and alleging that Respondent had a legitimate interest in the domain name <danonino.org> because Respondent claimed that “Danonino” is his nickname. In the reply, however, Respondent also offered to sell the disputed domain name to Complainant for US$ 200,000.
Complainant represents that it replied to Respondent's August 28 email on September 17, 2008; in this second email to Respondent, Complainant requested transfer of the domain name for free, highlighting the fact that the trademark DANONINO is well-known in Mexico and around the world and arguing that it was impossible that Respondent registered the disputed domain name in ignorance of Complainant's marks. By return email of September 18, 2008, Respondent reiterated his offer to sell the domain name for US$ 200,000, insisting that his nickname is “Danonino.”
II. Legal Contentions
Noting that UDRP panels disregard TLD suffixes in determining confusing similarity of domain names to a complainant's trademarks, Complainant contends that it possesses a distinctive mark which has been extensively used in commerce. Thus “it is quite obvious,” Complainant avers, “that Respondent targeted Complainant's mark in choosing the disputed domain name.” Complainant alleges:
“Respondent has therefore created a likelihood of confusion with Complainant's mark. It is likely that the public and Internet users are misled or confused thinking that the disputed domain name, which is identical to Complainant's mark, is associated with Complainant.
The disputed domain name <danonino.org> should consequently be regarded as confusingly similar to the numerous trademarks owned by Complainant.”
Addressing whether Respondent has rights or legitimate interests in the disputed domain name, Complainant avers that Respondent is not affiliated with Complainant and that Respondent was not authorized to register and use Complainant's DANONINO trademark. Pointing to wide usage of the DANONINO mark, Complainant avers that Complainant's rights in the DANONINO mark predate Respondent's registration of <danonino.org> by a considerable length of time.
Complainant alleges that Respondent has not proved that it holds prior rights or that Respondent has any legitimate interest in the disputed domain name.
In respect of Respondent's demand letter response that he chose the disputed domain name because it is his nickname, Complainant cites several cases for the proposition that the defense under Policy paragraph 4(c)(ii) that a respondent is commonly known by the disputed domain name requires a respondent to produce solid evidence. See e.g., Banco Espírito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890;Red Bull GmbH v. Harold Gutch,
WIPO Case No. D2000-0766; DIMC Inc., & The Sherwin-Williams Company v. Mr. Q. Phan,
WIPO Case No. D2000-1519.
As more specifically described in the Panel's decision and findings below, Complainant also introduces into evidence statements made in commentary posted on Respondent's website. Complainant contends that these statements show that Respondent both knew of Complainant's DANONINO mark and that Respondent's real nickname is “Dano,” and not, as claimed by Respondent, “Danonino.”3
Complainant also states that “it is very unlikely that the term ‘DANONINO' has a special meaning in [E]nglish, in [S]panish or in any other language and is rarely used as a nickname.”
Addressing whether Respondent registered and used the disputed domain name in bad faith, Complainant relies upon the well-known status of its marks, which existed before registration of the disputed domain name. Complainant alleges that Respondent's possible failure to conduct simple web searches to learn of Complainant's rights by itself amounts to bad faith registration. Further, Complainant points to statements on Respondent's website admitting that Respondent knew of Complainant's trademark.
Complainant contends that Respondent's refusal to transfer the disputed domain name and Respondent's offer to sell the domain name to Complainant for US$ 200,000 proves bad faith use. Further, Complainant contends that bad faith is established because Respondent registered and used the disputed domain name intending to take advantage of Complainant's well-known marks to generate click-through revenues (employing sponsored advertisements on the website), for his own commercial gain.
On this basis, Complainant seeks transfer of the disputed domain name.
B. Respondent
Respondent did not reply to Complainant's contentions. As described herein, however, Alejandro Gomez, Respondent's administrative and technical contact, wrote to Complainant in response to Complainant's correspondence requesting transfer.
6. Discussion and Findings
A. Respondent's Identity and the Statements and Conduct of Respondent's Contact
Despite filing an amended Complaint, Complainant did not in the allegations of its amended complaint distinguish between Mr. Alejandro Gomez (Respondent in the original Complaint) and the Respondent in the amended complaint, Duxpoint. In this decision, the Panel will also treat Mr. Gomez and the amended Respondent Duxpoint interchangeably, for reasons explained below.
The individual originally listed as registrant on the whois record was “Alejandro Gomez,” of the organization “Duxpoint.”4 Despite informing the Center that the registrant is not Mr. Gomez but instead “Duxpoint,” the registrar, Wild West Domains, Inc., still identifies Mr. Gomez at Duxpoint as administrative and technical contact, and the address listed for Mr. Gomez and for Duxpoint are the same. Moreover, the Center's courier package notifying Respondent of these proceedings was accepted and signed for on December 15, 2008 by Mr. Gomez.
The Panel has found that Mr. Gomez is also listed as the only individual representative for the Duxpoint Company on the “www.duxpoint.com” website.
Before initiating this proceeding, Complainant sent the correspondence discussed in this decision to Mr. Gomez, who responded to the demand letters and appeared to state that the things on the website to which the disputed domain name routed were “personal[].” It was also the essence of Mr. Gomez' defense against complying with Complainant's demand letters that the domain name was based on his personal nickname.
In light of these circumstances, and in the absence of a response to the Complaint, the Panel determines that no prejudice will result to Respondent in this proceeding by treating statements and conduct of Mr. Gomez as having been made on behalf of Respondent Duxpoint.
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 reasonable 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 <danonino.org> is identical to Complainant's DANONINO trademark.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; 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.
Disregarding the “.org” suffix, the Panel finds disputed domain name is identical to Complainant's DANONINO trademark. The requirements of paragraph 4(a)(i) of the Policy are, therefore, fulfilled.
D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
Paragraph 4(c) of 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) 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.
A complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. See 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 and Respondent was not authorized by Complainant to register and use Complainant's trademark. In the absence of a response by Respondent, the Panel accepts these allegations as true.
Complainant also alleges that Respondent is earning revenue through sponsored link advertising by using Complainant's trademarks. By diverting traffic to third parties using Google and other third-party link advertisements, the Panel finds that Respondent is using Complainant's marks for its own commercial purposes. Deutsche Telekom AG v. Thanh Nguyen, Thanh Nguyen Mobile,WIPO Case No. DBZ2008-0002 (quoting The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit […] in consideration of directing traffic to that site”)); see Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
Therefore, in addition to being unauthorized to use Complainant's trademark, the Panel finds that Respondent is also not making a noncommercial use of the disputed domain name. Whether Respondent is commonly known by the disputed domain name and therefore may have a rights or a legitimate interest presents a more involved question.
In replying to Complainant's demand letters, Respondent insisted that he chose the disputed domain name because it was his own nickname. Complainant has introduced evidence suggesting that “Dano,” not “Daninio,” is Respondent's nickname. The evidence consists of the following quotations from postings in a blog by Respondent and others on the website to which the disputed domain name routes.
“Indeed, on October 08, 2007, ‘Bleend' wrote in ‘Comentarios para Bienvenidos':
‘Felicidades Dano. U_U
‘Err Por cierto, Sabias que “danonino” es una marca de “yogurt”? XD'
“([Complainant's] Translation: Congratulations Dano. Eh, do you know that ‘danonino' is a trademark for ‘yoghurt‘?) (Translation: annex 23).
“And “Dano” answered:
“sí lo sé, lo que pasa es que dano (dot) com y derivados, ya estaban registrados, y algunos amigos me dicen danonino, como segundo apodo. Por eso me animé a comprarlo. Además los del yoghurt me copiaron. Lol”
“([Complainant's] Translation: Yes I know, what happens is that dano (dot) com and its derivatives were already registered, and some friends call me danonino as a second nickname. So I was encouraged to buy it. Besides, it is actually the people who own the yoghurts who copied me. Lol') (Translation: annex 23).”5
On the website, as noted by Complainant, Respondent is indeed frequently referred to as “Dano,” and the Panel infers from the quoted statements that “Dano” is his first nickname. Consequently, based on the evidence and the Panel's findings above, the Panel determines that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests.6
In the blog excerpted above, Respondent apparently wrote that some friends have also called him “Danonino,” as a second nickname. This is the only evidence before the Panel supporting Respondent's claims in the responses to Complainant's demand letters that the disputed domain name was based on Mr. Gomez' nickname.
To invoke the circumstances referred to in Policy paragraph 4(c)(ii), however, stronger evidence must be adduced to establish that a respondent was “commonly known” by the alleged nickname. E.g., NAF Case No. FA94807, Technology Properties, Inc. v. Design Shack (respondent's owner Shackleton produced evidence of being known as “Shack” throughout his life and ran business under that name); Gordon Sumner, p/k/a Sting v Michael Urvan,
WIPO Case No. D2000-0596 (use of “sting” for Internet gaming for eight years, shown in exhibits and affidavits, insufficient evidence to support conclusion that respondent was commonly known by that nickname).
The Panel agrees with Complainant's reading of the cases that the Policy requires that proof of being commonly known by a disputed domain name must be substantial, and that to sustain such a defense without substantial proof would seriously undermine the Policy. Espírito Santo S.A. v. Bancovic, supra, cited with approval in Sanderling Pty Ltd, trading as Thimblelady v. Roxanne International, WIPO Case No. D2007-0385; Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, WIPO Case No. D2008-1025.
The Panel concludes that Respondent, refraining from entering a Response, has failed (1) to provide the substantial proof required to establish that “Danonino” was his nickname, to prove he was commonly known by the disputed domain name under Policy paragraph 4(c)(ii), or (2) to rebut Complainant's prima facie case.
The Panel finds therefore that the record in this case does not support the existence of “rights or legitimate interests” in Respondent's use of the disputed 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, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Based on the statements on the website quoted above, Respondent was obviously aware of Complainant's trademark DANONINO as of October 2007. There is no direct evidence whether he was aware at the time of registration in 2004. The Panel finds however that it is a reasonable inference that Respondent was aware at the time of registration, given the existence of the DANONINO trademark and substantial presence of the brand in Mexico well before the time of registration. Thus, the Panel finds that the circumstances establish registration in bad faith.7
The Panel further finds that Respondent's registration and use of the disputed domain name was in bad faith based upon the two written offers to sell the disputed domain name to Complainant for US $ 200,000. Such a sum clearly would exceed Respondent's out-of- pocket expenses. Policy paragraph 4(b)(i).
Having found that the overall circumstances establish Respondent's bad-faith registration and use, the Panel concludes that the requirements of Policy paragraph 4(a)(iii) are fulfilled.
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, <danonino.org> be transferred to Complainant.
“[I]t is clear from the printouts of the Internet website <danonino.org> that DANONINO is not the nickname of Alejandro Gomez. In all the comments in the ‘Welcome' category (‘18 comentarios para Bienvenidos'), Alejandro Gomez has answered to messages using the nickname DANO (annex 20). Furthermore, in the same category, Respondent explains that he reserved the domain name <danonino.org> because the domain name corresponding to his real nickname DANO was already registered. Consequently, Respondent cannot provide evidence to allege that he selected the domain name based on his nickname.” (emphasis omitted).
4 Annex 1 to the Complaint (screen print of whois record dated November 17, 2008). Indeed Mr. Gomez is at the time of this writing still listed by online whois search services as registrant of the disputed domain name. See, e.g.,"http://whois.domaintools.com/danonino.org”.
5 While Complainant's translations into English of statements on Respondent's Spanish-language website are not precise, the Panel finds that for present purposes the translations are sufficiently close to bear upon the points for which Complainant presents them.
6 The Panel does not, however, accept Complainant's unsupported assertion that “Danonino” is unlikely to be used in Spanish as a nickname.
7 In making this finding, the Panel refrains from inferring the existence of bad faith registration from the alleged failure of Respondent to conduct adequate diligence in discovering Complainant's trademark rights, as urged by Complainant. It is indeed Respondent's obligation under Policy paragraph 2 to avoid trammelling the rights of others. However, in this Panel's view, the finding of bad faith that arises from a respondent's lack of diligence in searching names before registration involves an inference normally reserved by UDRP panels for cases in which the respondents are professional domainers. See, e.g., The Fragrance Foundation Inc. v. Texas International Property Associates,
WIPO Case No. D2008-0982 (also discussing other cases). While it appears that Respondent may own over 40 domain name registrations, Complainant has not attempted to show that Respondent is a professional domainer or serial cybersquatter.
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