Compagnie Gervais Danone and The Dannon Company, Inc. v. Cenal.com Ltd d/b/a Cenal com
Claim Number: FA1001001301882
Complainant is Compagnie Gervais Danone and The Dannon
Company, Inc. (“Complainant”), represented
by Nathalie Dreyfus of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <springbydannon.com>, registered with Black Ice Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 7, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
On January 12, 2010, Black Ice Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <springbydannon.com> domain name is registered with Black Ice Domains, Inc and that Respondent is the current registrant of the name. Black Ice Domains, Inc verified that Respondent is bound by the Black Ice Domains, Inc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster postmaster@springbydannon.com. Also on January 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be cancelled.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <springbydannon.com>, is confusingly similar to Complainant’s DANNON mark.
2. Respondent has no rights to or legitimate interests in the <springbydannon.com> domain name.
3. Respondent registered and used the <springbydannon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Compagnie Gervais Danone and The Dannon Company, Inc., join as Complainant. Complainant is a leading worldwide provider of fresh dairy products, bottled water, baby food and medical nutrition. Complainant owns domestic trademark registrations with the United States Patent and Trademark Office, as well as international trademark registrations, for the DANNON and related marks (“USPTO”) (e.g., U.S. Reg. No. 1,265,165 issued January 24, 1984).
Respondent, Cenal.com Ltd d/b/a
Cenal com, registered the <springbydannon.com>
domain name April 22, 2008. The disputed
domain name redirects Internet users to a directory-style page featuring links
to adult-oriented material and other commercial links. The website also displays a notice that
“[t]his domain may be for sale.”
Respondent is a serial cybersquatter who has been the respondent in at least two other UDRP proceedings in which the respective domain names were transferred to the respective complainants. See, e.g., M. Shanken Communications, Inc. v. Cenal.com, FA 508512 (Nat. Arb. Forum Aug. 19, 2005); see also Insure & Go Ins. Servs. Ltd. v. Cenal.com, FA 520056 (Nat. Arb. Forum Sept. 1, 2005).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant provided evidence of its trademark registrations
for the DANNON and related marks (e.g.,
Reg. No. 1,265,165 issued January 24, 1984).
The Panel finds that these trademark registrations with the USPTO and
other international trademark authorities sufficiently establish Complainant’s
rights in the DANNON marks for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v.
Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that
the complainants had established rights in marks where the marks were
registered with a trademark authority); see
also Renaissance Hotel Holdings, Inc. v.
Renaissance
Complainant contends that the
disputed domain name <springbydannon.com>
is confusingly similar to Complainant’s DANNON mark. The disputed domain name incorporates the
Complainant’s mark in its entirety and then subsequently adds the generic terms
“spring” and “by,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the supplemental generic
terms fail to distinguish the disputed domain name from Complainant’s mark,
especially as the disputed domain contains the Complainant’s complete mark. See Am.
Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004)
(finding the respondent’s <amextravel.com> domain name confusingly
similar to Complainant’s AMEX mark because the “mere addition of a generic or
descriptive word to a registered mark does not negate” a finding of confusing
similarity under Policy ¶ 4(a)(i)); see also
Warner Bros. Entm’t Inc. v.
Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic
terms to Complainant’s HARRY POTTER mark in the respondent’s
<shop4harrypotter.com> and <shopforharrypotter.com> domain names
failed to alleviate the confusing similarity between the mark and the domain
names). The addition of the gTLD does
not differentiate the disputed domain name and the Complainant’s mark as a gTLD
is a required element of domain name.
Accordingly, the Panel finds the presence of the gTLD “.com” is
irrelevant to a Policy ¶ 4(a)(i) analysis. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb.
Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional
element required of every domain name, the <shamu.org> domain name is
identical to the SHAMU mark under a Policy ¶ 4(a)(i).”);
see also Jerry Damson, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(c), Complainant has the initial burden of establishing a prima facie case. After Complainant has demonstrated that a prima facie case exists, the burden shifts to Respondent to show that it has rights and legitimate interests in the disputed domain name. The Panel finds that Complainant sufficiently established a prima facie in these proceedings. Since Respondent failed to respond to Complainant’s allegations, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Banco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL”). This Panel, however, elects to consider the submitted evidence to determine if the record suggests that Respondent has any rights or legitimate interests in the disputed domain name according to the factors of Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by
the disputed domain. The WHOIS
information for the disputed domain name identifies the registrant as “Cenal.com
Ltd.” This identification of Respondent
under a name distinct from the disputed domain name demonstrates that
Respondent is not commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii).
See
Respondent’s disputed domain name resolves to a website with
a singular function of displaying various links to adult-oriented materials and
other commercial links. The Panel finds
Respondent’s use of the website merely to provide links to third-party products
and services unrelated to Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iii). See Bank
of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11,
2006) (finding that the respondent’s use of a domain name to redirect Internet
users to websites unrelated to a complainant’s mark is not a bona fide
use under Policy ¶ 4(c)(i)); see also
Constellation Wines
Respondent also advertises on its website that the “domain name may be for sale.” The Panel finds that this statement by Respondent shows a willingness to part with the domain name and is additional evidence of Respondent’s lack of rights and legitimate interests. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
Complainant presents evidence that the website resolving from registrant’s disputed domain name explicitly displays that the disputed domain name is for sale. The Panel finds that this demonstrates Respondent’s primary intent to sell, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS registration information contained the words, “This is [sic] domain name is for sale”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent has engaged in a pattern of cybersquatting as
evidenced by at least two adverse UDRP proceedings against Respondent. See, e.g., M. Shanken Communications, Inc. v. Cenal.com, FA 508512 (Nat. Arb.
Forum Aug. 19, 2005); see also Insure & Go Ins. Servs. Ltd. v.
Cenal.com, FA 520056 (Nat. Arb. Forum Sept. 1, 2005). Due to Respondent’s prior history of
registering domain names containing third-party marks, as evidenced by prior
UDRP proceedings, the Panel finds that this pattern of use constitutes bad
faith registration and use under Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Respondent’s incorporation of
Complainants’ DANNON mark is clearly intended to attract Internet users seeking
Complainants’ products. When the
internet users are diverted to Respondent’s website and click on any of the
third-party commercial links displayed, the Respondent presumably receives
compensation in the form of “click-through” fees. The Panel finds that Respondent’s efforts to
mislead Internet users and attract Complainant’s customers for Respondent’s own
commercial gain demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21,
2006) (“Respondent is using the disputed domain name to operate a website which
features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. Such use for Respondent’s
own commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).”).
Respondent is using the disputed domain name to redirect unsuspecting Internet users seeking Complainant’s products, likely bottled water, to a website containing links to adult-oriented material. Respondent’s use of Complainant’s mark in the disputed domain name is likely to create traffic for Respondent’s site and subsequently tarnish Complainants’ reputation due to the association between Complainants’ mark and the adult-oriented links on Respondent’s website. The Panel finds that this use of the disputed domain name supports findings that Respondent’s registration and use of the domain name was in bad faith under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to adult-oriented websites).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <springbydannon.com> domain name be CANCELLED.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 10, 2010.
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