The Dannon Company, Inc. v. S.A. Inc.
Claim
Number: FA0505000485800
Complainant is The Dannon Company, Inc. (“Complainant”),
represented by Jeffrey H. Kaufman, of Oblon, Spivak, McClelland, Maier and Neustadt, P.C., 1940 Duke Street, Alexandria, VA
22314. Respondent is S.A. Inc. (“Respondent”), 4300 South
U.S. Highway 1, Suite 168, Jupiter, FL 33477.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dannonyogurt.com>, registered with Moniker
Online Services, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 25, 2005.
On
May 25, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <dannonyogurt.com> is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, 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
May 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 16, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@dannonyogurt.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 22, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." 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 transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dannonyogurt.com>
domain name is confusingly similar to Complainant’s DANNON mark.
2. Respondent does not have any rights or
legitimate interests in the <dannonyogurt.com> domain name.
3. Respondent registered and used the <dannonyogurt.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The Dannon Company, Inc., is a wholly-owned
subsidiary of Groupe Danone of Paris, France, which is the number one producer
of fresh dairy products, excluding milk, in the world and in the United
States. In fact, Complainant has been
producing and selling yogurt in the United States under its DANNON mark since
at least as early as 1942. Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for marks incorporating the DANNON mark (including
Reg. No. 1,265,165 issued January 24, 1984; Reg. No. 1,286,181 issued July 17,
1984; and Reg. No. 1,867,735 issued December 13, 1994).
Complainant uses its DANNON mark on labeling, packaging,
point-of-purchase signage, promotional literature and also at Complainant’s
website at the <dannon.com> domain name.
In addition, Complainant’s products are offered for sale through the
websites of major supermarkets. In 2003
and 2004, Complainant’s promotional and advertising expenditures in the United
States for the DANNON mark were over $100 million per year.
Respondent registered the <dannonyogurt.com> domain name on December 29, 2003. The domain name resolves to a website that
displays search results for various terms as well as a generic search
engine. The source code indicates that
the website is a template of HitFarm.com, an Internet search and web traffic
service through which Respondent presumably earns revenue. Additionally, Complainant has not licensed
or authorized Respondent to use its DANNON mark in any way.
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."
In view of
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
draw such inferences it 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 that Complainant must 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 has
presented a prima facie case of rights in the DANNON mark through its
registration of the mark with the USPTO.
Without any response from Respondent to contest Complainant’s rights,
the Panel finds that Complainant has established rights in the mark for the
purposes of Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive and that respondent has the burden of refuting this assumption).
Under the
Policy, adding a generic or descriptive mark to a complainant’s registered mark
does not create a domain name that is distinct from a complainant’s mark. In this instance, the <dannonyogurt.com>
domain name includes Complainant’s DANNON mark along with a generic or
descriptive word that is clearly related to Complainant’s business and the
generic top-level domain (“gTLD”) “.com.”
Therefore, the Panel finds that the disputed domain name is confusingly
similar to a mark in which Complainant has rights in satisfaction of Policy ¶
4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combined the complainant’s mark
with a generic term that had an obvious relationship to the complainant’s
business); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Although the
initial burden of establishing that Respondent lacks rights and legitimate
interests in the disputed domain name lies with Complainant, the burden shifts
to Respondent once Complainant has made a prima facie case. Respondent can then establish rights or
legitimate interests in accordance with one of the three safe harbor provisions
under Policy ¶ 4(c). The Panel finds
that Complainant has met its burden and that, due to Respondent’s failure to
respond, Respondent has provided no arguments to refute Complainant’s
contentions. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the respondent to provide credible evidence
that substantiates its claim of rights and legitimate interests in the domain
name); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate
interest does exist); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the
respondent had no rights or legitimate interests in the domain name because the
respondent never submitted a response or provided the panel with evidence to
suggest otherwise).
Complainant
asserts that Respondent is not commonly known by the <dannonyogurt.com>
domain name and that Complainant has not authorized or licensed Respondent to
use any version of its DANNON mark.
Respondent has not provided any evidence to contest Complainant’s
assertions, which leaves the Panel with nothing tending to show that Respondent
is commonly known by the disputed domain name.
Thus, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because the respondent was not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
Respondent is
using the <dannonyogurt.com> domain name to mislead Internet users
interested in Complainant’s products and services to Respondent’s directory
website, where Respondent presumably earns pay-per-click fees for diverting
Internet users to third-party websites.
Using a confusingly similar version of Complainant’s mark to divert
Internet users to Respondent’s commercial website for Respondent’s benefit is
not considered a bona fide offering of goods or services under Policy ¶
4(c)(i). Furthermore, such a use by
Respondent to benefit from the goodwill associated with Complainant’s mark is
not a use in association with a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also Black & Decker Corp. v. Clinical Evaluations,
FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of
the disputed domain name to redirect Internet users to commercial websites,
unrelated to the complainant and presumably with the purpose of earning a
commission or pay-per-click referral fee did not evidence rights or legitimate
interests in the domain name).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <dannonyogurt.com> domain name, which includes
Complainant’s famous DANNON mark in its entirety, to create a likelihood of
confusion as to Complainant’s affiliation with Respondent’s commercial
website. Through this likelihood of
confusion, Respondent is attempting to attract Internet users who are searching
for Complainant’s products and services to Respondent’s website for
Respondent’s commercial benefit.
Respondent’s activities are evidence of bad faith registration and use
under Policy ¶ 4(c)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website).
A respondent’s
registration of a domain name with actual or constructive knowledge of
another’s rights in a mark included in the domain name is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). Complainant’s registration of the DANNON mark with the USPTO,
issued prior to Respondent’s registration of the <dannonyogurt.com>
domain name, bestows upon Respondent constructive notice of Complainant’s
rights in the mark. Furthermore,
Respondent’s registration of a mark that includes Complainant’s mark in its
entirety accompanied by a word that bears an obvious relation to Complainant’s
business suggests that Respondent, in fact, had actual knowledge of
Complainant’s rights in the DANNON mark.
Therefore, the Panel finds that Respondent had actual or constructive
knowledge of Complainant’s rights in the mark when it registered the domain
name and that this is evidence of bad faith registration and use under the
Policy. See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
The Panel finds
that Complainant has satisfied 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 <dannonyogurt.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 5, 2005
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