Compagnie Gervais Danone v. Youngmi Park
Claim
Number: FA0508000546800
Complainant is Compagnie Gervais Danone (“Complainant”),
represented by Jeffrey H. Kaufman, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA
22314. Respondent is Youngmi Park (“Respondent”), Youngmi
Park, gusuri 198-2 Miyang-myeon, Anseong-si, Gyeonggi-do.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <groupedanone.com>, registered with Hangang
Systems,Inc. d/b/a DoRegi.com.
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.
Honorable
Karl V. Fink (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
August 23, 2005; the National Arbitration Forum received a hard copy of the
Complaint on August 24, 2005. The
Complaint was submitted in both Korean and English.
On
August 24, 2005, Hangang Systems, Inc. d/b/a DoRegi.com confirmed by e-mail to
the National Arbitration Forum that the <groupedanone.com> domain
name is registered with Hangang Systems, Inc. d/b/a DoRegi.com and that
Respondent is the current registrant of the name. Hangang Systems, Inc. d/b/a DoRegi.com has verified that
Respondent is bound by the Hangang Systems, Inc. d/b/a DoRegi.com 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
August 31, 2005, a Korean language Notification of Complaint and Commencement
of Administrative Proceeding (the "Commencement Notification"),
setting a deadline of September 20, 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@groupedanone.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 28, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Honorable Karl V. Fink (Ret.) 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.
Pursuant to Rule
11(a) the Panel determines that the language requirement has been satisfied
through the Korean language Complaint and Commencement Notification and, absent
a Response, determines that the remainder of the proceedings may be conducted
in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <groupedanone.com>
domain name is confusingly similar to Complainant’s DANONE mark.
2. Respondent does not have any rights or
legitimate interests in the <groupedanone.com> domain name.
3. Respondent registered and used the <groupedanone.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Compagnie Gervais Danone, through its subsidiaries is the world’s largest
producer of fresh dairy products and is tied as number one for bottled water by
volume.
Complainant and
its related companies, through its predecessors in interest, first began using
the DANONE mark in connection with fresh diary products as early as 1919.
Complainant’s
DANONE mark is also the world’s top brand, by volume, for fresh dairy products
with worldwide sales close to €7 billion in 200, spanning over 40 countries.
Complainant’s DANONE products also represent almost twenty percent of the
international market.
Complainant’s
DANONE mark has been used on labeling, packaging, point of purchase signage and
promotional literature for its products and has been prominently displayed in
supermarkets and grocery stores in various regions around the world. Complainant’s famous DANONE mark has
acquired distinctiveness and substantial secondary meaning.
Complainant is the owner of numerous
trademark and service mark registrations around the world for the mark DANONE
and marks incorporating DANONE, including the following registrations in The
Republic of Korea:
|
Mark |
Reg. No. |
Reg’n Date |
International Classes |
|
DANONE |
153421 |
3/4/1988 |
05, 29, 31 |
|
DANONE ACTIV' |
500079 |
8/24/2001 |
29 |
|
DANONE & design |
359844 |
4/15/1997 |
03 |
|
DANONE & design |
361248 |
4/30/1997 |
04 |
|
DANONE & design |
365394 |
6/16/1997 |
05 |
|
DANONE & design |
361778 |
5/9/1997 |
06 |
|
DANONE & design |
357613 |
3/7/1997 |
07 |
|
DANONE & design |
357612 |
3/7/1997 |
08 |
|
DANONE & design |
366522 |
6/25/1997 |
10 |
|
DANONE & design |
43759 |
7/11/1998 |
112 |
|
BIO DANONE |
208285 |
1/17/1991 |
29 |
|
BIO DANONE & design |
243885 |
7/16/1992 |
07 |
|
MY FIRST DANONE & design |
390335 |
1/12/1998 |
02 |
Complainant is also the owner of the
following International Registrations pursuant to the Madrid Protocol:
|
Mark |
Reg. No. |
Effective Reg. Date |
Countries |
Brief Description of
Goods/Services |
|
DANONE & design |
847,889 |
Oct. 29, 2004 |
Republic of Korea,
Singapore, Japan, China, Vietnam and others |
various food and
beverage products including meat, fish, conserved fruit, jams, jellies,
milk-derived products, coffee, tea, sugar; pharmaceuticals;
telecommunications; and others |
|
DANONE
& design |
810,981 |
Aug. 13, 2003 |
Republic of Korea,
Singapore, Vietnam, China and others |
Baby food; milk
products; ice cream; and others |
|
DANONE |
172,526 |
Oct. 31, 1953 |
Austria,
Switzerland, Germany, Algeria, Egypt, Croatia,
Hungary, Italy, and others |
yogurt and other
milk-derived products |
|
DANONE |
228,184 |
Feb. 2, 1960 |
Armenia, Bulgaria, Algeria, Hungary, Italy, Tajikistan, Uzbekistan and
others |
food products
including yogurt, milk-derived products |
|
DANONE & design |
278,887 |
Jan. 24, 1964 |
Austria, Bosnia and Herzegovina, Romania, Slovakia,
and others |
various food products
including dietary products, dessert, milk-derived products |
|
DANONE & design |
482,337 |
Jan. 23, 1984 |
Belarus, Switzerland,
Algeria, Italy, Morocco, Romania, Slovakia, Ukraine, and others |
various food and
beverage products including meat, fish, conserved fruit, jams, jellies, eggs,
milk-derived products, flour, salt, vinegar, spices, coffee, tea, sugar,
mineral water, syrup |
|
DANONE |
639,073 |
Jan. 6, 1995 |
Armenia, Bulgaria,
Belarus, Switzerland, Algeria, Croatia, Italy, Morocco, Romania, Slovakia,
Ukraine, and others |
various products such
as varnish, industrial oil, lubricants, pharmaceuticals, metal construction
materials, machines, scientific instruments, surgical instruments, musical
instruments, paper, clothing |
|
DANONE
(& design) |
649,535 |
Dec. 1, 1995 |
Armenia, Bulgaria,
Belarus, Switzerland, Germany, Algeria, Croatia, Italy, Kyrgyzstan, Morocco,
Romania, Slovakia, Ukraine, and others
|
various products such
as infant food, agricultural products, meat, fish, jams, and services such as
restaurant and hotel services |
|
DANONE
(& design) |
658,224 |
July 12, 1996 |
Albania, Austria,
Bosnia and Herzegovina, Belarus, Switzerland and others |
various food products
such as cream, yogurt, bread, cakes, biscuits |
|
DANONE
(& design) |
659,602 |
July 18, 1996 |
Albania, Bosnia and
Herzegovina, Bulgaria, Belarus, Hungary, Poland, Latvia, Romania, and others |
various food and
beverage products such as meat, fish, ham, dried fruit and vegetables,
prepared foods, cheese, coffee, sugar, flour, pizza, cakes, fruit juice |
|
DANONE
(& design) |
667,644 |
Jan. 21, 1997 |
Albania, Armenia,
Belarus, Algeria, Croatia, Italy, China, Hungary, Egypt, Romania, Latvia, and
others |
various products such
as pharmaceutical products, vetinary products, infant food, meat, dried fruit
and vegetables, cheese, bread, mustard, fruit juice |
|
DANONE
(& design) |
667,645 |
Jan. 21, 1997 |
Albania, Armenia,
Belarus, Algeria, Croatia, Italy, China, Hungary, Egypt, Romania, Latvia, and
others |
various products such
as pharmaceutical products, vetinary products, infant food, meat, dried fruit
and vegetables, cheese, bread, mustard, fruit juice |
|
DANONE
(& design) |
667,646 |
Jan. 21, 1997 |
Albania, Armenia,
Belarus, Algeria, Croatia, Italy, China, Hungary, Egypt, Romania, Latvia, and
others |
various products such
as pharmaceutical products, vetinary products, infant food, meat, dried fruit
and vegetables, cheese, bread, mustard, fruit juice |
|
DANONE
(& design) |
670,303
|
Mar. 7, 1997 |
Albania, Armenia,
Belarus, Algeria, Switzerland, Croatia, Italy, China, Hungary, Egypt,
Romania, Latvia, and others |
various products such
as chemical preservatives, salt, synthetic sweeteners, gelatin for industrial
use |
|
DANONE |
750,755 |
Jan. 29, 2001 |
Algeria, Armenia,
Azerbaijan, China, Egypt, Hungary, Mongolia, Slovenia, Slovakia, Lithuania,
Norway and others |
various services such
as telecommunications, press and information agencies, broadcasting of
television and radio programs, cable television broadcasting, e-mail |
Complainant is
also the owner of the following U.S. federal trademark registrations:
|
Mark |
Reg. No. |
Abbreviated Good/Services |
Reg’n Date |
|
DANONE & Design |
2924636 |
baby food;
dietetic foods, drinks, and substances for medical use; milk; diary products;
edible flavored ices; frozen yogurt and others |
February 8, 2005 |
|
DANONE & Design |
2827606 |
mineral and
non-mineral waters; lemonades; soft drinks |
March 30, 2004 |
|
DANONE ACTIV’ |
2951239 |
meat; fish;
soups; yogurts; coffee; tea; frozen yogurt; frozen custards; pudding; sorbet;
frozen milk products; fruit and vegetable juice; drinks comprising lactic
ferments and alcohol- free drinks comprising lactic ferments and others |
May 17, 2005 |
|
DANONE ACTIV' & design |
2838349 |
milk, mousses;
frozen milk products; frozen confections; ice cream; frozen creams; fruit-
and vegetable-based drinks; alcoholized and alcohol-free drinks comprising
lactic ferments, namely, drinkable yogurt and others |
May 4, 2004 |
|
DANONE CREME DE YAOURT |
2839555 |
desserts,
namely, milky desserts, creams and dessert creams; dairy products, namely,
yogurts |
May 11, 2004 |
|
DANONE ACTIMEL & design |
2803943 |
baby food
including lactic formulas; fermented milk products, namely, yogurt-based
beverages; edible ices; frozen yogurt; flat or sparkling water; alcohol-free
beverages composed, in minority, of bacilli and others |
January 13, 2004 |
|
DANONE LA SELECCION & design |
2676012 |
preserved, dried and cooked fruits and vegetables; milk;
cheeses; drinks consisting primarily of milk or dairy products; edible oils;
non-alcoholic drinks comprising lactic ferment for use as a milk substitute;
frozen milk products; coffee-based beverages; cereal preparations; ready-made
dishes consisting primarily of pastry; cream dessert; pharmaceutical
products; dietetic products for medicinal purposes; still or aerated mineral
or non-mineral drinking waters; fruit-based drinks; concentrates, powders and
syrups for making soft drinks and fruit drinks and others |
January 21, 2003 |
Respondent
registered the <groupedanone.com> domain name on April 11,
2000. Respondent’s domain name resolves
to a website featuring links to third-party websites, such as Nestlé and Maeil,
which offer goods and services that compete with Complainant’s goods and
services.
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
asserts that it has established rights in the DANONE mark through its Korean
and international trademark registrations pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
("Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark."); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) ("Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.").
Moreover,
Complainant alleges that Respondent’s <groupedanone.com> domain
name is confusingly similar to Complainant's DANONE mark because the domain
name incorporates the mark in its entirety and adds the common word “groupe” to
Complainant's mark. Such a change is
not enough to overcome the confusingly similar aspects of Respondent's domain
name pursuant to Policy ¶ 4(a)(i). See
Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7,
2000) (finding that a domain name which is phonetically identical to the complainant's
mark satisfies ¶ 4(a)(i) of the Policy); see also VeriSign, Inc. v. VeneSign
C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and
spelling between the domain name <venesign.com> and the complainant's
mark, VERISIGN, are so close that confusion can arise in the mind of the
consumer); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000)
(finding that the domain name <yawho.com> is confusingly similar to the
complainant's YAHOO mark).
Furthermore, the
addition of a generic top-level domain does not negate the confusingly similar
aspects of Respondent's domain name pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant's mark because the generic top-level domain (gTLD) ".com"
after the name POMELLATO is not relevant); 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 Policy ¶ 4(a)(i) has been satisfied.
Respondent
neither has rights or legitimate interests in the <groupedanone.com> domain
name nor claims to have them. When a
complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent's failure to respond to the Complaint, the Panel infers that
Respondent does not have 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 does not have 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 or 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 does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Moreover,
Respondent is not commonly known by the <groupedanone.com> domain
name. Thus, the Panel concludes 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 respondent
was not commonly known by the mark and never applied for a license or
permission from 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 respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no
rights or legitimate interests in domain names because it is not commonly known
by the complainant's marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
Furthermore,
Respondent is using the <groupedanone.com> domain name to operate
a website featuring commercial links to various third-party websites, through
which Respondent presumably receives referral fees. Thus, the Panel finds that Respondent’s use of a domain name that
is confusingly similar to Complainant’s mark to divert Internet users to
third-party websites for Respondent’s own commercial gain does not constitute a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s
diversionary use of complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to competitors of
complainant, was not a bona fide
offering of goods or services); see also
Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona
fide offering of goods or services); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
commercial websites. Respondent
registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv)
as Respondent is using the <groupedanone.com> domain name to intentionally attract, for
commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also 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).
Furthermore,
Respondent has used the <groupedanone.com> domain name, which
contains Complainant’s DANONE mark, to redirect Internet users to a website
featuring links to websites that sell goods and services that compete with
Complainant’s business. This suggests
that Respondent had actual knowledge of Complainant’s rights in the mark when
it registered the domain name and chose the disputed domain name based on the
goodwill Complainant has acquired in its DANONE mark. Furthermore, Complainant’s registration of the DANONE mark in Korea
and various other countries, bestows upon Respondent constructive notice of
Complainant’s rights in the mark.
Respondent’s registration of a domain name containing Complainant’s mark
in spite of Respondent’s actual or constructive knowledge of Complainant’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding
that because the link between the complainant’s mark and the content advertised
on the respondent’s website was obvious, the respondent “must have known about
the Complainant’s mark when it registered the subject domain name”); 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 Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <groupedanone.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated:
October 3, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page