Compagnie Gervais Danone v. Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2109001962893
Complainant: Compagnie Gervais Danone of Paris, France.
Complainant Representative:
Complainant Representative: Eversheds Sutherland (France) LLP of Paris, France.
Respondent: Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf of Reykjavik, Capital Region, International, IS.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil-Jimenez, as Examiner.
Complainant submitted: September 9, 2021
Commencement: September 15, 2021
Default Date: September 30, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The case at hand refers to the domain name <mizone.xyz>.
In accordance with the provisions of URS, Complainant claims
(i) that the domain name <mizone.xyz> is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that The Registrant has no legitimate right or interest to the domain name, and
(iii) that the domain name was registered and is being used in bad faith:
Ÿ By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Complainant states that Mizone is the pioneer of healthy drinks in China and a leading vitamin drinks brand in Asia-Pacific. Mizone has acquired substantial renown and visibility, including online, and “mizone” is overwhelmingly associated with Complainant as a search on Google shows. Complainant owns the trademark MIZONE and has continuously used it in the Chinese market for more than 18 years. It is therefore inconceivable, as stated in the Complaint, that Registrant would have been unaware of it prior to registering <mizone.xyz>. The fact that the Registrant chose to reproduce the Trademark in its entirety in <mizone.xyz> shows that it could not have been registered for any reason other than to seek to profit from the Trademark’s consumer reputation and goodwill.
Moreover, it is argued that Complainant has no business relationship with Registrant and has not licensed or otherwise permitted Registrant to use the Trademark or to apply for any domain name incorporating the Trademark. In addition, the disputed domain name is used to redirect Internet users to a number of commercial websites, including pornographic websites, which constitutes a very strong indication of bad faith registration and use “because it show[s] respondent’s main purpose was to create a likelihood of confusion (…) for commercial gain.”
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
The process contains documentation which demonstrates that Complainant is the owner of Chinese registration N° 3187101 for the trademark MIZONE dated November 7, 2003 and in force until November 6, 2023.
The process contains as well evidence that demonstrates that Complainant’s trademark MIZONE is in use. Documentation was submitted evidencing that products showing the MIZONE trademark are advertised and offered to consumers on the owner’s website www.danone.com, and consequently, the Examiner considers that the requirement of demonstrating trademark rights and the usage thereof, has been satisfied.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Examiner concurs with the Complainant in that the disputed domain name trademark identically reproduces the registered trademark MIZONE. Moreover the extension “xyz” does not add any distinctiveness to the disputed domain, which in any case will be recognized by internet users by the distinctive name MIZONE.
It is a fact that since the disputed domain is conformed by a word that is identical to a trademark registered and used by a third party who did not grant any license or permission to use it, Respondent could not have used the domain name without infringing the Complainant’s intellectual property rights on the trademark “MIZONE”, and no legitimate rights could be claimed from an infringing trademark use.
Lastly, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
In the present case, the disputed domain name consists of the word “MIZONE”, which happens to exactly reproduce the registered trademark “MIZONE” owned by the Complainant. The identical reproduction of a distinctive trademark within a domain name is definitely not the result of casualty, and aside of making evident that the registrant is acting in bad faith, it does suggest an intention to mislead those who have access to the domain name by making them believe that said domain and website belong as well to the owner of the registered trademark.
As demonstrated by Complainant, the disputed domain name <MIZONE.XYZ> is used to redirect Internet users to a number of commercial websites including pornographic websites, a fact that significantly worsens the scenario inasmuch as any association of said websites with the trademark MIZONE would no doubt lead to the discredit of a trademark that covers and is used to identify healthy and vitamin drinks. No extended explanations are required to evidence the damage that a situation like this may cause to a trademark.
Consequently, the Examiner considers that it is a fact that the domain name <mizone.xyz> was registered and is being used in bad faith, intentionally attempting to attract for commercial gain Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. It is clear thus that the aim of the registration was to take advantage of the confusion between the domain name and Complainant’s rights, this fact evidencing bad faith on the part of the Respondent in the present case.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration:
<mizone.xyz>
Luz Helena Villamil Jimenez, Examiner
Dated: October 5, 2021
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