The Dannon Company, Inc. v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1608001686478
Complainant is The Dannon Company, Inc. (“Complainant”), represented by Ann K. Ford of DLA Piper LLP (US), District of Columbia. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dannonyogurt.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2016; the Forum received payment on August 1, 2016.
On August 7, 2016, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <dannonyogurt.com> domain name is/are registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 2016 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@dannonyogurt.com. Also on August 5, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant has registered the DANNON trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,027,744, registered Dec. 31, 1996). The mark is used in connection with the sale of mineral water, spring water, drinking water, and yogurt. The <dannonyogurt.com> domain name is confusingly similar to the DANNON trademark because the domain name contains the entire mark and makes only minor alterations such as adding the descriptive term “yogurt” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Furthermore, Respondent is not actively using the domain name, and thus cannot be making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business and attempting to commercially profit from a likelihood of confusion. Additionally, Respondent has failed to actively use the disputed domain name. Lastly, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <dannonyogurt.com>, was registered on July 22, 2015.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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."
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.
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(f), 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 (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.”).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark DANNON. Complainant has adequately plead it rights and interests in and to that trademark. Respondent arrives at the disputed domain name by merely taking the Complainant’s trademark and appending the generic word “yogurt” and the gTLD “.com”. This is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel further find that the Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is apparently not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the DANNON mark in domain names. The “Domain Admin” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii).
The Panel also finds that the Respondent’s use of the disputed domain name does not consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is apparently not actively using the domain name. As such, there can be no legitimate rights or interests in or to the disputed domain name.
Prior panels have declined to grant rights or legitimate interests where the domain name was not actively being used. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel finally finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent has displayed bad faith under Policy ¶¶ 4(b)(iii) and (iv), but offers no evidence in support of such accusations. Accordingly, the Panel disregards this portion of Complainant’s arguments.
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant contends that Respondent has displayed bad faith by failing to use the disputed domain name. The Panel notes Complainant’s attached Exhibit I, which purports to be a screenshot of the webpage resolving from the disputed domain name. Prior panels have found that failure to use a domain name can be grounds for a bad faith finding. See Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
As there is no evidence in the record to rebut this claim, the Panel agrees with Complainant and finds bad faith under Policy ¶ 4(a)(iii).
Also, Complainant asserts that its trademark registrations for the DANNON mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, given the totality of the circumstances, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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 transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: September 8, 2016
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