Compagnie GERVAIS DANONE v. zhao qiaogang
Claim Number: FA1412001596080
Complainant is Compagnie GERVAIS DANONE (“Complainant”), represented by Nathalie Dreyfus of Dreyfus & associés, France. Respondent is zhao qiaogang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danone.cn.com>, registered with Shanghai Meicheng Technology Information Development Co., Ltd..
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.
Darryl C. Wilson, as Panelist.
Complainant participated in the mandatory CentralNic Mediation as required by CDRP policy.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2014; the National Arbitration Forum received payment on December 19, 2014.
On December 23, 2014, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <danone.cn.com> domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the name. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On January 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2015 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@danone.cn.com. Also on January 8, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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
a. Complainant’s mark:
i. Complainant owns the DANONE trademark through its registration with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 216985, registered March 21, 1984).
ii. China uses the DANONE mark in connection with its line of dairy products and bottled water.
iii. Complainant operates online through numerous domain names, including <danone.com.cn>, which it registered on October 17, 2001.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <danone.cn.com> domain name is confusingly similar to Complainant’s DANONE mark, because Respondent has simply attached the second-level domain “.cn” and the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <danone.cn.com> domain name. Respondent is neither licensed nor authorized to use the DANONE mark, or to seek registration of any domain name incorporating the mark.
3. Respondent has not provided any bona fide offering of goods and services, or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent has failed to make any active use of the disputed domain name.
iii. Policy ¶ 4(a)(iii)
1. Complainant is so well known around the world that it is inconceivable that Respondent registered the disputed domain name without some knowledge of Complainant’s rights in the DANONE mark.
2. Complainant has failed to many any active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Compagnie GERVAIS DANONE of Paris, France. Complainant is the owner of domestic and international registrations for the mark DANONE, and related marks covering a wide variety of goods and services in the dairy industry. Complainant has also registered numerous domain names featuring its mark including <danone.com>. Complainant is also the owner of the DANONE registration in China which it has continuously used in connection with its goods and services since at least as early as 1984.
Respondent is Zhao Qiaogang, of Zhejiang, China. Respondent’s registrar’s address is listed as Shanghai, China. Respondent registered the disputed domain name on or about August 22, 2014.
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 or 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(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.”).
Complainant uses the DANONE mark in connection with its line of dairy products and bottled waters. Complainant claims to own the DANONE trademark through its numerous trademark registrations around the world, including with China’s SAIC (Reg. No. 216985, registered March 21, 1984). Complainant argues that such registrations are sufficient to establish rights in the DANONE mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant’s SAIC registration satisfies the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <danone.cn.com> domain name is confusingly similar to Complainant’s DANONE mark, because Respondent has simply attached the second-level domain “.cn” and the gTLD “.com.” Prior panels have found that the addition of a second-level domain and a gTLD are irrelevant changes to a mark. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel here finds that Respondent’s <danone.cn.com> is confusingly similar to Complainant’s DANONE mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the <danone.cn.com> domain name. Further, Complainant argues that Respondent is neither licensed nor authorized to use the DANONE mark. The Panel notes that the WHOIS information identifies “Qiaogang Zhao” as the registrant of the disputed domain name. Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of contrary evidence, the Panel finds that Respondent is not commonly known by the <danone.cn.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also argues that Respondent has not provided any bona fide offering of goods and services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant states that Respondent has failed to make any active use of the disputed domain name. Prior panels have refused to find any rights or legitimate interests in a complainant that fails to make an active use of a disputed domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent’s failure to make an active use of the <danone.cn.com> domain name demonstrates that Respondent has not provided any bona fide offering of goods and services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
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 (Nat. Arb. 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); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the … 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 argues that Respondent’s bad faith is evidenced by its failure to make an active use of the <danone.cn.com> domain name. The Panel again notes that Complainant submitted a screenshot of Respondent’s inactive website. Past panels have not hesitated in finding bad faith where the respondent fails to make an active use of the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The Panel here finds that Respondent’s inactive use of the disputed domain name indicates bad faith under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the CentralNic Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <danone.cn.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 23, 2015
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