Compagnie Gervais Danone v Sonia Bezeau, carlos Luis

WIPO Case No. D2024-4969

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone v. Sonia Bezeau, carlos Luis

Case No. D2024-4969

1. The Parties

The Complainant is Compagnie Gervais Danone, France, represented by Herbert Smith Freehills Paris LLP,

France.

The Respondents are Sonia Bezeau, Benin, and carlos Luis, France.

2. The Domain Names and Registrars

The disputed domain name <danonex-greek.com> is registered with PDR Ltd. d/b/a
PublicDomainRegistry.com and the disputed domain name <danonexgreek.com> is registered with

Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2024. On December 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Domain Admin, Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 6, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 12, 2024.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2025.

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The Center appointed William Lobelson as the sole panelist in this matter on January 29, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the French company Compagnie Gervais Danone, involved in the food industry and operating on a worldwide level.

Its trademark Danone is widely protected all over the world in relation with food and beverages:

- International Trademark DANONE No. 172526 registered on October 31, 1953;

- European Union trademark DANONE device No. 017887348 registered on August 25, 2018;

- French Trademark DANONE No. 1690721 registered on November 22, 1988;

- Greek Trademark DANONE No. F33481 registered on May 17,1966.

The disputed domain names are: <danonex-greek.com>, registered on May 17, 2024 and
<danonexgreek.com> registered on August 6, 2024. Both route to two identical web sites, dedicated to
financial services, where the name of a company “Danone Daneio Intl” is displayed, as well as an address in

Paris that coincides with the Complainant’s headquarters address.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to its earlier trademarks, that the Respondents have no rights or legitimate interests in the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondents, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

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Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that:

- Both disputed domain names are almost identical: <danonexgreek.com> and

<danonex-greek.com>;

- Both disputed domain names point to identical web pages;

- Both disputed domain names were registered using the same privacy service provider and with the

same Registrar.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the DANONE mark is recognizable within the disputed domain names. Accordingly, the
disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “x” and “greek”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the
disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide

offering of goods and services;

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the

disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.

Although the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain names, that the Respondent does not make any bona fide or legitimate noncommercial fair use of the disputed domain names.

It is a fact that the disputed domain names are routed to web pages where the name “Danone Daneio Intl” is
displayed, in relation with an offer for financial services, which are not within the scope of business of the
Complainant.

Having examined the screen captures of the Respondent’s web sites, the Panel observes that the said web sites do not contain any of the usual information generally available on all web sites such as general terms, legal notice, privacy policy or even a phone number. The “contact us” section of the web sites only refer to an e-mail address, a street address in Greece but without any mention of a city, and a street address in

Paris, but which happens to coincide with Complainant’s headquarters address in Paris.

The Panel infers from the above findings that, in all likelihood, the disputed domain names route to web sites presenting fictitious financial services.

The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitute bad faith under the Policy.

The Complainant has substantiated the fact that its trademark DANONE, which has been registered and used in France and internationally for years, now benefits from a high level of public awareness. Earlier UDRP decisions have acknowledged the Complainant’s trademarks reputation:

Compagnie Gervais Danone v. Bethesda Properties LLC, WIPO Case No. D2007-1451
(<danonepeople.mobi>); Compagnie Gervais Danone v. Christopher Koda, WIPO Case No. D2008-1639
(<superdanone.com>); Compagnie GERVAIS DANONE v. Lim Sang Woon, WIPO Case No. D2017-1762
(<danonewhitewave.com>); Compagnie Gervais Danone v. Daniel Narita, WIPO Case No. D2018-0703
(<grupodanone.com>).

Further the Respondent appears to have provided inconsistent registration details when registering the disputed domain names. Moreover, the fact that the Respondent used French addresses implies that he/she is a French resident or at least has connections with France, where the Complainant’s mark is very well- known.

In light of the above, this Panel finds hard to believe that the Respondent did not have the Complainant’s trademark in mind when he/she registered the disputed domain names.

Regarding the high similarity of the disputed domain names with the trademark DANONE, it seems unlikely that the disputed domain names could have been registered and then used in good faith.

The Panel infers from the above that the Respondent acted in bad faith when he/she registered the disputed domain names, and still acts in bad faith.

It has been shown above that the likelihood that the financial services offered by the Respondent on its web sites are fictitious is very high.

It also has been demonstrated by the Complainant that the street address in Paris where the Respondent
claims that its company is located, and which is displayed on its web sites, happens to be the address of the
Complainant’s headquarters.

The Panel concurs with the Complainant that the Respondent is trying to cause confusion among Internet users to let them believe that there could be an affiliation between the Complainant and the Respondent’s web sites.

The Respondent thus exploits the reputation of the Complainant to conduct activities that are very likely fraudulent: The Respondent’s web pages contain forms to be filled in by Internet users with their personal details.

The Panel notes the Respondent used the French address of the Complainant. Panels have held that the use of a domain name for illegal or illegitimate activity (impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4.

The Panel finds the Respondent intended to create a false association with the Complainant for the purpose of taking advantage of the Complainant's goodwill and customers. The Complainant has an interest in having its reputed trademark not being associated in the public’s mind with the fraudulent operations that the Respondent appears to be engaged into.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <danonex-greek.com> and <danonexgreek.com> be transferred to the Complainant.

/William Lobelson/
William Lobelson
Sole Panelist
Date: February 5, 2025