Complainant is Société Anonyme des Eaux Minérales d’Evian (SAEME) of Evian-les-Bains, France, represented by Dreyfus & associés, France.
Respondent is usbevian.com Private Registrant of Brea, California, United States of America.
The disputed domain name <usbevian.com> is registered with New Dream Network, LLC dba DreamHost.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2013. On May 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2013, the Center contacted the Registrar via e-mail, asking for contact details and confirmation of Respondent’s information. Even after several reminders, on May 17, 22, 28 and on May 29, 2013, (first formal reminder) and on June 5, 2013, (second formal reminder), the Registrar never responded.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2013.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 10, 2013. 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.
Complainant is Société Anonyme des Eaux Minérales d’Evian, a company incorporated under French Law and a subsidiary of the French Company “Groupe Danone”.
Dated back to the 19th century, Evian is today a worldwide leading company in the sales and distribution of mineral water field. The trademark EVIAN is present on the 5 continents, in 125 countries, including in the United States of America where Respondent seems to be located.
Complainant is owner of several trademark registrations in different classes (as per Annex 12 of the Complaint), including the following in the United States:
- US trademark EVIAN N° 2822102, registered on March 16, 2004, in class 32;
- US trademark EVIAN N° 2904034, registered on November 23, 2004, in class 5;
- US trademark EVIAN N° 1155024, registered on May 19, 1981, in class 32.
In addition, Complainant is the owner of several domain names which incorporate the trademark EVIAN (as per Annex 13 of the Complaint):
- <evian.us> registered on April 19, 2002;
- <evian.com> registered on May 14, 1997;
- <evian.fr> registered on January 22, 1996.
The disputed domain name <usbevian.com> was registered on December 17, 2012.
According to Complainant, Evian water was born 8,000 years ago. Discovered in 1789 by the marquis of Lessert, the source of Cachat became Les Eaux d’Evian les Bains in 1869. The first official authorizations to bottle the water from the Evian stream dated back to 1826.
Complaint claims that, since 1878, Evian has been recognized as favorable by the Medicine Academy and has become the reference water in the hospital environment. Evian is today the best selling trademark of mineral water in the world, with 1,5 billion bottles sold every year. The trademark EVIAN is present on the 5 continents, in 125 countries, and also includes beauty and health products such as mineral water sprays (as per Annex 5 of the Complaint).
Complainant states that its trademark is particularly known for its famous advertisement clips starring swimming babies, roller-skating babies and more recently dancing babies. In 2009, Complainant launched a new slogan: “Live Young”. These last years, Complainant released special “haute couture” (high culture) bottles, designed by well-known couturiers, stylists or fashion house: Christian Lacroix, Jean Paul Gaultier, Paul Smith, Issey Miyake, Courrèges and Diane von Fürstenberg.
Complainant affirms that the disputed domain name resolves to a page which reproduces or, at least, imitates Complainant’s trademark and product: the bottle designed by Christian Lacroix – a French couturier – for EVIAN bottle. The website of the disputed domain name also reproduces the mountains and colors of Complainant’s logo.
Complainant contends that before filing the present Complaint, on March 19, 2013, it sent a cease-and-desist letter by email and a registered letter to Respondent on the basis of its trademarks rights to request the cancellation of the disputed domain name (as per Annex 10 of the Complaint), and despite several reminders, Respondent never replied.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s trademark EVIAN, since the disputed domain name reproduces Complainant’s trademark in its entirety, and previous UDRP panels have considered Complainant’s trademark to be “well-known” or “famous” (Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Evian Dayspa, WIPO Case No. D2010-0416, Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Nadex Aktiebolag, WIPO Case No. D2010-0328, Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080 and Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Vivi Bui and Evian Dayspa, WIPO Case No. D2008-1869, - Annex 14 of the Complaint).
Complainant adds that the disputed domain name is confusingly similar to Complainant’s trademark because it fully incorporates said mark, with the mere addition of the generic term “usb” which is the acronym for “Universal Serial Bus”. It argues that it has been held by previous UDRP panels that the addition of a generic term does not prevent the risk of confusion between complainant’s trademark and the disputed domain name (Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara, WIPO Case No. D2012-0047Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700 and, Fluor Corporation v. KMLOLO, WIPO Case No. D2010-0377 – Annex 16 of the Complaint).
In addition, Complainant owns and mainly communicates on the Internet via various websites such as “www.evian.fr” or “www.evian.us”, for the United States, in order to present and to propose to Internet users its services and products. Complainant affirms that the disputed domain name is also confusingly similar to these domain names owned by Complainant.
Complainant claims that Respondent is not affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark, and that Respondent has no prior rights or legitimate interest in the domain name, given that the registrations of the EVIAN trademark preceded the registration of the disputed domain name.
Additionally, Complainant alleges that the disputed domain name is so similar to the well-known EVIAN trademark of Complainant, that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Thereby, Complainant argues that the sole objective of Respondent, when registering the disputed domain name <usbevian.com>, was to benefit from the reputation of Complainant's successful company and well-known trademarks.
Complainant also contends that Respondent’s reproduction of the said trademark, combined with a generic term, and the fact that Respondent uses the disputed domain name to direct Internet users to a page which reproduces a Complainant’s trademark and product and the mountains and colors of Complainant’s logo, clearly proves that Respondent was aware of the existence of Complainant and its EVIAN trademarks. Thus, Complainant concludes that Respondent is obviously acting in bad faith.
Respondent did not reply to Complainant’s contentions.
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
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 as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations for EVIAN, a well-known trademark, and that such trademark is entirely incorporated in the disputed domain name <usbevian.com>.
The Panel acknowledges that the disputed domain name fully incorporates Complainant's EVIAN trademark, with the addition of the generic term “usb” which is the acronym for “Universal Serial Bus” – an industry standard used for short distance digital data communications. The Panel considers “usb” a generic term, and supports that the addition of a generic term does not erase the risk of confusion between Complainant’s trademark and the disputed domain name.
Moreover, as further noted below, the fact that the website in question utilizes pictures of Complainant's known products and logo also generates a strong possibility of confusion, leading consumers to believe they were in fact dealing with Complainant’s company.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark EVIAN.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case Complainant has provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <usbevian.com>.
The Panel also recognizes that Complainant has never authorized Respondent to incorporate its trademark EVIAN into the disputed domain name, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right, it seems that the Respondent’s intention when registering the disputed domain name was to attract, for some kind of benefit, Internet users to its website by creating a false association with Complainant’s mark.
Complainant proved that, in previous UDRP decisions, UDRP panels found that, in the absence of any license or permission from the complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed, citing as example LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 and L’Oréal and Laboratoire Garnier Et Compagnie v. Mitesh Soma, WIPO Case No. D2011-0860 (Annex 20 of the Complaint).
Moreover, Complainant has proved to the satisfaction of this Panel that Respondent does not have rights or legitimate interests over the disputed domain name and the expression EVIAN pursuant to the Policy, since it is not commonly known as EVIAN, does not run any business under the name EVIAN and has never filed trademark applications for EVIAN.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. This list is not exhaustive.
The Panel finds it is highly unlikely that Respondent was not aware of Complainant’s legal rights to the trademark EVIAN at the time of registration of the disputed domain name, considering its fame and well known status. Even if Respondent’s exact intention is not clear from the website at the disputed domain name, in the circumstances, the Panel considers Respondent’s registration and use of the disputed domain name to be in bad faith.
The fact that the website in question utilizes pictures of Complainant's known products and logo is another sign that Respondent was acting in a way as to somehow illegitimately benefit from the use of a domain name confusingly similar to Complainant’s trademark.
Thereby, the Panel holds that Respondent registered and is using the disputed domain name in bad faith.
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 name <usbevian.com> be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: July 24, 2013