WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Gervais Danone, Société Anonyme des Eaux Minérales d’Evian (SAEME), Société des Eaux de Volvic, Nutricia International BV v. Giovanni Laporta, Yoyo.Email

Case No. D2015-0505

1. The Parties

The Complainant is Compagnie Gervais Danone of Paris, France, Société Anonyme des Eaux Minérales d’Evian (SAEME) of Evian-les-Bains, France, Société des Eaux de Volvic of Volvic, France, Nutricia International BV of Zoetermeer, the Netherlands, represented by Dreyfus & associés, France.¹

The Respondent is Giovanni Laporta, Yoyo.Email of Traverse City, Michigan, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <actimel.email>, <aptaclub.email>, <aptamil.email>, <danone.email>, <evian.email> and <volvic.email> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2015. On March 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 the Respondent of the Complaint, and the proceedings commenced on March 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2015. The Response was filed with the Center on April 12, 2015.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 21, 2015. 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.

On April 27, 2015, the Complainant filed an unsolicited supplemental filing. Due to the fact that the supplemental filing was not requested, the Panel, in its discretion, chooses not to consider or admit the filing.

4. Factual Background

The Complainant has submitted evidence that it is the owner of the following trademark registrations:

DANONE, United Kingdom of Great Britain and Northern Ireland (“UK”) Trade Mark with registration No. UK00000699705 and registration date July 11, 1951, owned by Compagnie Gervais Danone.

DANONE, International Trade Mark with registration No. 172526 and registration date October 31, 1953, owned by Compagnie Gervais Danone.

ACTIMEL, UK Trade Mark with registration No. UK00001579715 and registration date July 26, 1994, owned by Compagnie Gervais Danone.

ACTIMEL, International Trade Mark with registration No. 693141 and registration date April 23, 1998, owned by Compagnie Gervais Danone.

EVIAN, UK Trade Mark with registration No. UK00001226701 and registration date September 19, 1984, owned by Société Anonyme des Eaux Minérales d’Evian.

EVIAN, International Trade Mark with registration No.235956 and registration date September 24, 1960, owned by Société Anonyme des Eaux Minérales d’Evian.

VOLVIC, UK Trade Mark with registration No. UK00001034718 and registration dated August 30, 1974, owned by Société des Eaux de Volvic.

VOLVIC, International Trade Mark with registration No. 275296 and registration date October 18, 1963, owned by Société des Eaux de Volvic.

APTAMIL, UK Trade Mark with registration No. UK00000989429 and registration date March 24, 1972, owned by Nutricia International B.V.

APTAMIL, International Trade Mark with registration No. 376506 and registration date February 2, 1971, owned by Nutricia International B.V.

APTACLUB, Community Trade Mark with registration No. 010421576 and registration date November 6, 2011, owned by N.V. Nutricia.

The disputed domain name <danone.email> was registered on March 28, 2014.

The disputed domain name <volvic.email> was registered on March 28, 2014.

The disputed domain name <evian.email> was registered on March 30, 2014.

The disputed domain name <actimel.email> was registered on March 30, 2014.

The disputed domain name <aptamil.email> was registered on May 20, 2014.

The disputed domain name <aptaclub.email> was registered on May 20, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant in this proceeding consists of subsidiaries of the French company Danone. Danone Group is the global leader in dairy products and number two in bottled water and baby food products. The group makes up 26 percent of the world market in fresh dairy products and is present in 140 countries. Compagnie Gervais Danone is the legitimate owner of all rights, titles and interests related to and derived from the trademarks used by the Danone group to commercialize its fresh dairy products worldwide, including among others, the trademarks DANONE and ACTIMEL. ACTIMEL is present in 31 countries, being the undisputed market leader in 19 of them. Already in 2006, the brand ACTIMEL earned over EUR 1.4 billion in retail sales.

EVIAN has been commercialized since 1826 and has been recognized for its health benefits. The trademark has been owned by the Complainant since 1970 and EVIAN has become one of its leading international brands which are popular in France, Germany, Japan, the UK and the United States, where the Respondent is located. EVIAN natural mineral water is distributed all over the United States. EVIAN is particularly known for its advertisement clips starring swimming babies, roller-skating babies and more recently, dancing babies. EVIAN sponsors several sporting events, such as The Evian Championship, Wimbledon and the US Open. Since 2007, the Complainant has released special limited edition “haute couture” bottles under the EVIAN brand designed by well-known couturiers or fashion houses like Christian Lacroix, Jean Paul Gaultier and Kenzo. EVIAN is one of the best-selling trademarks of mineral water in the world and it is sold in over 140 countries.

VOLVIC is a well-known brand of mineral water that has been commercialized since 1938. It was recognized as a natural mineral water by the French Ministry of Health in 1965. The brand VOLVIC enjoys a large success on a global basis. In 2010 the Complainant created the first 100 percent recyclable plastic bottle with 20 percent of vegetal plastic. It is now sold in more than 90 countries.

In 1896, one of the founders of Nutricia, Martinus Van der Hagen, obtained the rights to produce special milk for infants. From a small family business founded in 1921 in Germany, Milupa A.G. grew to become a world leader in infant nutrition. In 1954, Milupa A.G. began a long term program of research into the composition of breast milk and in 1995 the Complainant acquired Milupa A.G. The brand APTAMIL has over 30 years of use in early life nutrition, including infant formula, follow-on milk, growing-up milk, helping babies to get the nutrition they need at every stage of development, all under the APTAMIL brand. The APTAMIL brand enjoys a strong worldwide reputation and had a worldwide turnover of EUR 452 million in 2011. APTACLUB, which is available in a number of countries, supports parents in making nutritional choices throughout their journey from pre-conception to when their child reaches toddlerhood.

In April 2014, the Complainant contacted the Respondent and requested that it should stop using the disputed domain names <danone.email> and <evian.email>. The Respondent replied that no ICANN rule or trademark legislation had been violated.

On June 5, 2014, the Complainant sent another cease-and-desist letter asking the Respondent to stop using the disputed domain names <danone.email>, <evian.email.>, <actimel.email>, <volvic.email> and <aptamil.email>. Then, the Complainant discovered that the Respondent also had registered <aptaclub.email>.

On June 11, 2014, the Complainant sent a reminder to the Respondent who replied the same day. The Complainant has discovered that the Respondent has already been involved in several UDRP proceedings and that the Respondent has registered hundreds of “.email” domain names reproducing trademarks.

After the Complainant contacted the Respondent, the Respondent changed address from the UK to the United States. Now, the Respondent is located in the United States. Since no amicable settlement could be made, the Complainant had no other choice but to file a URRP Complaint.

The disputed domain names <danone.email>, <evian.email.>, <actimel.email>, <volvic.email>, <aptamil.email> and <aptaclub.email> are identical with the Complainant’s registered trademarks, DANONE, EVIAN, ACTIMEL, VOLVIC, APTAMIL and APTACLUB. The disputed domain names incorporate the Complainant’s trademarks in their entirety. If the generic Top-Level Domain (“gTLD”) “.email” is be taken into consideration, the likelihood of confusion increases as Internet users are likely to believe that the disputed domain names are registered by the Complainant for the purpose of email correspondence.

The Respondent is not affiliated with the Complainant in any way and is not authorized or licensed to use and register any of the Complainant’s trademarks as domain names. The Respondent is not known by the names DANONE, ACTIMEL, EVIAN, VOLVIC, APTAMIL or APTACLUB and the Respondent has no prior rights or legitimate interest in the disputed domain names. The Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names resolve to inactive pages. Despite the Respondent’s claims, the Respondent has failed to demonstrate any intention of noncommercial or fair use of the disputed domain names.

Additionally, the Respondent is known for having registered domain names that include trademarks in which it has no right. The Respondent is taking advantage of the launch of the new gTLDs to register domain names containing other parties’ trademarks. In previous UDRP proceedings, the Respondent has provided the same arguments, that it is establishing a legitimate email delivery service, but has not justified why the Respondent has to register and own the disputed domain names for this purpose. The Respondent believes that a United States District Court proceeding involving a third party serves as evidence of its rights in the disputed domain names.

Bad faith can be found where the Respondent knew or should have known of the Complainant’s trademark rights and nevertheless, registered domain names in which the Respondent had no rights or legitimate interests. Also, that the Respondent seems to have engaged in a pattern of cybersquatting is a sign that the disputed domain names have been registered in bad faith. At the end of May 2014, the Respondent owned 3,585 “.email” domain names, which was equivalent to around 10 percent of all “.email” registrations at the time. Considering the massive registration of domain names that include trademarks, it can be assumed that the Respondent is aware of the existence of trademarks, including those of the Complainant.

The Respondent has also engaged in a pattern of registering domain names consisting of famous personalities, such as <davidbeckham.email>, <eminem.email> and <parishilton.email>. The Respondent has registered a large number of “.email” domain names reproducing well-known trademarks and highly used trademarks. The Complainant has noticed that the Respondent has invested over GBP 50,000 when acquiring thousands of “.email” domain names. Clearly, the Respondent is preventing the Complainant and other trademark owners from reflecting their marks in corresponding “.email” domain names. This pattern of conduct satisfies the Policy’s definition of bad faith registration and use.

Although the disputed domain names are inactive, it does not mean that they are used in good faith. Passive holding of a disputed domain name can satisfy the requirement of paragraph 4(a)(iii) of the Policy. The Respondent is clearly trying to benefit from the fame of the Complainant’s trademarks.

B. Respondent

The Respondent claims that there has been no use of the disputed domain names to date and that the intended use is not trademark use or public use. The Respondent has invested time and money to develop a lawful business under the gTLD “.email”.

The purchase of the disputed domain names cannot by itself evidence bad faith intent or bad faith use. Purchasing a domain name that includes a trademark is not prohibited under the UDRP. A registrant does not require permission from a trademark owner before deciding to purchase a domain name featuring a trademark. If domain names that include trademarks cannot be used legitimately, then the disputed domain names should never have gone on general sale after the sunrise period without a warning notice that domain names featuring trademarks cannot be purchased by anyone other than the trademark owner and/or by someone that is commonly known by the domain name. There is no such notice.

The Complainant, as owner of matching trademarks, had an exclusive opportunity to secure the disputed domain names during the sunrise period but did not do so. The Respondent cannot understand why the Complainant did not purchase the disputed domain names when there was a clear opportunity to do so. It can only be presumed that the Complainant did not want to purchase the disputed domain names at the time. The very existence of a limited sunrise period suggests that there must come a time when all domain names can be purchase legitimately. Otherwise, what is the point of a limited period?

The Respondent has not used the disputed domain names to profit from advertising. The Respondent is a consumer focused service working on behalf of the sender (consumer) and not the receiver. The Respondent is a neutral party between the sender and the receiver and works on behalf of sender as proof that the email has been sent. The idea is to launch the service as a closed software. The service works as a back end service where all emails are directed and documented internally by name. At this point, the disputed domain names are not seen by the general public. The disputed domain names may be used to forward emails to the respective company (recipient). There is no need for the Complainant (recipient) to sign up for the Respondent’s service.

The disputed domain names will be used as a backend, non-public email server in order to route emails for the storing of metadata which will allow the Respondent to certify delivery and potentially receipt. The Respondent simply uses words that happen to be trademarks for their non-trademark value. The Respondent’s certification of email services will be free for both the sender and receiver of emails. The Complainant’s trademark rights are not harmed in any way.

The Respondent refers to a declaratory judgement by the United States District Court of Arizona which states that, based upon the description in the Complaint, the Respondent is not intending to profit in bad faith from domain names and that its use does not violate the UDRP.

The Respondent applied for a Community Trade Mark for YOYO.EMAIL on August 1, 2014. This further helps to demonstrate that the Respondent has every intention to operate a legitimate business that has a legitimate interest in the disputed domain names. Furthermore, the Respondent’s CEO is a respected inventor and businessman.

The Respondent must be independent from the Complainant so that the service can be advertised as an “independent certified email service”. How can a service that is linked to a domain name which costs the Respondent an annual charge to operate, ever be described as bad faith intent to profit or unfair use?

The fact that the Respondent intends to be a for profit business from the use of the many generic domain names that it has registered does not support that it intends to profit from the disputed domain names. The Respondent is not using the disputed domain names to defraud the public by creating a false impression that the domain names are the Complainant’s genuine names. The Respondent has never approached the Complainant. The Respondent has previously declined an offer of USD 1,000 by another trademark owner. If the Respondent’s intent is to profit from trademarks, the Respondent could simply have accepted the offer.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and

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

As a preliminary matter, the Panel finds, consistent with previous UDRP panels, that the Arizona declaratory judgment has no bearing on this proceeding. See Stuart Weitzman IP, LLC v. Giovanni Laporta , Yoyo.Email Ltd, WIPO Case No. D2014-1537.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademarks DANONE, EVIAN, ACTIMEL, VOLVIC, APTAMIL and APTACLUB. Each of the disputed domain names <danone.email>, <evian.email.>, <actimel.email>, <volvic.email>, <aptamil.email> and <aptaclub.email> contains a corresponding trademark in its entirety. The only difference between the disputed domain names and the trademarks is the addition of the gTLD suffix “.email”. It is standard practice to disregard the top-level suffix under the confusingly similar test, except in cases where the applicable top-level suffix may itself form part of the relevant trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 1.2. Even if one would take the addition of the top-level suffix “.email” into account, the Panel finds that it would not eliminate the confusing similarity between the Complainant’s trademarks and the disputed domain names because the ability for a generic term, such as “.email”, to distinguish the disputed domain names from the Complainant’s trademarks, is limited in this case.

Having the above in mind, the Panel concludes that the disputed domain names are identical to the Complainant’s trademarks and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations predate the registration dates of the disputed domain names. The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use any of the disputed domain names incorporating the Complainant’s trademarks. There is no evidence in the case indicating that the Respondent is commonly known by the disputed domain names or that the Respondent has acquired any trademark or service mark rights that correspond to the disputed domain names.

While the Respondent maintains that there is no intention to profit from the disputed domain names, the Respondent has described its business as a commercial business. The Respondent argues that the disputed domain names will be used in a legitimate manner for a backend, non-public email server which routes emails for the storing of metadata allowing the Respondent to certify delivery and receipt of emails. However, the Respondent has not provided any explanation as to why the Respondent’s business requires domain names identical to third party trademarks, especially if they are to be used in a “non-public” capacity. The Panel agrees with earlier panelists and finds that a commercial business, such the Respondent’s, that demands unauthorized use of unrelated domain names that are identical to third party trademarks, cannot be considered legitimate under the Policy. See L’Oréal SA v. Yoyo.email, Giovanni Laporta, WIPO Case No. D2014-1172; Arla Foods amba v. G. La Porta / yoyo.email, WIPO Case No. D2014-0855 and Power Leisure Bookmakers Limited v. Giovanni Laporta, Yoyo.email, WIPO Case No. D2015-0273.

It is the Panel’s view that the Respondent has failed to rebut the Complainant’s prima facie case and invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or

(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark(s) as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The disputed domain names were registered several years after the Complainant’s trademarks were registered. Based on the Respondent’s Response, it is unlikely that the Respondent registered the disputed domain names with no knowledge of the corresponding trademarks. In fact, it is implicit from the Response that the Respondent had the Complainant’s trademarks in mind when registering the disputed domain names. By registering thousands of “.email” domain names, including the Complainant’s trademarks and third party trademarks, the Panel finds that the Respondent has engaged in a pattern of conduct which prevents the owners of those trademarks from reflecting their marks in corresponding “.email” domain names. Policy, paragraph 4(b)(ii).

Although it has been argued by the Respondent that the disputed domain names are intended to be used for a backend, non-public email server, the Respondent is listed as domain name holder in the publicly available WhoIs database. Considering the fact that anyone can see that the Respondent is the holder of the disputed domain names, there is a risk that the public may be confused and falsely believe that the Complainant is affiliated with or endorses the Respondent’s “independent certified email service”. Thus, the evidence in the case before the Panel indicates that the disputed domain names have been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

In addition to the above, passive holding of a domain name does not prevent a finding of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and WIPO Overview 2.0, paragraph 3.2.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain names <danone.email>, <evian.email.>, <actimel.email>, <volvic.email>, <aptamil.email> and <aptaclub.email> have been registered and used in bad faith.

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 <actimel.email>, <aptaclub.email>, <aptamil.email>, <danone.email>, <evian.email> and <volvic.email> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: April 29, 2015