The Complainant is Compagnie GERVAIS DANONE, Bonafont, S.A. de C.V., France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Osvaldo oviedo oviedo gonzalez, venta de muebles, Mexico.
The disputed domain name <bonafontseminuevos.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 6, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on October 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On October 12, 2020, the Complainant requested to suspend the proceeding to explore settlement options. The Complainant filed an amended Complaint on November 4, 2020 removing two other domains names from its complaint keeping only the following disputed domain name <bonafontseminuevos.com>. The Proceeding was reinstituted on December 10, 2020.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 14, 2021. 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.
The Complainant Compagnie Gervais Danone is a French corporation, and the Complainant Bonafont S.A de C.V is an affiliated Mexican company. The Complainants are part of the Danone Group, which is a French multinational food-products corporation, leading producer of fresh dairy products, bottled water, baby food and medical nutrition. The Complainants’ group operates in more than 130 countries across the five continents, employing more than 100,000 people. It began its business in 1919 in Barcelona, Spain, making and selling yoghurt under the trademark DANONE.
The trademark BONAFONT was born in 1992 in Mexico and belongs to the Complainants’ group since 1996, being used to produce and commercialize bottled water. The main plant of BONAFONT water is located in Toluca Valley, Mexico. Prior decisions under the Policy have considered the well-known character of the trademark BONAFONT in Mexico1 .
The Complainants hold registered trademark rights in the mark BONAFONT in various jurisdictions, of which the following are sufficiently representative for the present proceeding:
- European Union Trade Mark No. 006844575 BONAFONT, registered on June 23, 2010, in class 32;
- United States Trademark No. 3520690 BONAFONT, registered on October 21, 2008, in class 32;
- Mexican Trademark No. 1697813 BONAFONT, registered on November 22, 2016, in class 21; and
- Mexican Trademark No. 1595552 BONAFONT, figurative, registered on December 3, 2015, in class 32, (collectively the “BONAFONT mark”).
The Complainants further own various domain names comprising its BONAFONT mark, including <bonafont.com.mx>, registered on May 4, 2000, which is linked to their corporate website in connection with their products.
The disputed domain name was registered on June 16, 2020, and it is linked to a parked website of the Registrar containing various Pay-Per-Click (“PPC”) links to third parties’ websites related to vehicles. This parked website includes at its top a phrase that offers the option of acquiring the disputed domain name through the Registrar’s brokers (including a link to its website, where the disputed domain name is offered for a price of EUR 100.99 plus commissions). According to the evidence provided by the Complainants, the disputed domain name was previously linked to a website in Spanish language, which offered for sale various preowned vehicles and included the BONAFONT mark (at the top of the site), as well as various images related to the Complainant’s products. This website reproduced the look and feel of the Complainants’ official website (using identical or very similar colors and visual appearance).
Key contentions of the Complaint may be summarized as follows:
The Complainants and their trademark BONAFONT enjoy a worldwide reputation, including in Mexico.
The disputed domain name reproduces entirely the BONAFONT mark with the adjunction of the generic term “seminuevos” creating a likelihood of confusion with the Complainants and their trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither known by the term “bonafont”, nor in any way affiliated with the Complainants, not having been authorized to use the BONAFONT mark. Due to the well-known character of the BONAFONT mark in Mexico (recognized by the decision in Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, supra), no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. Before the current inactivity of the disputed domain name, it resolved to a website reproducing the Complainants’ trademark and their corporate website’s look and feel, creating a false impression that the Complainants have endorsed it, with the intention to attract Internet users for a commercial gain, using the goodwill attached to the BONAFONT mark. The Respondent’s website did not accurately disclosed its lack of relationship with the Complainants, but falsely suggested affiliation or endorsement.
The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainants and the BONAFONT mark when it registered the disputed domain name. Due to the well-known character of the BONAFONT mark in Mexico (where the Respondent is located according to the WhoIs information and the content of the website previously linked to the disputed domain name), the Respondent knew or should have known of the Complainants’ rights. Any trademark or Internet search would have revealed the existence of the Complainants and their trademarks. Furthermore, the disputed domain name has been used in bad faith related to a website that enhanced the likelihood of confusion and affiliation. The Respondent did everything to make its website look official with the intention to benefit from the Complainants’ reputation and particularly from the BONAFONT mark to obtain commercial gains from a website, offering pre-owned cars for sale. The current passive holding of the disputed domain name does not preclude a finding of bad faith.
The Complainants have cited previous decisions under the Policy that they consider supportive of their position, and request the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
The Complainants indisputably have rights in the registered trademark BONAFONT. The disputed domain name incorporates this trademark in its entirety, followed by the term “seminuevos” (Spanish term meaning “semi-new”), which does not avoid a finding of confusing similarity with the mark. The Complainants’ trademark is directly recognizable in the disputed domain name, and the generic Top-Level-Domain (“gTLD”) “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainants’ mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainants bear the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production regarding rights or legitimate interests in the disputed domain name to the respondent, once the complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainants’ assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainants’ prima facie case.
However, the Respondent has not replied to the Complainants’ contentions, choosing not to reply to the Complaint and not providing any explanation connected to the above-mentioned circumstances or any other that may be considered as a fair use or legitimate interests in the disputed domain name. Its reaction to the Complaint seems to be taking down the website that was linked to the disputed domain name.
A frequent factor in the analysis under the second element is whether the disputed domain name falsely suggests affiliation with the Complainants’ trademark. See section 2.5 of the WIPO Overview 3.0. The disputed domain name incorporate the Complainants’ trademark in its entirety adding a Spanish dictionary term “seminuevos”, which refers to the business in the second hand car sector, giving the impression of being a website and a business linked to or owned by the Complainants or the Danone Group for the transfer of their corporate vehicles. Therefore, the Panel considers that there is a risk of implied affiliation.
The Panel notes that, according to the evidence in the file, prior to the Complaint, the disputed domain name was linked to a website, which contained in its heading and in its content, various references to the BONAFONT mark and the Complainants. This website included various promotional photographs of the Complainants’ products, using a visual appearance or look and feel similar to the Complainants’ corporate website. The Panel considers that the use of the disputed domain name linked to a website containing images of the Complainants’ products, as well as references to the BONAFONT mark, contributes to a high risk of affiliation and confusion. Furthermore, this site did not reveal the Respondent’s lack of relationship with the Complainants. On the contrary, its content created an impression of affiliation with the Complainants and their BONAFONT mark, indicating that the aim of the site was to help people and Mexican families to buy cars, letting them acquire vehicles previously used by the company. The Panel considers that this content clearly alluded to the Complainants or their group, creating the impression that the website linked to the disputed domain name was affiliated to them, offering for sale corporate automobiles owned and previously used by the Complainants or the Danone Group.
It is further to be noted the reaction of the Respondent to the Complaint, taking down its website and redirecting the disputed domain name to a parked website including PPC links. The use of the disputed domain name to host a parked page comprising PPC links does not represent a bona fide offering where, as in the instant case, such links compete with or capitalize on the reputation and goodwill of the Complainants’ mark or mislead Internet users. See section 2.9 of the WIPO Overview 3.0.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced any evidence to rebut the Complainants’ prima facie case, and the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainants establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2 of the WIPO Overview 3.0.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainants’ BONAFONT mark in its entirety adding a dictionary term related to the Respondent’s business, creating a likelihood of confusion or implied affiliation and the impression that the disputed domain name refers to one of the Complainants’ official websites or their partners and subsidiaries’ official websites, suggesting sponsorship or endorsement by the Complainants;
(ii) the extensive presence of the BONAFONT mark over the Internet, as well as its extensive use, particularly in Mexico, where the Respondent is apparently located, according to the information received by the Registrar, and operates, according to the website content that was linked to the disputed domain name;
(iii) the continued use of the BONAFONT mark, for about 28 years (since 1992), and that, in Mexico, the Complainants’ trademark is considered as the top selling brand for bottled water (see Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, supra);
(iv) the disputed domain name was linked to a website that included the Complainants’ trademark, similar look and feel as the Complainants’ corporate sites, as well as various allusions to the Complainants and their products, enhancing the implied affiliation generated by the disputed domain name;
(v) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;
(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainants’ assertions of bad faith, choosing not to reply to the Complaint and taking down the website that was linked to the disputed domain name; and
(vii) the disputed domain name is currently linked to a parked website, offering its transfer through the Registrar’s brokers and including PPC links to third parties’ websites.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainants’ BONAFONT mark with the intention of obtaining a free ride on its established reputation, seeking to mislead and attract Internet users to a commercial website.
Particularly, with respect to the PPC links included in the parked website linked to the disputed domain name, it is important to clarify that the Respondent cannot disclaim its responsibility for the content appearing on the website associated with the disputed domain name. Neither the fact that such links may have been generated by a third party such as the Registrar, nor the fact that the Respondent itself may not have directly profited from these promotional links, would by itself prevent a finding of bad faith. See sections 3.5, WIPO Overview 3.0.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainants have met their burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
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 <bonafontseminuevos.com> be transferred to the Complainants.
Reyes Campello Estebaranz
Sole Panelist
Date: January 27, 2021
1 See Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659, which indicated, “the Complainants' BONAFONT products are the top selling brand in Mexico for bottled water”.