Log in


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
Actimel vs Actimelon

Danone succeeded in having the domain name ‘actimelon.com’ trasnferred to it following the decision of WIPO’s panel in case D2009 0221.

The respondent, a US based legal entity registered the said domain name and used the relevant website as a “parking page” containing sponsored links, many of which relate to products competing with the Complainant’s ACTIMEL product. Danone relied on its trademark rights in various countries in and to ACTIMEL used to distinguish a probiotic drinking yogurt with a significan sales volume globally, as well as to registration of a number of domain names containing “actimel” as the second level domain. Prior to resorting to WIPO, Danone also sent cease and desist letters to the Respondent to no avail. The sole panelist Johnathan Turner accepted the complaint, ruling as follows:

A. Identical or Confusingly Similar

.............. The Panel does not accept the Complainant’s submission that the Domain Name should be regarded as comprising the Complainant’s mark together with the common English word “on” and the generic top level domain suffix. In the Panel’s view, Internet users would be unlikely to split the second level domain in their minds in this way. However, the Panel does find that the overall similarity between the Domain Name and the Complainant’s mark is likely to cause confusion, particularly bearing in mind the possibility of imperfect recollection [sounds familiar?].

B. Rights or Legitimate Interests

The Panel finds that the Domain Name is directed to a parking page containing sponsored links, many of which connect to websites promoting products competing with the Complainant’s ACTIMEL product. In the Panel’s view, this use of the Domain Name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name.

C. Registered and Used in Bad Faith

The Panel notes that the Respondent’s name indicates its interest in medical nutrition products. Given this interest, the Panel considers that the Respondent must have been aware at all relevant times of the Complainant’s use of the mark ACTIMEL for its very extensively sold probiotic yogurt. As stated above, the Domain Name is directed to a web page of sponsored links, many of which relate to products competing with the Complainant’s ACTIMEL product. The Panel finds that by using the Domain Name in this way, the Respondent has intentionally attempted to attract Internet users to its web page by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web page, for commercial gain in the form of click through commissions.

Posted by: Nikos Prentoulis @ 17.36
Tags: Actimel, Danone, Domain name dispute, WIPO, WIPO Arbitration and Mediation Center,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA1120
Reader Comments: 0
Post a Comment

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

The Class 46 Archive








+44 (0)116 2747355
+44 (0)116 2747365

Unit Q, Troon Way Business Centre
Humberstone Lane, Leicester


Ingrid de Groot
Internal Relations Officer
Alessandra Romeo
External Relations Officer
James Nurton
Newsletter Editor
Robert Harrison

Signup for our blogs.
Headlines delivered to your inbox