WIPO: domain "danonecancer.com" registered in bad faith

The WIPO arbitration panel has ruled that the domain "danonecancer.com" had been registered and used in bad faith and ordered that the domain be transferred to its legitimate owner, Gervais Danone. Ian Blackshaw decided the case as sole panelist. On the point "Identical or Confusingly Similar" he ruled that:

"In the present case, the disputed domain name incorporates the Complainant’s trademark DANONE. The only difference between the disputed domain name and the Complainant’s DANONE mark rests in the mere addition by the Respondent of the descriptive term “cancer” to the DANONE mark. This difference is immaterial for trademark distinguishing purposes. ...

[The] Panel would agree with the Complainant’s contention that the addition of the descriptive term “cancer” increases the likelihood of confusion particularly in light of the work of Complainant’s Institut Danone. ... [The] Panel would also agree with the Complainant’s contention that the addition of the suffix “.com” is not a distinguishing feature for purposes or comparison under the first element of the Policy."

On the point of "bad faith" the panelist ruled that:

"... the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its well-known and widely-used trademark DANONE. Furthermore, the fact that the Respondent’s website contains links to other websites offering products and services other than those of the Complainant suggests that the Respondent must have been aware of the Complainant’s trademark and, as such, amounts to bad faith on the part of the Respondent. ... [It] was unlikely that the registration of the disputed domain name by the Respondent was a coincidence. ...

[By] registering and using the disputed domain name incorporating the Complainant’s well-known and widely-used trademark DANONE, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. ... For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the position in the present case."

Case ref: Compagnie Gervais Danone v. Bruce Roarson
Case No. D2007-1719, 22 January 2008

Posted by: Birgit Clark @ 13.18
Tags: Danone, Domain names, WIPO, WIPO Arbitration and Mediation Center,
Link: https://www.marques.org/class46?XID=BHA180

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