COMPAGNIE GERVAIS DANONE V Triple Eight Holdings Limited [2008] NZDNC 257

[2008] - NZDNC - 257
Transferred ; Complainant's Rights ; Unfair Registration - Transferred

The complainant is a worldwide company for dairy products. Its trade mark DANONE is commonly used in its products and other advertisements for its brand. The mark is also registered in New Zealand.

The disputed domain name was registered in 2007. When the complainant approached the respondent to try to resolve the issue, the respondent stated that it was not aware of the complainant in the first place and wished to use the domain name for a specific purpose. The respondent noted that the complainant could pay for the domain name and in their exchange, alleged that the complainant had threatened them with legal proceedings. The complainant later offered to pay the respondent back for the registration fee.

The complainant claimed rights to the trademark and that the respondent's registration was unfair. The respondent's attempt to justify a legitimate interest in the lack of use of the domain name was evidence of bad faith. Any search of the mark would show that the complainant is an internationally known company, registering the mark as a domain name is evidence of bad faith. The respondent alleged that the domain name was reserved for a self-development program and DANONE was the acronym for Do A Number, ONE, to which the complainant disagreed that the acronym for the term would end up being DANONE.

The expert found the registered trademark to be identical. Bad faith is not a term used with unfair registration under the Policy. However, the list of factors under paragraph 5.1 as evidence of unfair registration is non-exhaustive. The expert did not find the respondent's reasoning believable due to how far-fetched the explanations end up sounding.

Link to NZLII Decision

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