Letter from Danone - French corporation.

[johntv]

Hi,

I received this letter today and would appreciate any advice on how to handle this. The matter is my name 'danet.mobi' and they claim it's theirs as they have a TM on 'Danette'.

It's kind of funny the letter is addressed to 'Dear Sirs' and sent by a woman

In my opinion:
- 'Danet' is not similar to 'Danette' and, although I know of Danone, I have never heard of this product 'Danette'.
- The word 'Danet' in all major tld's is owned by other people then Danone as well.

Any advice is highly appreciated, thanks!


******
Paris, January 31, 2008

RE: domain name <danet.mobi>
O/Ref: F2084 OP 166/ OP

Dear Sirs,

We are acting as Intellectual Property Attorneys on behalf of the French
Company COMPAGNIE GERVAIS DANONE, which head office is 17, Boulevard
HAUSSMANN, 75009 Paris.

COMPAGNIE GERVAIS DANONE is a subsidiary of the GROUPE DANONE.

As you are aware, our client is a worldwide leading company in fresh dairy
products and bottled water. It owns numerous trademarks protected around the world, which are very well-known especially in the field of food products.
It owns particularly the trademark “DANETTE” protected in many countries.

DANETTE is a very popular dessert dedicated to both children and adults.
DANETTE is available through a wide range of flavours.

“DANETTE” is one of our client’s main trademark for superior quality fresh
dairy products. It is an extremely valuable asset that must be protected
against infringement and other misuses that dilute and weaken its scope of
protection and the favourable reputation this mark has achieved.

COMPAGNIE GERVAIS DANONE owns numerous registered trademarks DANETTE around the world, such as the following trademarks:

* DANETTE N°569 704, filed in Kenya on May 6, 1991;
* N°797 657, filed in Kenya on December 23, 2002 ;
* DANETTE N° 529 820 filed in France on October 5, 1979 and duly renewed;
* N°93 458 854 filed in France on March 10, 1993 ;
* DANETTE N°364 756 filed on January 8, 1970 and duly renewed
(international trademark);

Our client is aware of the creation and the use of the domain name
<danet.mobi>.

The following links are available on the site where the <danet.mobi> domain
name directs: “danone”, “danette” and “activia”.

The use of the trademark DANETTE and the registration of such a domain name have obviously been done in bad faith and create a risk of confusion in the mind of consumers which cannot be tolerated.

The domain name <danet.mobi> contains and reproduces our client’s trademark DANETTE.

The registration and use of the above mentioned domain name constitute an
infringement to the Trademark Act, which prohibits reproduction, use or
affixing of a mark without the authorization of the owner of the registration.

Besides, it also constitutes an unfair competition act to direct Internet
users searching for DANETTE products to a page containing links such as
“danone”, “danette” and “activia”.

This behaviour maintains a likelihood of confusion in the Internet web
searchers minds who will wrongly believe that the domain name is registered
by COMPAGNY GERVAIS DANONE.

Nevertheless, our client would be prepared to find an amicable settlement
providing that you:

- immediately cease the use of said domain name;
- transfer the domain name <danet.mobi>;
- take the engagement in writing and on a letter headed paper not
to use the mark “DANETTE” in the future;
- assume the costs regarding this matter.

We expect to receive confirmation of your undertaking with written proof
within the next 48 hours.

Otherwise our client will have no other possibility than instituting
judicial or extrajudicial legal proceedings.

We remain at the disposal of your legal advisor.

Yours faithfully,

Nathalie Dreyfus
******

 

[lola99]

I am not a lawyer but it looks like if they start a lawsuit they're going to be buzy going after you and:

http://www.danet.com/
http://www.danet.net/
http://www.danet.org/
http://www.danet.dk/
http://www.danet.ne.jp/
http://www.danet.com.au/
http://www.danet.com.tr/

etc. Just about all danet.TLD....

Dictionary. com send to acronymfinder (http://www.acronymfinder.com/af-query.asp?Acronym=DANET&p=dict)

DANET = Data Network more info from TheFreeDictionary.com
DANET = Data Administration Network (DON wide)

Acronymfinder doesn't say a word about Danone or Danette.

If you don't use their brand, names or whatever on your site I really have hard time thinking they can do anything at all.

L.

 

[johntv]

Thanks for the advice lola99, rep added.

 

[-REECE-]

I work in a grocery store and I've never heard of their product :lol:

Danone is fairly well known, but danette? I'd like to see them try and prove that was registered in bad faith...

Perhaps time for a carefully worded reply that you'd be open to offers without making it look like you registered the name in bad faith :hehe:

A couple g's for the .mobi would be a nice settlement for everyone -- and I'm willing to bet they paid those lawyers that already to tackle this case...

 

[bricio]

danette is really very well known in some countries
danette in brazil and a brief explanation in wikipedia

i am not an attorney but i think the names are different but it was said many times here in similar threads saying the fact you dont know a TM doesnt mean you are not responsible for having reg'd it

 

[johntv]

Thanks for the advice Reece and Bricio (rep added), I will make an email later today to them and will post it here before sending it, will keep it short, but to the point.

 

[Kate]

I see that the name is parked.

I do not see any infringing links on my end but the lady says:

The following links are available on the site where the <danet.mobi> domain
name directs: “danone”, “danette” and “activia”.

Obviously the links are IP/location/language-dependent.
Parking can pose problems because the domain owner has limited control over which ads are served to visitors, but it can still land you into TM issues when problematic sponsored links do appear.

I would unpark the name as a good faith gesture. Also you can ask for a screenshot (on their end) as proof. But I would be surprised they don't have certified screenshots.

These people are no jokers. You can resist their demands but I could see them WIPOing the name as a matter of principle. I doubt they really want the name - here it is more a case of TM typosquatting.
Govern yourself accordingly
http://www.dreyfus.fr/

 

[bradocconor]

I used to date a girl in the US named danet

 

[cybertonic]

Danette is a chocolate yogurt very popular for +25 years in France and other countries.
Danet and Danette when read sounds exactly the same.
And if you are showing ads about “danone”, “danette” and “activia” then you are clearly using the domain name in bad faith according the law.

 

[IAmAllanShore]

I see that the name is parked.
...
I would unpark the name as a good faith gesture. Also you can ask for a screenshot (on their end) as proof. But I would be surprised they don't have certified screenshots.

Unparking: a good idea typically. In this case my hunch would be that it would be smart as well. Asking for a screenshot for proof is almost doing their work for them, and establishing a "lower bar" than is necessary for them to clear and have something to point to and say, "Look - we did what he asked, we're the good-guys here!"

But John, the ultimate test may be to ask yourself, "Why did you register the domain?" If it was for this yogurty product (yes?), then you may have answered your own question. However, searching for "danet" I can't find any of their products unless I am entirely missing the point here... http://www.google.com/search?q=dane...s=org.mozilla:en-US:official&client=firefox-a

It feels kind of like that old joke where you have someone hold their tongue and say "Apple"...

Best of luck,
-Allan :gl:

 

[johntv]

Thanks for all the advice so far
This is the email I like to sent to them:

******
Dear Nathalie,

Thanks for your email.

In my opinion, 'Danet' is not similar to 'Danette' and, although I have heard about Danone, I have never heard or noticed the product 'Danette'.

Furthermore, I couldn't find any registered and valid TM's on 'Danet' owned by your client.

'Danet' is a very common name used as female first name and all different kind of projects. The word 'Danet' in all major tld's is registered by other people or companies then Danone as well.

Although I couldn't find any 'infringing links' on the site, I have 'unparked' the name for your clients convenience.

If you still need any additional information from my side, please let me know.

Kind regards,

John van den Berg
******

Is there anything you would think is good to change, delete or add?

How serious is this replying within 48 hours thing, it seems kind of short?
Suppose I'm travelling and don't see the email within 2 days?

After I sent it I will keep everyone up to date as I will not give away this name easy as I definetely did not reg this one in bad faith.

Thanks, John.

 

[mhdoc]

How serious is this replying within 48 hours thing, it seems kind of short?
Suppose I'm travelling and don't see the email within 2 days?

I don't understand the compulsion folks seem to feel about responding to these things. By responding you provide proof their message reached you so they can now be certain it's a good address. A letter from a lawyer has no more standing than a letter from anyone else. Civil disputes normally have some sort of due process that must be followed. For civil matters in the USA, the first communication that matters is when a process server shows up and delivers a document with a judges signature. Any communication to/from you before that is just possible evidence to be used against you.

When you respond you are in effect acting as your own attorney because you are giving the other side your thoughts, justifications, motives while you are probably ignorant of fundamental legal considerations. If this gets serious and you end up retaining an attorney you stand an excellent chance of having made his job of defending you difficult or impossible.

 

[IAmAllanShore]

I would lose these two lines - don't give them fodder to work with.
--------
In my opinion, 'Danet' is not similar to 'Danette' and, although I have heard about Danone, I have never heard or noticed the product 'Danette'.

Furthermore, I couldn't find any registered and valid TM's on 'Danet' owned by your client.
--------


...
And Change this line:


Although I couldn't find any 'infringing links' on the site, I have 'unparked' the name for your clients convenience.


To:
Although there are not any links related to your products on the site, I have taken the site down until I have completed developing it in order to ease your client's mind.

Or something similar.

That being said, I personally would not respond at all, most likely - but that's just me, not advice to you.

Just my .02, the other way reads like "I'm snotty - bring it on" to me.

-Allan :gl:

 

[johntv]

Asking for a screenshot for proof is almost doing their work for them, and establishing a "lower bar" than is necessary for them to clear and have something to point to and say, "Look - we did what he asked, we're the good-guys here!"

But John, the ultimate test may be to ask yourself, "Why did you register the domain?"

Thanks Allan, I took your advice and will not ask them for proof, I think it's better to keep the information to them short and to the point, also after reading mhdoc's post this might be a good idea.

'Danet' is an United Arab Emirates GEO, near Abu Dhabi, I have been twice to the UAE and noticed the .mobi version of this GEO was available, that's the reason I regged this name.

 

[smashfactory]

its a geo to boot?

 

[labrocca]

I would ignore them. So what if they do WIPO...it's a nearly worthless mobi names too. Does it make ANY money for you parked?

Replying in this case imho is a bad idea. Give them time and see if they make a second contact.

 

[flamewalker]

I second labrocca... do not reply. I did not reply to one that was sent to me and they never followed up. They may just be trying to one-off scare you. Wait until you receive a certified letter in the mail before you reply.

If they do follow up with a certified letter, then you can let them know you unparked it while you develop it.

^^IMHO: not legal advice

 

[Dave_Z]

I don't understand the compulsion folks seem to feel about responding to these things.

A dilemma here is when can one safely ignore a complaint and when should it
be replied to and disputed. This is one of those things where not replying can
result in a loss...or worse.

Note: I said can, not will. For a surefire answer, consult a psychic.

Good luck to the OP trying to resolve this issue, especially if the mark holder
starts getting potentially unreasonable.

 

[italiandragon]

Danet was used by Danone in Italy too (at least till I was living there , 2004) and advertised on TV.


Obviously these people do not know that those links were showing not because you choosed to , but because where it was parked I assume the parking company found the nearest keywords match so it`s not your faulth but by parking it and with those keyword , I bet that if they start any UDRP, you`ll lose it after the recent similar cases.

Reply is courtesy and with them you should explain why those links appearead explaning that won`t happen anymore and was not your intention. If they really want it , I feel you are too late to win.

Good luck

 

[jido]

Danone is one of the largest food companies in the world (market value 28 bil €).

They do have a product called Danette, and in some countries Danet sounds the same. If you have links to dairy products on your page you are at fault. Maybe you can negociate with them, yes. First take down the links.