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
******

 

[Kate]

He didn't show Danone's products !!! As I understand it he had no control over the ads that were displayed and they were geo specific so only some country's got to see Danone products.

You are right, he has no control over the ads but that's still not an excuse. That's all it takes to establish proof of TM infringement.

 

[advaita]

Personally I still don't see how Danet can be considered to be the same as Danette - they are not even pronounced the same in French - cyberbullying at its worst IMHO

 

[jberryhill]

Her telephone number is: +33 (0) 1 44 70 07 04

I believe outside of France, you don't have to dial the 0 - YMMV

Now for the carnival of lunacy....

'Danet' is a very common generic name used as female first name, name of a place and is used in all different kinds of projects.

All of which are absolutely irrelevant to any evidence of why you registered the name and why the page was showing yogurt products. A pair of scissors can be used for lots of things too, which is completely pointless when my scissors turn up in the back of a murder victim.

However, I have taken the site down,

...so be sure to mention in your complaint that, when notified, I admitted there was a problem by changing the site.

Oy....

4. First contact from the wipo folks. This is real, time to fight or run.

...except by the time you hear from WIPO, the registrar has already confirmed the whois to WIPO and has locked the name; and you can't transfer the domain name because the registrar won't allow it, under the UDRP rules.

 

[jido]

However, I have taken the site down,

...so be sure to mention in your complaint that, when notified, I admitted there was a problem by changing the site.

Oy....

Is that bad??

 

[flamewalker]

Is that bad??

In one word: yes. Its an 'acknowledgment' of sorts of doing something wrong, from what I understand. At least in the eyes of WIPO.

 

[johntv]

Email is sent just now, I have changed it a little bit after the comments of John Berryhill (thanks for the phone number as well) and others.


******
Dear Nathalie,

Thanks for your email.

Although I have heard about Danone, I have never heard or noticed the product 'Danette'.

'Danet' is a common name used as female first name, name of a place (the reason I registered it) and is used in all different kinds of projects. The word 'Danet' in all major tld's is registered by other people or companies then Danone as well.

Although the keywords chosen by the parking company and the site itself didn't show any links to 'danette', I have taken the site down, until I have completed developing it, this in order to ease your client's mind.

If you still need any additional information, please let me know or, if necessary, I can give you a call next week.

With kind regards,

John van den Berg
******


Will keep you all up to date.

 

[johntv]

After over a week, no reply yet.

Makes me wonder if I just have to make a call anyway, send a short email, something like this:

------
Hi Nathalie,

As a follow up, can you confirm if everything is okay?

Just let me know if you have any questions or need some additional information from me.

Thanks, John.
------

or just wait and assume it's all okay

 

[flamewalker]

Personally I would wait...no sense in reminding them that they want your name

Let them come to you. imho.

 

[Pommy - The DN Doc]

Losing 1 UDRP makes future panelists look "down their nose" a bit at you, should another domain of yours end up in dispute again, so you don't just lose the domain.

-Allan :gl:

Thanks a bloody good point!

 

[Badger]

Hey John, just tread carefully my friend..

Id offer a few bullet points of advice: 1. Dont do this yourself. 2. The fact that the "other" John (who sticks wet towels under his door ) has given you the heads up that he knows this Woman speaks volumes to me. 3. If you don't value the name, hand it over. 4. If you feel you are in "the right", then contact John B directly and let him offer his (paid) professional advice. 5. Do not send emails to her yourself.

Aside from that I hope youre safe and well in Kenya.

Best

Ian

 

[IAmAllanShore]

1. Dont do this yourself.

We do often forget the heaviest cost: "ourselves".

Nicely done, Ian.

-Allan :gl:

 

[johntv]

1. Dont do this yourself. 2. The fact that the "other" John (who sticks wet towels under his door ) has given you the heads up that he knows this Woman speaks volumes to me. 3. If you don't value the name, hand it over. 4. If you feel you are in "the right", then contact John B directly and let him offer his (paid) professional advice. 5. Do not send emails to her yourself.

Hi Ian, thanks for your advice, I've followed it up and sent a PM and email to John Berryhill to request for his services.

Aside from that I hope youre safe and well in Kenya.

Things have slowed down and life is almost back to normal in Kenya, although the tourist industry had a major blow as all flights to Kenya are practically empty.

 

[johntv]

Almost two months further, here is an update.

After sending my reply to their lawyer, I had not heard from them, I also didn't get a reply from John Berryhill, untill I received a reminder last week with basically one question: "if I would agree to transfer the domain name".

I called them and again they made it clear that they wouldn't let me keep the name, I told them I'll think about what to do and get back.

In short, here are the 'facts':

Pro:
- Danette is TMed, not Danet.
- I registered it as it's a place near Abu Dhabi, I have actually been there and can show flight and hotel tickets if necessary.

Con:
- A Danette product ad was shown on Danet.mobi as it used to be parked.

I know the name is probably not worth the fight, although I prefer to take it serious and search all possiblities to keep the name and learn from it, in case next time someone will go for a much better name.

If the chance is low to win, I will give up the name and learn from it, I've already unparked my LLL.com's and premium LLLL.com's. Although if the chance to win is reasonable, I prefer not to give up the name.

- Do you think there is a reasonable chance to win? Or is having only an ad of a TMed product already enough to loose the name?
- Does anyone know about a similar example using only a parked ad to win a case, even though the name is no TM from them?
- Does anyone know or has experience in the costs of having a lawyer involved in case of a WIPO?

 

[flamewalker]

I don't know about your chances, but some lawyers will work pro bono if you are on the receiving end. Ive talked to lawyers that charge anywhere from $5000 to $15-20k to fight for a name (if you are the aggressor).