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
******

 

[nyunyu]

Why not offering them the domains and earn yourself a big bucks?

 

[jido]

Why not offering them the domains and earn yourself a big bucks?

And be a cybersquatter?

http://www.avivadirectory.com/domain-law/

 

[nyunyu]

Ahh, sorry for that..I totally forgot about the cybersquat thing.
Well, I guess unpark the domain would be a good idea. Or perhaps customizing the landing page so the ads will not relate to the copyright.

 

[jberryhill]

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.

This is why it is good to know who and what you are dealing with.

Nathalie is herself a UDRP panelist and member of the ICANN intellectual property constituency. She's much nicer in person than in correspondence, but doing domain disputes is most of her business.

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1630.html

The Complainants are Compagnie Gervais Danone, France, and The Dannon Company Inc., United States of America, represented by Cabinet Dreyfus & Associés, Paris, France.


Do they go after .mobi names? Direct answer:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1451.html

The Complainant is Compagnie Gervais Danone, of Paris, France, represented by Cabinet Dreyfus & Associés, France.

The disputed domain name <danonepeople.mobi> is registered with GoDaddy.com, Inc.

 

[DNQuest.com]

Ahh, sorry for that..I totally forgot about the cybersquat thing.
.

How in the heck do you forget about the "cybersquat thing"????? That should be the very first thing you learn about this business.

 

[mhdoc]

This is why it is good to know who and what you are dealing with.

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1630.html

From that link I see "In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007."

It looks like there was an initial contact followed by two more about 30 days apart from the attorney directly to the registrant. At that point it was made formal and the messages/rules quoted above went into effect.

So, there were four contacts, but only the last one, from the official organization, really started the process of taking away the domain. It provided a 21 day window to respond.

So as a strategy for dealing with this would the following make sense?

1. First contact from complaining party. Ignore, but save the email.
2. 2nd contact from complaining party. Ignore, maybe do a little research on who the sender is.
3. 3rd contact from complaining party. Ignore, but research your position and have a folder ready for presentation to your attorney.
4. First contact from the wipo folks. This is real, time to fight or run.

The main point I think is that there is a process in place with required notifications. No one can just send an email one day and jerk the name a day or two later.

 

[DNQuest.com]

So as a strategy for dealing with this would the following make sense?

1. First contact from complaining party. Ignore, but save the email.
2. 2nd contact from complaining party. Ignore, maybe do a little research on who the sender is.
3. 3rd contact from complaining party. Ignore, but research your position and have a folder ready for presentation to your attorney.
4. First contact from the wipo folks. This is real, time to fight or run.

The main point I think is that there is a process in place with required notifications. No one can just send an email one day and jerk the name a day or two later.

There is no required notifications needed to start any proceedings.

Example 1

1- File WIPO

Example 2

1- File lawsuit


Yes, anyone can send a C&D, either in email or letter form. It does not have to be pretty, it does not have to be legal jargon filled. It does not have to come from a lawyer. So there is no real "process", there is a usually, but it does not ahve to be followed.

 

[mhdoc]

There is no required notifications needed to start any proceedings.

However, as I understand you, proceedings themselves start with a required notice which includes a response time. Notice could be service of a summons with a judges signature or an email from WIPO?

Any other kind of communication has no legal force?

 

[DNQuest.com]

However, as I understand you, proceedings themselves start with a required notice which includes a response time. Notice could be service of a summons with a judges signature or an email from WIPO?

Correct

Any other kind of communication has no legal force?

Correct, but it establishes a timeline

 

[labrocca]

I wouldn't respond to the first email either. If they really want it they will send you a second notice in all likelihood. If this goes UDRP would you even bother to defend it? So why bother to respond to these emails? If they want it...they can either send you an offer that you don't solicit or they can pay to UDRP the domain and get it that way.

Obviously as John pointed out the person is a panelist. I think ANY response will most likely be used against you. And yes...I am sure even ignoring her emails will be harmful but less harmful than replying imho.

I guess you have to ask yourself what do you want? Do you want to keep it? Do you want to sell it? Are you planning to develop it? Figure it out sooner rather than later.

 

[advaita]

The whole thing to me sounds ridiculous. Danette and Danet are obviously two different words and in French they aren't even pronounced the same - Danet would be pronounced 'Danay' rather like 'Bidet' not like 'toilette' where this should be flushed.

If they are going to start pursuing anybody with 'Danet' - then why not Dannet, Danett, Daanet, Daanett, Dahnet etc... etc... can they claim to own every combination of dnt + vowels ? It all sounds bllx to me

 

[johntv]

Thanks all for the comments! Rep added. As I have regged the name in good faith I feel kind of silly to just give it up easy, so I won't do that (at least not now anyway).

I'm kind of in between not responding, like labrocca, mhdoc and others mentioned, or sending a (very) short email, maybe asking for a phone number to give her a call after the weekend to hear what she has to say, as John Berryhill (thanks for your reply!) mentioned that she is much nicer in person and see if they come with a kind of 'solution'. If I email that I call her, she might already starts to think of something.

I'll sleep at least one night over it and will decide this weekend what to do.

Will keep you all posted.

Does anyone know that if it goes to a Wipo (UDRP) and I defend myself and end up loosing the name, is that all I loose? Just the name? As it could be an interesting and informative experience.

It makes me think though, registering a name in good faith, just park it at a parking company (I took the name off now) and it shows one time some TM related ads which a TM holder sees, you can loose a name just like that?

It might be true, but in that case we all have to be really careful which names to park and how (what ads) and hope the ad providor will not make any mistakes showing the wrong ads.

 

[IAmAllanShore]

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:

 

[Name Trader]

It makes me think though, registering a name in good faith, just park it at a parking company (I took the name off now) and it shows one time some TM related ads which a TM holder sees, you can loose a name just like that?

Yep. It's that easy.

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:

You just beat me to that comment, Allan. Your reputation in good standing is worth it's weight in gold.

 

[johntv]

Think I will reply to them later today or tomorrow with this (thanks Allan for amending the original text a bit):


******
Dear Nathalie,

Thanks for your email.

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

'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. The word 'Danet' in all major tld's is registered by other people or companies then Danone as well.

However, I have taken the site down, until I have completed developing it, to ease your clients mind.

If you still need any additional information, please let me know. If necessary, you can also leave your phone number and I can give you a call next week.

With kind regards,

John van den Berg
******


The reason to reply is that they probably will start a WIPO if I don't reply

Nathalie is herself a UDRP panelist and member of the ICANN intellectual property constituency. She's much nicer in person than in correspondence, but doing domain disputes is most of her business.

and as they do go after .mobi names as well

Do they go after .mobi names? Direct answer:
http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1451.html

I figured it might be better to stay in touch with them for now.

 

[Hopper]

******
Dear Nathalie,

Thanks for your email.

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

'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. The word 'Danet' in all major tld's is registered by other people or companies then Danone as well.

However, I have taken the site down, until I have completed developing it, to ease your clients mind.

If you still need any additional information, please let me know. If necessary, you can also leave your phone number and I can give you a call next week.

With kind regards,

John van den Berg
******

Question:

Would it be wise to ask if they are taking action against the other tld's? Would this help any case if they were not?

 

[smashfactory]

i guess i still dont get it- i never heard of danet- but if it is a geo, isnt it a word that cant be trademarked in itself? can you trademark california? maryland?

can you just say you have visited the wonderful town of danet and the site you own is a geo?

 

[italiandragon]

i guess i still dont get it- i never heard of danet- but if it is a geo, isnt it a word that cant be trademarked in itself? can you trademark california? maryland?

can you just say you have visited the wonderful town of danet and the site you own is a geo?

sure, problem is that HE PARKED it and it showed DANONE`S products!!!

That`s how he would lose it if they insist.

 

[labrocca]

That's a better response imho. Short and to the point without really admitting anything.

 

[advaita]

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.