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Aventis, Aventis Pharma SA. v. John Smith [2004] GENDND 1191 (22 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aventis, Aventis Pharma SA. v. John Smith

Case No. D2004-0565 and Case No. D2004-0624

1. The Parties

Within a few days of each other, two complaints were filed with WIPO by the same Complainants, Aventis of Schiltigheim, France and Aventis Pharma SA of Antony, France (hereafter “Complainant”), represented by Selarl Marchais De Candé, France, against the same Respondent, John Smith, of Ventura, California United States of America1. As the two cases involve the same Complainant against the same Respondent, coherence and expedition of proceedings require that both be resolved through one single decision.

2. The Domain Names and Registrars

WIPO Case No. D2004-0565 involves the domain name <aventisfoundationlottery.org>, registered with Melbourne IT trading as Internet Names Worldwide, and the domain name <aventisfoundationlottery.com>, registered with Enom Inc. WIPO Case No. D2004-0624 involves the domain name <aventislottery.org>, registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

Aventis v. John Smith WIPO Case No. D2004-0565

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2004. On July 29, 2004, the Center transmitted by email to eNom and to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain names at issue. Respectively on July 29, 2004 and on July 30, 2004, eNom and Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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 August 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2004.

Aventis v. John Smith WIPO Case No. D2004-0624

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2004. On August 10, 2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name <aventislottery.org>. On August 11, 2004, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules.

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 August 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2004.

The Center appointed Fabrizio Bedarida as the sole panelist in both cases, on September 10, 2004, and September 13, 2004 respectively. The Panel finds that they were properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence for both cases, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a well-known multinational pharmaceutical company and is the legitimate holder of several trademarks and domain names containing the word “AVENTIS”:

Trademarks:

“AVENTIS” French trademark No. 98 760 585 filed on November 23, 1998;

“AVENTIS” International trademark No. 708 890 registered on February 2, 1999;

“AVENTIS” Community trademark No. 993 337 filed on November 18, 1998.

Domain Names:

<aventis.com> registered on March 27 1998;

<aventis.net> registered on November 23, 1998;

<aventis.org> registered on November 25, 1998;

<aventis.biz> registered on March 27, 2002;

<fondation-aventis.com> registered on April 25, 2000.

The disputed domain names are:

<aventisfoundationlottery.com> registered on June 17, 2004;

<aventisfoundationlottery.org> registered on June 17, 2004;

<aventislottery.org> registered on June 25, 2004.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

1) That the disputed domain names < aventisfoundationlottery.com>, <aventisfoundationlottery.org> and <aventislottery.org> are confusingly similar to trademarks and domain names in which Complainant has rights.

2) That the disputed domain names reproduce entirely the trademark AVENTIS, neither the addition of the term “lottery” nor the term “foundation” being capable of distinguishing the disputed domain names from Complainant’s trademark and domain names. Indeed the use of the terms “lottery” and/or “foundation lottery” do not prevent the Internet users from thinking there is a link between Respondent’s domain names and the AVENTIS trademark.

3) That the addition of the descriptive terms “lottery” and “foundation lottery” lead Internet users searching information about AVENTIS activities to think the disputed domain names lead to the official web sites for the activities of AVENTIS as the organizer of a lottery as a means of fund raising, also considering that AVENTIS and the Institut de France have indeed created a foundation aimed at raising funds, with information retrievable on the web site “www.fondation-aventis.com”.

4) That the Respondent has no rights or legitimate interests in respect of the disputed domain names, that he is not commonly known by the disputed domain names and that he is not making any legitimate or fair use of them.

5) That Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the AVENTIS trademark.

6) That the Respondent registered the disputed domain names in bad faith, as it should have been aware of the existence of the Aventis Group, its trademarks and domain names and therefore have been aware of the risk of deception and confusion which would inevitably follow his registration and use of the disputed domain names.

7) That the Respondent has registered the domain names in order to abusively benefit from the Complainant’s notoriety.

8) That the Respondent has intentionally added the trademark AVENTIS to the terms “lottery” and “lotteryfoundation”, which let Internet users think that the disputed domain names are used by (or linked to) Aventis -- to raise funds.

9) That the disputed domain names have never been used in relation to active web sites therefore are being “passively held” by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Thus Respondent has failed to submit any Response. He has not contested the allegations in the Complaint and the Panel shall decide this proceeding on the basis of Complainant’s submissions, drawing such inferences from the Respondent’s default that it considers appropriate (paragraph 14(b) of the Rules).

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:

1) the domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain names; and

3) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the disputed domain names to be confusingly similar to the trademarks owned by the Complainant. As indicated by the Complainant and in accordance with many decisions rendered under the Policy the addition of descriptive terms to a trademark is not a distinguishing feature. In other words, the mere addition of the words “lottery” and/or “lottery foundation” does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademark (see A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner WIPO Case No. D2003-0844, Infospace.com, Inc. v. Tenembaum Ofer, WIPO Case No. D2000-0075, Sparco Srl v. Mr. Alexander Albert W. Gore/Ukrainian Cat. University WIPO Case No. D2003-0448, Toyota France and Toyota Motor Corporation v. Computer Brain, WIPO Case No. D2002-0002 and Microsoft Corporation v. J. Holiday Co., WIPO Case No. 2000-1493).

In the present case the Panel agrees with Complainant’s view that the addition of the terms “lottery” and “lottery foundation” to the trademark AVENTIS are more likely to increase than reduce the chance of confusion. In fact, fund raising being a second activity of Complainant, the risk that Internet users could think that the disputed domain names correspond to Complainant’s official web sites is real.

The Complainant has thus succeeded in proving evidence of the confusing similarity between its trademark and the domain names under dispute.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not appear to have any connection or affiliation with the Complainant, who has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating the AVENTIS trademark. Respondent does not appear to make any legitimate use of the domain names for his own commercial or non-commercial activities, in fact the domain names’ web sites are not active and lead to the same page. Respondent has not been known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the absence of any legitimate use and the Respondent’s failure to justify the use of the disputed domain name, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain names have been registered and are being used in bad faith.

In absence of contrary evidence, the Panel finds that, given the widespread use and fame of the Complainant’s AVENTIS trademark, the Respondent, who has chosen to register three domain names all - containing Complainant’s trademark, could not have ignored Complainant’s mark when he registered the disputed domain names. The fact that the Complainant’s trademark is clearly fanciful leads to the consideration that Respondent’s choice of domain names was deliberate. Moreover, the fact that Respondent added to the trademark AVENTIS the descriptive terms “lottery” and “foundation lottery”, terms which relate to one of Complainant’s activities is further inference that he knew of the Aventis Group and its activities. Thus, it appears that Respondent had actual knowledge of Complainant’s trademark when he registered the domain names. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As regards the non-use of the domain names by Respondent, the Panel agrees with Complainant’s allegation, that in this case the “passive holding” (namely – holding the domain name without using it), infers bad faith. As established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding. In the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concluded that inaction does not preclude a finding of “bad faith use” since what is relevant:

“…is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith…”

“.. the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept”

The Panel in that case found for the Complainant because Complainant’s trademark was well known, while Respondent was neither using the domain name, nor had shown any good faith use or intent to use the corresponding web site and it was not possible to find any legitimate use of the domain name by the Respondent.

This interpretation of “bad faith use” as including a non-justified holding of a domain name without either any activity on the corresponding web site or any legitimate right in the name has from then onwards been approved by a number of Panels (e.g.: Kentucky Fried Chicken International Holdings, Inc. v. Kimbeomsung, WIPO Case No. DRO2002-0004);

Moreover, the fact that Respondent chose to register three domain names - containing Complainant’s registered trademark, combined with the addition of generic terms which are descriptive of one of Complainant’s activities, with the passive holding of the same domains may be considered further inference of bad faith.

In view of all the above, Respondent’s registration and use of the disputed domain names constitutes use in bad faith within the meaning of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aventislottery.org>, subject of WIPO Case No. D2004-0624, and the domain names, <aventisfoundationlottery.com> and <aventisfoundationlottery.org>, subject of WIPO Case No. D2004-0565, be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist

Dated: September 22, 2004

1 Even if Respondent’s address appearing on the Whois of the domain name <aventislottery.org> slightly differs from the address related to the other disputed domain names, there are sufficient inferences to convince the Panel that the Respondent for these cases is the same. Specifically the fact that the registrants’ phone number is the same for all the domains, the fact that according to Fedex reports the addresses given by Respondent are both incorrect and finally the fact that all the disputed domain names lead to identical home pages.