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Sanofi-aventis, Aventis Pharma SA v. John Smith [2005] GENDND 196 (31 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis, Aventis Pharma SA v. John Smith

Case No. D2005-0140

1. The Parties

The Complainant is Sanofi-aventis, Paris, France and Aventis Pharma SA, Antony, France (hereinafter the Complainant) represented by Selarl Marchais De Candé, France.

The Respondent is John Smith, Ventura CA, United States of America.

2. The Domain Name and Registrar

The disputed domain name <aventislottery.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2005. On February 9, 2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On February 10, 2005, 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 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 February 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2005.

The Center appointed Luca Barbero as the sole panelist in this matter on March 16, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a multinational pharmaceutical company and is the owner of several trademarks registration consisting in the sign “AVENTIS” such as the French trademark n° 98 760 585 for AVENTIS, registered on November 23, 1998 in classes 1, 5, 10 and 31, the International trademark n° 708 890 AVENTIS, registered on February 2, 1999 in classes 1, 5, 10 and 31 and the Community Trademark AVENTIS filed on November 18, 1998 in classes 1, 5, 10 and 31.

The Complainant is furthermore the registrant of a number of domain names consisting in or including the sign AVENTIS such as <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; <aventis.us> registered on April 19, 2002.

The Respondent registered the domain name <aventislottery.com> on December 8, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant points out that Sanofi-aventis of which AVENTIS PHARMA SA is the French wholly subsidiary is nowadays one of the leaders of the pharmaceutical branch.

On December 31, 2004, Sanofi-aventis and Aventis merged. As a result, Aventis Pharma SA has become an affiliate company of the group Sanofi-aventis. Sanofi-aventis offers a wide range of patented prescription drugs to treat patients with serious diseases and has a leading position in a number of therapeutic areas, including respiratory/allergy, cardiology/thrombosis, oncology and diabetes.

The Complainant contends that disputed domain name <aventislottery.com> is confusingly similar to trademarks and domain names in which Complainant has rights as it reproduces the well-known trademark AVENTIS in its entirety.

The Complainant highlights that the only difference is the addition of the term “lottery” at the end of the disputed domain name which, according to the Complainant, is not sufficient to alleviate the likelihood of confusion between the aforementioned trademarks and the domain name registered by the Respondent. According to the Complainant the mere addition of “lottery” does not prevent Internet users from thinking there is a link between the disputed domain name and the AVENTIS trademarks for instance in relation with activities of Aventis as organizer of a lottery as means of fund raising.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name and that he is not making any legitimate or fair use of it. Furthermore, the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the AVENTIS trademark nor there was any relationship whatsoever between the parties.

According to the Complainant, there is no doubt that the Respondent has registered in bad faith the domain name which corresponds to the trademarks and domains names owned by the Complainant and the Respondent was undoubtedly aware at the time of the registration of the existence of the identical trademarks and domain names in light of the notoriety of such trademarks.

The Complainant states that the bad faith of the Respondent is also demonstrated by the fact that the Complainants have already filed and prevailed in prior decisions against the same Respondent such as WIPO Case No. D2004-0565 and WIPO Case No. D2004-0624 relating to the domain names <aventisfoundationlottery.com>, <aventisfoundationlottery.org> and <aventislottery.org> and WIPO Case No. D2004-0850 Aventis Pharma SA., Aventis v. John Smith relating to the domain names <aventislotto.com>, <aventislotto.org> and <aventislotto.net>.

As a circumstance evidencing bad faith in the use of the domain name, the Complainant highlights that the disputed domain name has never been used in relation to active websites and is therefore being “passively held” by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. Therefore the Panel shall decide this proceeding on the basis of Complainant’ submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registration such as the French trademark n° 98 760 585 for AVENTIS, registered on November 23, 1998 in classes 1, 5, 10 and 31, the International trademark n° 708 890 AVENTIS, registered on February 2, 1999 in classes 1, 5, 10 and 31 and the Community Trademark AVENTIS filed on 18 November 1998 in classes 1, 5, 10 and 31.

The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, including the two ones mentioned above in Section 5.A. between the same Complainant and Respondent, the addition of descriptive terms to a trademark is not a distinguishing feature.

Therefore, the mere addition of the word “lottery” does not exclude the likelihood of confusion between the domain name and the Complainant’s trademark. See along these lines 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, Tickmaster Corporation v. Dotsan, WIPO Case No. D2002-0167; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094.

In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademarks of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.

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 may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that he has 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 prior to the dispute;

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

(c) that he 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.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.

Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according 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 website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

In light of the decisions rendered between the same parties prior to the Respondent’s registration of the disputed domain name, the Respondent was certainly aware of the existence of the trademark AVENTIS at the time of the registration of <aventislottery.com> .

The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name 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).

Furthemore, since the Complainant’s trademark is well-known, the Panel shares the view of a number of Panel findings of “opportunistic bad faith” in the registration of renown or even somewhat less famous trademark e.g. Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368, Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050, The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103.

With reference to the issue of the non use of the domain name by Respondent, the Panel finds that in this case the “passive holding” infers bad faith, also in light of the pattern of prior registrations by the Respondent of similar domain names by adding “lotto” or “lottery” to the trademark AVENTIS. As also 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; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that (a) the Domain Name registered by the Respondent is confusingly similar to the Complainant’s trademarks, that (b) the Respondent has no rights or legitimate interests in respect of the Domain Name and (c) that the Domain Name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the Domain Name <aventislottery.com > be transferred to the Complainant.

Luca Barbero
Sole Panelist

Date: March 31, 2005