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Sanofi-Aventis and Aventis Pharma SA v. Jonathan Valicenti [2005] GENDND 2105 (16 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis and Aventis Pharma SA v. Jonathan Valicenti

Case No. D2005-1082

1. The Parties

The Complainants are Sanofi-Aventis, France and Aventis Pharma SA, France, both represented by Selarl Marchais De Candé, France.

The Respondent is Jonathan Valicenti, Canada.

2. The Domain Name and Registrar

The disputed domain name <aventispasteurindia.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2005. On October 14, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 14, 2005, Go Daddy Software 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on October 20, 2005. The Center verified that the Complaint together with the amendment to 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 October 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2005.

The Center appointed Adam Samuel as the sole Panelist in this matter on November 29, 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

Sanofi-Aventis (the “First Complainant”) owns Aventis Pharma SA (the “Second Complainant”) and has designated the Second Complainant to manage all the domain names belonging to the Sanofi-Aventis group.

The First Complainant is one of the largest pharmaceutical companies in the world. It was created by the merger in 2004 of Sanofi-synthelabo and Aventis. It operates in more than 100 countries and over five continents. It provides drugs and vaccines to treat and prevent a wide variety of conditions.

The First Complainant registered the trademark AVENTIS in France in 1998. It also has international and European Community (now Union) trademark registrations dating from 1999 and 1998 respectively for the same name.

The First Complainant and/or the Second Complainant have registered a variety of domain names to present their activities and goods over the Internet. These include <aventispasteur.com> and <sanofipasteur.com>.

The Respondent registered the domain name, <aventispasteurindia.com>on March 28, 2005.

5. Parties’ Contentions

A. Complainant

The domain name in dispute reproduces entirely the trademark AVENTIS which has no particular meaning and the words “pasteur” and “India”. These two descriptive terms when added to the otherwise meaningless trademark result in the domain name being confusingly similar to the trademark to which the First Complainant owns the rights.

The word “Pasteur” reflects the fact that the Complainant’s vaccination division is called “Sanofi Pasteur” and was before the 2004 merger, called “Aventis Pasteur”. The website address, <aventispasteur.com> registered by the First Complainant takes anyone seeking it to <sanofipasteur.com>, a domain name registered by the First Complainant. Consequently, the addition of the word “pasteur” does not detract from the impression that the domain name in dispute is connected to the Complainant and its trademarks. It just increases the likelihood that members of the public will think that the disputed domain name relates to the activities of the vaccination division of the Complainant. The suffix “India” just contains a geographic indication suggesting that the disputed domain name relates to the Complainant’s vaccination division’s activity in that country.

The Respondent has no legitimate interest in the domain name in dispute. The First Complainant has not authorized the Respondent to use its trademarks and neither Complainant has any relationship with the Respondent except as competitors.

The website available at the disputed domain name leads users to a site offering discounts on prescription drugs. The Respondent does not need the dispute domain name since he presents his activities already through the address <pharmawebcanada.com>.

The Respondent has used the facilities offered by domains by proxy to register the disputed domain name with a view to hiding his identity because he knew that he had no right to use the name in question.

The Respondent almost certainly knows of the First Complainant’s trademarks and the disputed domain name has clearly been registered by reference to those marks. He must have appreciated the risk of confusion and deception that would follow if he registered the domain name concerned since its name would give the impression that the Complainants endorsed the website concerned.

The Respondent has a history of cybersquatting, demonstrated by a previous UDRP Panel decision against him relating to the domain name <bylantus.com>.

The Respondent uses the site to create links through which consumers can purchase discounted drugs. The Respondent is using the domain name to divert traffic to his website which sells products competing with the First Complainant and so disrupt the First Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant must prove that

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The First Complainant owns a trademark registration for the name AVENTIS.

The addition of a generic word and a gLTD to a registered trademark has long been accepted by WIPO UDRP domain name panelists as indicating that the domain name is confusingly similar to the trademark in question. Here, the Respondent has added a generic word “pasteur” which probably relates to Louis Pasteur, a pioneer in the development of vaccinations. This is also the name of the vaccination division of the First Complainant.

As the Panel said, on the addition of generic terms, in Deutsche Bank Aktiengesellschaft v. New York TV Show Tickets, Inc., WIPO Case No. D2001-1314:

“A disputed domain name which consists of the Complainant’s mark plus the addition of a descriptive word linked to the services that the Complainant markets can be confusingly similar to a mark. See Harrods Lt v AB Kohler & Co – (WIPO Case No. D2001-0544) decision July 31, 2001, over the names <harrodswatch.com> and <harrodsjewellery.com>. PBS Bank Schwetz A.G. v. Tuzen (WIPO Case No. D2001-1311) is a case where the word ‘bank’ was added in the disputed domain name to the registered mark PBS. The Complainant was a well-known supplier of banking services. The Panel held that it was the juxtaposition of the word ‘bank’ with the letters of the mark which changed the whole complexion of the domain name from being one depicting anything at all to one connected with a banking institution.”

Finally, the domain name contains a country’s name. This if anything exacerbates the confusion between the domain name and the First Complainant’s trademark. As the Panel said in PepsiCo, Inc, Inc. v. QWO, WIPO Case No. D2004-0865:

“… forming a domain name, such as the disputed domain name here, by appending a country name (here Afghanistan) to a complainant’s mark (here being ‘PEPSICO’) is completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates rather than ameliorates the confusion. The simple reason is that, given well-known and widely followed naming conventions in forming domain names, Internet users in a given country or who have an interest in that country and desire to reach a website of a corporation or other entity operating in that country would likely think to construct a domain name by simply appending the name of the country to the name or mark associated with that corporation or entity followed by the general commercial gTLD “.com”. Consequently, it stands to reason that Internet users in or having an interest in Afghanistan and who seek to reach the Complainant’s site for information on its ‘PEPSI’ or ‘PEPSICO’ branded products in Afghanistan would, as a first measure, instinctively form a domain name containing either “Pepsi” or “Pepsico” followed by “Afghanistan” and ending in “.com”, and possibly hyphenating the name or not. Not surprisingly, the Respondent has formed the disputed domain name in precisely that way and did so clearly to cause and then commercially benefit from whatever user confusion would inevitably result there from.

See, e.g., AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 where the Panel found confusing similarity to the mark AT&T by domain names formed by including a geographic descriptor following the term AT&T. See also America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713 in which the Panel held: “The addition of the name of a place to a service mark, such as the addition of ‘France’ to ‘AOL’ is a common method for specifying the location of business services provided under the service mark. The addition of a place name generally does not alter the underlying mark to which it is added.” The Panel then concluded: “A consumer or user of the Internet viewing the address ‘www.aolfrance.com’ is likely to assume that Complainant is the sponsor of or associated with the website identified by the disputed domain name, particularly in light of the fact that Complainant routinely uses its ‘AOL’ service mark in combination with country names in its advertisements on the Internet.” See also Cable News Network cited supra, where the Panel, including this Panel, found confusion likely to occur between the mark “CNN” and a wide number of domain names that each included this mark followed by a different country name. For similar holdings, see, Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028”

For all these reasons, the Panel concludes that the domain name is confusingly similar to the trademark AVENTIS, in which the First Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not called ”Aventis” and does not appear to trade under that name. There is no evidence that the First Complainant, the owner of the trademark in question has authorized the Respondent to use the trademark. The Respondent has not asserted any rights or legitimate interests in the name. Based on the case file, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The Respondent registered a domain name referring to a well-known trade name with which he has no association. He added to it the name of a division of the owner of the relevant trademark or the name of a famous scientist involved in the development of medicine. The website located at the relevant address diverts users to a number of websites offering various medicines in competition with the First Complainant, presumably on the basis that the Respondent receives profits from the sales or payment for the click-throughs to the listed sites.

Paragraph 4(b) of the Policy says:

“For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith:”

….

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The evidence here suggests both of these two factors. It defies belief that someone involved in the pharmaceutical industry could register a domain name using one of the best known brands, adding the name of its vaccine division and a country without doing so in bad faith in order to disrupt in some way the trademark owner’s business or divert business from that owner to himself.

For all the above reasons, the Panel concludes that the domain name was registered and is being used in bad faith.

D. Remedy requested

There is a small issue here as to the remedy. The Complainants have requested the cancellation of the domain name, not its transfer. For the reasons indicated above, they appear to be entitled to the remedy sought.

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, <aventispasteurindia.com> be cancelled.

______________________________

Adam Samuel

Sole Panelist

Date: December 16, 2005