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Sanofi-Aventis, Aventis Pharma SA v. Mary Lee [2005] GENDND 225 (23 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-Aventis, Aventis Pharma SA v. Mary Lee

Case No. D2005-0100

1. The Parties

The Complainant is Sanofi-Aventis, Aventis Pharma SA, of France (the “Complainant”), represented by Selarl Marchais De Candé, France.

The Respondent is Mary Lee, Ventura, of United States of America (the “Respondent”), according to Enom Inc.’s WHOIS database showing the Registrant (Complaint, Annex 1).

2. The Domain Name and Registrar

The disputed domain name <aventislotteryservices.org> is registered with Enom Inc.

3. Procedural History

The Complaint was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2005, in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, 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”). On February 1, 2005, the Complaint was received in hard copy.

On January 28, 2005, the Center sent an Acknowledgement of Receipt of Complaint to the Parties. The communication was made to the Respondent by e-mail.

At the Center’s request for registrar verification of January 28, 2005, concerning the disputed domain name, Enom Inc. transmitted its verification response to the Center by e-mail on January 28, 2005, referring the Center to Enom Inc.’s WHOIS database, where it was confirmed that the Respondent is listed as the Registrant of the disputed domain name, and the contact details for the Registrant and the technical, administrative and billing contact were provided. The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center sent the Complaint and a formal Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on February 10, 2005, by courier and e-mail, using the contact details listed in the Registrar’s WHOIS database. The courier package was undeliverable due to the fact that the address provided by the Respondent was incorrect. The e-mail transmitted to Respondent’s e-mail address was also returned. In accordance with the Rules, paragraph 5(a), the due date for response was March 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2005, by e-mail.

Although the Center’s courier package with the Complaint was not deliverable at the Respondent’s address, the Panel finds that the Center has discharged its responsibilities to make reasonable efforts to try to notify the Complaint to the Respondent pursuant to the Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

The Center appointed Ms. Foteini Papiri as the Sole Panelist in this matter on March 10, 2005. The Panelist 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. Thus, the Panel finds that it was properly constituted.

The Panel, sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Policy, the Rules and the Supplemental Rules, and that payment of the fees was properly made.

4. Factual Background

Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and because Complainant’s allegations and documents enclosed with the Complaint have not been contested, the Panel finds the following facts as having been sufficiently established:

Sanofi-Aventis, of which Aventis Pharma SA is an affiliate company, is nowadays one of the leaders in the pharmaceutical branch (Complaint, Annexes 11-17). Sanofi-Aventis offers a wide range of patented prescription drugs to treat patients with serious diseases and it holds a leading position in a number of therapeutic areas, including respiration, allergy, cardiology, thrombosis, oncology and diabetes.

Complainant owns multiple trademark registrations for the AVENTIS mark, including the following:

i) French trademark registration No. 98 760 585, registered on November 23, 1998, in classes 1, 5, 10 and 31 (Complaint, Annex 3).

ii) International trademark registration No. 708 890, registered on February 2, 1999, in classes 1, 5, 10 and 31 (Complaint, Annex 4).

iii) European Community trademark registration 000993337, filed on November 18, 1998, in classes 1, 5, 10 and 31 (Complaint, Annex 5).

Complainant has online presence at the following domain names, where Complainant’s background is set out and Complainant’s available goods, services and activities are presented:

<aventis.com> registered on March 27, 1998 (Complaint, Annex 6),

<aventis.net> registered on November 23, 1998 (Complaint, Annex 7),

<aventis.org> registered on November 25, 1998 (Complaint, Annex 8),

<aventis.us> registered on April 19, 2002 (Complaint, Annex 9).

Over the years, consumers have come to recognize the AVENTIS mark as indicating a product or service originating with the Complainant and the AVENTIS mark enjoys widespread recognition and reputation.

According to Enom Inc.’s WHOIS database records furnished by the Complainant, the record for the disputed domain name <aventislotteryservices.org> was created on December 8, 2004 (Complaint, Annex 1).

5. Parties’ Contentions

A. Complainant

The Complainant contends that: (1) the domain name <aventislotteryservices.org> is confusingly similar to the marks in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and has not made submissions whatsoever. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to “draw such inferences therefrom as it considers appropriate”. No exceptional circumstances have been brought to the Panel’s attention. Accordingly, the Panel makes the findings below on the basis of the material contained in the Complaint.

6. Discussion and Findings

This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy, and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy.

The Respondent is required to submit to a mandatory administrative proceeding in accordance with paragraph 4(a) of the Policy, because the Complainant asserts, in compliance with the Rules of Procedure, that:

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

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

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

Under Rules, paragraph 10(a), the Panel is allowed inter alia to independently visit the Internet in order to obtain additional light in this default proceeding.

On March 22, 2005, the Panel attempted to visit Respondent’s website at the URL www.aventislotteryservices.org, using the Internet Explorer browser. The domain name <aventislotteryservices.org> opened to a HTTP 404 Not found error page stating “The page cannot be found”.

Identical or Confusingly Similar

The Complainant has rights in the mark AVENTIS registered for multiple goods and services.

The disputed domain name incorporates the mark AVENTIS, which constitutes its most significant meaningful portion. The domain name comprises of the additional descriptive term “lottery services”, added after the mark AVENTIS.

The Complainant has used the mark AVENTIS in connection with a wide variety of goods and services. As a consequence, the public has come to perceive goods and services that are offered under an AVENTIS mark or a variation of the same as emanating from or being endorsed by or affiliated with Complainant. The addition of the descriptive term “lottery services” to the mark AVENTIS is a variation of the Complainant’s mark, which the average consumer would expect the Complainant or its affiliates to use in connection with the mark AVENTIS to identify its goods or services.

The Panel finds that the domain name is confusingly similar to the AVENTIS mark, in which the Complainant has proven to have rights, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

By its default, Respondent has not contested the allegation of the Complainant that the Respondent lacks any rights or legitimate interests in the domain name.

Complainant has a strong presence in the pharmaceutical industry, and Complainant’s first use of the AVENTIS mark predates the domain name registration. In connection with Complainant’s offering of goods and services, the AVENTIS mark has acquired widespread recognition and goodwill. Because Complainant’s AVENTIS French, International and European Community trademark registrations were issued before the registration of the disputed domain name and because Complainant has undertaken extensive marketing and advertising campaigns all over the world, notably in North America, Europe and Asia prior to the registration of the disputed domain name (Complaint, Annexes 12-17), the Panel finds that the Complainant has prior trademark rights and the Respondent had actual or most likely knowledge of the well-known mark AVENTIS.

Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the domain name, nor has it claimed any rights with respect to the domain name <aventislotteryservices.org>. Respondent also failed to demonstrate legitimate interests or bona fide offering of goods or services in respect of the domain name <aventislotteryservices.org>.

Currently, the domain name <aventislotteryservices.org> resolves to a HTTP 404 Not found error page stating “The page cannot be found”.

In any case, the result of the test independently conducted by the Panel did not show any evidence as to the rights or legitimate interests of the Respondent in the domain name pursuant to paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services. Furthermore, there is no evidentiary support that the Respondent, as an individual, business, or other organization, has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue, pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contains a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith. These include:

“(i) circumstances indicating that [Respondent has] registered or [Respondent 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 [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

The non-exhaustive nature of the list suggests that other circumstances, apart from those enumerated in paragraph 4(b) can be evidence of registration and use in bad faith.

The domain name <aventislotteryservices.org> wholly incorporates Complainant’s registered AVENTIS mark. It is reasonable to believe that the Respondent, prior to the domain name registration on December 8, 2004, was aware that Complainant was the owner of the AVENTIS mark because of the widespread and long-standing advertising and marketing of goods and services under the AVENTIS mark. Since 2000, the Complainant has invested a substantial amount of money in publications and advertising campaigns and it has received extensive coverage by the media all over the world (Complaint, Annexes 12-17). In particular in the United States, during 2001 and 2002, the Complainant published numerous advertisements in many national newspapers, journals and magazines (Complaint, Annexes 12 and 17). Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the mark AVENTIS, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <aventislotteryservices.org>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.

Respondent failed to file a Response, bringing evidence of any legitimate commercial or non-commercial activity to the Panel’s attention, or even an explanation as to why the domain name was chosen for registration. Respondent has also taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made.

The Panel therefore concludes that the Respondent sought to register the domain name because of its association with the Complainant, the Complainant’s reputation and the Complainant’s business and its similarity with the Complaint’s AVENTIS mark. In doing so, the Respondent registered the domain name in bad faith.

As to the use of the domain name in bad faith, in light of the evidence submitted, Respondent’s conduct prima facie does not seem to fall under any of the circumstances enumerated in paragraph 4(b). The domain name <aventislotteryservices.org> does not appear to resolve to an active website or other online presence and there is no evidence, whatsoever, that an active website or other online presence is in the process of being established or that the domain name will be used in the future. There is nothing to suggest any advertising or promotion activities. The Internet user is merely referred to a HTTP 404 Not found error page stating “The page cannot be found”. In short, there is no positive action being undertaken by the Respondent in relation to the domain name.

In this context, it is important to ask: Can the passive holding of a domain name amount to use in bad faith? There are ample administrative panel decisions,¹ which suggest that the lack of active use of a domain name does not per se prevent the finding of use in bad faith, but rather a number of circumstances need to be taken into account in the assessment of whether there is use in bad faith. This is in line with paragraph 4(b) that only provides a non-exhaustive list of circumstances, which can be evidence of registration and use in bad faith. Furthermore, paragraph 4(b) recognises that inaction in relation to a domain name registration can, in certain circumstances, amount to a domain name being used in bad faith.²

In Telstra Corporation Limited v. Nuclear Marshmallows,³ it was held that “[t]he distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”

In the same decision, it is noted that “[…] in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”⁴

In this particular case, the following circumstances⁵ need to be taken into account, when deciding whether the Respondent is using the domain name in bad faith:

(i) Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States and in other countries;

(ii) the domain name has been registered because of its association to the AVENTIS mark;

(iii) there is no information as to the business activities of the Respondent and the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interest in the domain name, as the Respondent has failed to file a Response or make any attempt to traverse the claims and submissions made by the Complainant and has provided no evidence, whatsoever, of any actual or contemplated good faith use by it of the domain name;

(iv) any attempt to actively use the domain name on the part of the Respondent would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the Registrant’s website among Internet users who would inevitably be led to believe that such a site would be owned by, controlled by, established by or in some way associated with the Complainant; any such attempt would be an attempt to profit at the Complainant’s expense and damage its goodwill associated with the mark AVENTIS;

(v) the contact details supplied by the Respondent to the Registrar were incorrect at the time of registration. In doing so, the Respondent has taken active steps to conceal its true identity;

(vi) Respondent has engaged in “passive holding” of the domain name and such “passive holding” is properly within the concept of “use in bad faith”;

(vii) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.

In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the bad faith use and registration requirement.

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 <aventislotteryservices.org> be transferred to the Complainant.

Foteini Papiri
Sole Panelist

Dated: March 23, 2005

² Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in 7.10.

³ Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in 7.9.

⁴ Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in 7.11.

⁵ Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in 7.12 and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 in 6.