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Aventis, Aventis Pharma SA. v. Domain King [2005] GENDND 33 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aventis, Aventis Pharma SA. v. Domain King

Case No. D2004-0977

1. The Parties

The Complainants are Aventis of Schiltigheim, France, and Aventis Pharma SA of Antony, France represented by Selarl Marchais De Candé of Paris, France.

The Respondent is Domain King of Budapest, Hungary.

2. The Domain Name and Registrar

The disputed domain name <adraianaventis.com> is registered with Abacus America Inc. dba Names4Ever.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2004. On November 23, 2004, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. On November 29, 2004, Abacus America Inc. dba Names4Ever 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 December 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2004.

The Center appointed George R. F. Souter as the sole panelist in this matter on January 11, 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

Aventis is the name of a pharmaceutical group resulting from the merger of Rhône-Poulenc and Hoechst.

Aventis Pharma SA is responsible for managing all the domain names of the Aventis group.

The Complainants are the proprietors of the AVENTIS trade mark, registered in France under No. 98 760 585, in classes 1, 5, 10 and 31, registered as an International Trade Mark under No. 708890, in the same classes, with a wide number of national designations (including the Respondent’s “home country”, Hungary), and registered as a European Community Trade Mark, under No. 993337, also in the same classes.

The Complainants are the proprietors of, inter alia, the top level domain names <aventis.com>, <aventis.net> and <aventis.org>.

5. Parties’ Contentions

A. Complainant

The Complainants allege that the name Aventis is well known internationally as belonging to them and have submitted evidence to this effect, including the results of an “awareness survey”, dated 2002.

The Complainants allege that “adraianaventis” is a “telescoped” word consisting “merely of the AVENTIS trademark combined with the surname ADRAIANA”, therefore the mere difference between their trade mark AVENTIS and “adraianaventis” is the presence of the term “ADRAIAN” in front of “AVENTIS”, which “is not sufficient to alleviate the likelihood of confusion”. The Complainants further allege that it “does not prevent the public from thinking that this domain name is somehow connected to the AVENTIS trade mark.”

The Complainants allege that the absence of any obvious linkage to the Respondent’s name, the fact that the registration took place without the Complainants’ permission and the fact that the web site is being used designate a pornographic website, prove that the Respondent had no rights or legitimate interests in the domain name at issue. In particular, the Complainants allege that “the Respondent has absolutely no reason to use the Complainants’ AVENTIS trademarks for this area of activity, and there is no doubt that, by using the litigious domain name, Domain King has intentionally attempted to attract customers for commercial gain”. The Complainants also allege that the domain name at issue constitutes unfair use of the term AVENTIS, “ which tarnishes the Complainants’ trademarks”.

The Complainants allege that the domain name at issue was, consequently, registered in bad faith.

The Complainants further allege that the domain name at issue has been used in bad faith, and drew the Panel’s attention to the decision in Yahoo!, Inc v. Cupcake Patrol and John Zaccharini, WIPO Case No. D2000-0928, in which routing “Yahoo!” traffic to a porno site was deemed to constitute contravening of paragraph 4(c)(iii) of the Policy.

The Complainants contend that “the use of the litigious domain name as made by the Respondent generates a likelihood of confusion for customers who may look for information about AVENTIS products and activities”, and: “This use of the litigious domain name is prejudicial for the Complainants because of the consumers’ disappointment and shock when coming across the litigious website. Moreover, the linkage to pornographic sites indicates the desire to tarnish the AVENTIS trademarks and the desire to profit from unjustified use of the domain name.”

The Complainants allege that “the Respondent so far has not activated the site”, and have drawn the Panel’s attention to the well known decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which non-use, or “passive holding” of a domain name had, in appropriate circumstances, been deemed to satisfy the use in bad faith requirement.

B. Respondent

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

6. Discussion and Findings

For the complainant to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark 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 used in bad faith.

(i) Identical or Confusingly Similar

So far as the Panel is aware, after checking various dictionaries, “aventis” is a word coined for the purpose of identifying the Complainants and its products and services. It is, therefore, entitled to the highest degree of consideration when considering confusing similarity with another word. The Panel also accepts that AVENTIS can take benefit of the mark’s status as a well known trade mark.

The Panel regards it as settled by decisions in previous cases that the “.com” element of the domain name at issue is to be disregarded in this context.

The comparison, therefore, is between “adraianaventis” and AVENTIS.

It seems clear to the Panel from browsing the Internet, and from his own knowledge, that “Adraian” is a male forename, and “Adraiana” is a female forename. The Panel has not been able to establish that “Adraiana” is also a surname, as claimed by the Complainants.

The sign “adraianaventis” could either be primarily analysed as composed of the components Adraian + Aventis, or as Adraiana + Ventis. In the Panel’s opinion, the telescoped combination of Adraiana + Aventis is less likely.

Adraian + Aventis is clearly one of the possible interpretations of “adraianaventis”. “Adraian”, as a forename, is, in the Panel’s opinion, lacking in any distinctiveness sufficient to regard “aventis”, which the Panel accepts to be both a coined and a well known mark, as being other than the predominant element of the combination.

The Panel, therefore, takes the view that the domain name at issue is confusingly similar to the Complainants’ trade mark AVENTIS.

This finding is based solely on a comparison of “adraianaventis” and “aventis” per se. The Complainants clearly have rights to the trade mark AVENTIS. Even though these rights may be held to be limited in other, fuller, proceedings relating to trade mark infringement or unfair competition/passing off, the Panel takes the view that the test of paragraph 4(a)(i) of the Policy is satisfied by a strict comparison of the two signs, per se, providing that the Complainant/s has/have satisfied the Panel as to the existence of trade mark rights in its/their sign regardless of the goods/services to which the trade mark rights might be limited in such fuller proceedings, as the further tests of paragraphs 4(a)(ii) and (iii) of the Policy serve, in conjunction with the test of paragraph 4(a)(i) as above interpreted, to meet the aims of the Policy in its own context.

The Panel, accordingly, decides that the Complainants have satisfied the test of paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out guidelines as to what might constitute rights or legitimate interests in a domain name, namely:

(i) before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent did not avail itself of the opportunity to justify the choice of the domain name at issue. Complainant, on the other hand, has made out a prima facie case that Respondent lacks legitimate interests in the domain name.

The Panel sees no obvious linkage between the domain name at issue and the name of the Respondent.

In these circumstances, the Panel finds that the Complainants have satisfied the test of paragraph 4(a)(ii) of the Policy.

(iii) Registered and Used in Bad Faith

It follows that a finding in favour of the Complainants in connection with the tests of paragraphs 4(a)(i) and (ii), is likely to result in a finding that the domain name at issue was registered in bad faith, and the Panel so finds.

The test of paragraph 4(a)(iii) is a dual one, and the Panel must also be satisfied that the domain name at issue has been used in bad faith.

The Panel accessed the domain name at issue, and found that the web site was billed as the “Official website of Adraiana Ventis”, “Adraiana Ventis – Pornstar Extraordinaire”, described as “a former teen webcam model from Tampa”.

The website contains several endorsements: “Congratulations to Adraiana Ventis for winning the AVN Best Newbie and critics’ award”, “Adraiana also won the CAVR Star of the Year Award.”

There is a website, “www.avnawards.com,” which refers to the “AVN Awards for excellence in adult movies”. There is a website, “www.cavr.com” (cavr apparently being the initials of “Cyberspace Adult Video Reviews”), which appears to be a comprehensive porn website.

Browsing the name Adraiana Ventis or adrianaventis on a browser such as Google results in many websites relating to the pornographic content promised in the “www.adraianaventis.com” website.

It is the Panel’s conclusion that the domain name at issue is used for the purposes of a working pornographic website, as opposed to a website prepared for the purposes of these proceedings.

Given the name and reputation of Adraiana Ventis, the domain name, in all probability was not registered to take advantage of any confusion with Complainants’ marks. Therefore, the domain name was not registered or used in bad faith.

In view of the above, the Panel concludes that the Complainants are not likely to have their name/trade mark tarnished by such use, and, accordingly, decides that the domain name at issue is not being used in bad faith.

The Panel notes, in particular, that the Complainants have not complained of any approach by the owners of the domain name to them with a view to selling them the domain name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

George R. F. Souter
Sole Panelist

Dated: January 25, 2005