Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

General Media Communications, Inc. v. Horoshiy, Inc. a/k/a Horoshiy [2005] GENDND 60 (3 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aventis and Aventis Pharma SA. v. Bug Software/Paulo Andrade

Case No. D2004-0878

1. The Parties

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

The Respondent is Bug Software/Paulo Andrade, Miami, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <aventisdirect.net> and <aventisdirect.org> are registered with Direct Information Pvt Ltd, dba directi.com, Bombay, India.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2004. On October 25, 2004, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain names at issue. On November 1, 2004, Direct Information Pvt Ltd. dba Directi.com 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 the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 November 3, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2004.

The Center appointed Marcin Krajewski as the Sole Panelist in this matter on December 9, 2004. The Panel finds that it was properly constituted and 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

The Complainants Aventis and Aventis Pharma SA operate in the pharmaceutical business. The Complainant Aventis is an entity resulting from the merger between two companies, Rhône-Poulenc and Hoechst, and offers a wide range of drugs used to treat patients with serious diseases worldwide. Aventis is nowadays one of the world’s leading pharmaceutical companies.

Aventis is the owner of the following trademarks:

- “AVENTIS” French trademark n° 98 760 585, registered on November 23, 1998, in classes 1, 5, 10 and 31,

- “AVENTIS” international trademark n° 708 890, registered on February 2, 1999, in classes 1, 5, 10 and 31,

- “AVENTIS” Community trademark n° 993 337, registered on March 27, 2003, in classes 1, 5, 10 and 31.

Furthermore, Aventis has also registered the following domain names to present its activities and goods on the web:

- <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.

The Complainant Aventis Pharma SA has been designated by Aventis SA to manage all the domain names belonging to the Aventis group.

On August 10, 2004, the Respondent registered the disputed domain names <aventisdirect.org> and <aventisdirect.net> which resolve to no active web pages.

The above-mentioned facts have been established on the basis of the complaint and documents attached thereto in accordance with Paragraph 5(e) of the Rules.

5. Parties’ Contentions

A. Complainants

The Complainants contend that each of the three elements specified in Paragraph 4(a) of the Policy are present in this case. In particular the Complainants claim that:

(i) The domain names in dispute are confusingly similar to the trademarks in which the Complainants have rights

The disputed domain names reproduce entirely the AVENTIS trademarks. The only difference between them and the trademarks is the addition of the word “direct”. The Complainants contend that the generic term “direct” does not prevent Internet users from thinking that the domain names are connected to the registered trademarks and activities of the Complainants. The Complainants cite the A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO Case No. D2003-0844, where the Panel found that the mere addition of the word “direct” does not exclude the likelihood of confusion between the domain name and the complainant’s trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the domain names in dispute

The Complainants state that the name of the Respondent bears no resemblance to the word “aventis”, and that the Respondent deals with e-commerce applications, an activity which bears no connection whatsoever to the term “aventisdirect”. The Complainants stress the fact that the litigious domain names are not related to any active website.

Moreover, the Complainants contend that they never licensed or otherwise permitted the Respondent to use their trademarks, and that there is no relationship whatsoever between the parties.

(iii) The domain names in dispute were registered and used in bad faith

In support of this position, the Complainants provide that at the time of registration the Respondent must have been aware of the existence of the “aventis” trademarks and the domain names <aventis.com>, <aventis.net> and <aventis.org> owned by the Complainants and, consequently, the Respondent registered its domain name in order to benefit from the Complainants’ fame.

The Complainants submit that the litigious domain names were not only registered in bad faith but are also being used by the Respondent in bad faith, as they have never been used in relation with any active website. Supporting this position the Complainants cite the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where, according to the Panel, “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. According to the Complainants, “in the present case the absence of use of the domain names demonstrates the bad faith of the Respondent”.

B. Respondent

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

However, the Respondent sent two e-mails to the Center explaining that in fact the domain names belong to its customer and that the Respondent is unable to transfer them to the customer because of this administrative proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant a remedy:

(1) 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

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

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

A. Identical or Confusingly Similar

According to the Policy the Complainant needs to have rights in a trade or service mark. As stated above, the Complainant Aventis is the sole owner of all the relevant trademarks in the present case. There is no indication that the Complainant Aventis Pharma SA has any interest in these trademarks. In particular, the mere fact that this company has been designated to manage all the domain names belonging to the Aventis group, does not create such interest.

Accordingly, the Panel finds that the Complainant Aventis Pharma SA has not satisfied Paragraph 4(a)(i) of the Policy and should be disregarded when considering the remaining elements to be established under Paragraph 4(a) of the Policy (see. A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO Case No. D2003-0844).

In relation to the Complainant AVENTIS it must be further considered that, the relevant part of the domain names in dispute is “aventisdirect”. For the purposes of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffixes “org” and “net’ must be disregarded as being simply a necessary component of a generic top level domain name.

The Panel accepts the Complainants’ allegations that the addition of a generic term “direct” to a trademark is legally inconsequential and does not prevent a finding of confusing similarity. There are numerous WIPO UDRP decisions were it was found that the addition of a generic term does not serve to distinguish the domain name from the trademark, but rather would reinforce the association of the Complainant’s trademark with the domain name (see Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755, Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275).

Accordingly, the Panel finds that the Complainant AVENTIS has satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied with the Complainants’ statement that the Respondent neither was affiliated with the Complainants nor in any way authorized to the use any trademark including the word “aventis”. The Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the domain names in dispute. The Respondent’s explanations that the domain names were registered on behalf of its client does not show legitimate interest.

Accordingly, the Panel finds that the Complainant AVENTIS satisfies Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration as well as use in bad faith of the disputed domain names. This means that bad faith registration or bad faith use alone do not give rise to a remedy under the Policy.

Considering the question whether the domain names in dispute were registered in bad faith, it is necessary to underline that “aventis” appears to be an invented word. Therefore, it is not likely that any trader could choose to use it without seeking to create the impression of association with the Complainant. Taking into account the worldwide fame of the Aventis group, it must be asserted that the Respondent must have been aware of the Complainants’ trademarks while registering the domain names in dispute. This finding leads to the conclusion that the domain names in dispute have been registered in bad faith.

It is less clear whether it can be established that the disputed domain names were also used in bad faith. The panel agrees with the prevailing opinion of numerous WIPO panels- that in some circumstances so-called “passive holding” of a domain name can be treated as using it in bad faith. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which was also cited by the Complainants. In this respect it is necessary to note that not every kind of passive holding may be found to be “use in bad faith” of the domain name. Otherwise, the necessity to prove that a domain name was actually used would be illusory.

The most obvious examples of passive holding which fall within “bad faith use” of a domain name are cited in Paragraphs 4(b)(i-iii) of the Policy. However, circumstances of the present case are apparently different. In Telstra it was stated that it is not possible to determine in abstract what circumstances of passive holding other than those identified in the Policy can constitute bad faith use, and in considering whether the passive holding of a domain name following its bad faith registration satisfies the requirements of Paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. In opinion of this Panel a failure to determine in abstract what circumstances of passive holding constitutes “bad faith use” does involve a risk that a decision in this matter may seem arbitrary. However, the Panel must take into account that the opinion of the learned Panelist in Telstra was followed by numerous subsequent panelists and that the need for consistency plays a significant role in domain name dispute “jurisprudence”.

In Telstra the learned Panelist named five circumstances of the case that persuaded him to conclude that the respondent’s passive holding of a domain name could be regarded as “bad faith use” of it. These elements were as follows:

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

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) 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, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”

The circumstances of the present case are in some aspects similar to those in Telstra but there are also differences. In particular in the present case it has not been established that the Respondent took any steps to conceal its true identity or provided false contact details. However, it seems that not all the five elements mentioned above are of the same significance. In particular it seems that the fifth element (i.e. impossibility to conceive of any plausible active use) is actually a conclusion which was made on the base of the preceding four elements and that this fifth element plays a decisive role in determining whether any particular passive holding can be regarded as a “bad faith” use of a domain name in dispute.

Regarding the circumstances of the present case it must be pointed out that it is not possible to imagine any active use of the disputed domain names by the registrant that would not be illegitimate, unless registrant receives permission from a trademark holder (the Complainant Aventis). Regarding the reasoning in Telstra this means that the circumstances of the present case indicate that passive holding of the disputed domain names actually amount to the Respondent acting in bad faith.

Accordingly, the Panel finds that the Complainant Aventis satisfies Paragraph 4(a)(iii) 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 names <aventisdirect.net> and <aventisdirect.org> be transferred to the Complainant Aventis.

Marcin Krajewski
Sole Panelist

Dated: January 18, 2005