WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis, Aventis Pharma SA. v. Dac Hung Nguyen
Case No. D2004-0252
1. The Parties
The Complainant is Aventis and Aventis Pharma SA., both located at Schiltigheim and Antony, respectively, in France, represented by Patrice de Candé, France.
The Respondent is Dac Hung Nguyen, Ho Chi Minh City, in Vietnam.
2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with iH Inc. d/b/a DotR
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2004. On April 2, 2004, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain names at issue. On April 21, 2004, iH Inc. d/b/a DotR 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 April 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 13, 2004.
The Center appointed Montiano Monteagudo as the sole panelist in this matter on May 19, 2004. 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.
The language of the proceedings is English.
4. Factual Background
The following facts, extracted from the Complaint's submissions and undisputed due to the Respondent's default, are established:
Aventis, formed in France as a result of merger between Group Rhone Poulenc SA of France and Hoescht Aktiengesellschaft of Germany, is one of the leading manufacturers of pharmaceutical and patented prescription drugs for respiratory, allergy, cardiology, thrombosis, oncology, diabetes diseases.
Aventis is the owner of the well-known following trademarks which are registered and widely used by Aventis:
- "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.
Aventis is also the corporate name of the company Aventis, thus this term is very well known. In addition, Aventis is a listed public limited company, therefore its name appears very frequently in the financial and business sections of many daily newspapers.
Furthermore, Aventis has registered different domain names to present its activities and goods on the web, being holder of the following active web sites:
- registered on March 27, 1998;
- registered on November 23, 1998;
- registered on November 25, 1998;
- registered on March 27, 2002.
The Respondent registered the following domain names with the registrar DOTREGISTRAR.COM (a division of IHOLDINGS.COM Inc.):
- registered on February 4, 2004;
- registered on February 4, 2004;
- registered on February 6, 2004;
- registered on February 6, 2004;
- registered on February 7, 2004;
- registered on February 7, 2004.
The foregoing inactivated domain names redirect Internet users to the same page.
5. Parties' Contentions
A. Complainant
The Complainant contends:
The Domain Names are confusingly similar to its trademarks and domain names. The only difference between the disputed Domain Names and the AVENTIS trademarks is the addition of the letters "srl". The mere addition of these three letters is not sufficient to suppress the likelihood of confusion created by the use of the Aventis term in the disputed Domain Names. Thus, the Internet users will think that these Domain Names lead to sites belonging to Aventis or controlled by Aventis.
Moreover, it is common knowledge that the letters "srl" are the acronym of a limited company particularly under Italian law. In this sense, the Complainant refers to previous decisions of the Center that state that modifying the trademarks of the Complainant by adding letters to the domain name is not sufficient to avoid a likelihood of confusion when this letters represents acronym of a legal type of company.
The Respondent has no legitimate interest in the Domain Names. The Domain Names, which do not correspond to any active web site and do not lead to any active web site, have not been registered within the scope of any loyal commercial or not activity.
Moreover, the Respondent has not signed any contract or entered into any kind of agreement with the Complainant as to the use of the Complainant's trademarks or to apply for or use of the Domain Names incorporating the term Aventis.
The Domain Names were registered and are being used in bad faith. The Respondent was undoubtedly aware at the time of the registration of the litigious Domain Names (i.e. February 4-7, 2004) of the existence of the Aventis company and of the trademarks AVENTIS. It is assumed that the Respondent was aware that there would be a risk of deception and confusion.
In addition, the Respondent has not activated any site related to the disputed Domain Names and their web sites lead to the same page. In accordance with previous decisions of the Center, the inaction may constitute bad faith use of the domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Therefore, the Respondent is using the Domain Names with bad faith with the sole purpose of benefiting from the reputation of the trademarks and the trade name of the Complainant.
As a consequence of all the foregoing, the Complainant requests the transfer of the Domain Name.
B. Respondent
Respondent has not submitted a response and it is, therefore, in default. Nor has it made any other submission whatsoever after the Notification of the Respondent's Default.
Pursuant to paragraphs 14(a) and (b) of the Rules, in the event a default occurs, the Panel "shall proceed to a decision on the complaint" and it "shall draw such inferences therefrom as it considers appropriate."
6. Discussion and Findings
6.1 Applicable Rules
In accordance with paragraph 15 (a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable.
6.2 Requirements to submit an administrative proceeding pursuant to paragraph 4(a) of the Policy
In order for a claim to be submitted to a mandatory administrative proceeding, the Complainant must prove that:
(i) the 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 Domain Name has been registered and is being used in bad faith.
6.2.1 4(a)(i) Identity or Confusing Similarity
The Panel finds the Domain Names under dispute to be confusingly similar to the trademarks owned by the Complainant. As indicated by the Complainant and in accordance with many decisions of the Center (InfoS, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075 and Sparco Srl v. Mr. Alexander Albert W. Gore / Ukrainian Cat. University, WIPO Case No. D2003-0448), the addition of descriptive terms or acronyms is not a distinguishing feature. Thus adding letters to the domain name is not sufficient to avoid the likelihood of confusion when these letters represent the acronym of a type of company. Therefore "srl", which is an abbreviation of the Italian legal form "Società a Responsabilità Limitata", is merely descriptive and is not distinctive enough.
It is important to state that, as the Complainant mentioned, there is a risk that the Internet users may think that the disputed Domain Names belong to the Complainant or are controlled by the Complainant.
The Complainant has, thus, succeeded in providing evidence of the confusing similarity between its trademarks and the Domain Names under dispute.
6.2.2 4(a)(ii) Absence of Respondent Rights or Legitimate Interest in the disputed Domain Names
The Respondent's default, along with the evidence submitted by the Complainant as to the references to "Aventis" on the Internet, lead the Panel to conclude that the Respondent has no rights or legitimate interests in the Domain Names.
It has been clearly established that the Domain Names have not been registered within the scope of any loyal commercial or activity. On the contrary, the Domain Names' web sites are not active and simply lead to the same page.
The Complainant has not entered into any kind of contract or agreement with the Respondent. Therefore, the Respondent holds no possible rights to use the trademark "AVENTIS".
The Panel concludes that the Complainant has also succeeded in providing evidence of the Respondent's lack of rights or legitimate interest in the Domain Name. The requirement set forth in paragraph 4(a)(ii) of the Policy is, thus, met.
6.2.3 4(a)(iii) Respondent's Registration and Use of the Domain Name in Bad Faith
Paragraph 4(b) of the Policy sets forth that the following circumstances, in particular but without limitation, shall, if found, be evidence of registration and use in bad faith:
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."
When the Respondent registered the Domain Names on February 4-7, 2004, there were circumstances, as Aventis was a leading pharmaceutical firm with a strong presence in publishing media, that lead the Panel to conclude the Respondent was aware of the reputation of the trademarks and the Trade name of the Complainant. By the registration the Respondent intended to create a deception and confusion on the Internet users as they would consider the Domain Names' web sites and the Respondent were linked to the Complainant.
The absence of use of the Domain Names is considered by the Center bad faith use (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The passive holding is evidenced by the Respondent having not activated any site related to the Domain Names and that all the Domain Names' web sites lead to the same blank page.
The Panel concludes that the Complainant has also succeeded in providing evidence of the registration and use in bad faith of the Domain Name by the Respondent.
7. Decision
The Complainant has proved that the Domain Names are highly confusing to its trademarks, that the Respondent has no rights or legitimate interest in the Domain Names at issue and that the Respondent has registered and used the Domain Names in Bad Faith. Therefore, pursuant to Paragraph 4.a of the Policy and 15 of the Rules, the Panel requires the registration of the Domain Names , , , , , and to be transferred to Aventis Pharma S.A., as requested.
Montiano Monteagudo
Sole Panelist
Dated: June 2, 2004
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