WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis, Aventis Pharma SA v. Rear View Photograph Ltd.
Case No. D2005-0625
1. The Parties
The Complainant is Sanofi-Aventis of France, represented by Selarl Marchais De Cand�, France.
The Respondent is Rear View Photograph Ltd., of Hattiesburg, Mississippi, United States of America.
2. The Domain Names and Registrar
The disputed domain names , , and (the “Domain Names”) are registered with Omnis Network LLC, United States of America (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2005, by e-mail and on June 21, 2005 in hardcopy. On June�16,�2005, the Center transmitted by e-mail to Omnis Network a request for registrar verification in connection with the Domain Names. On July 1, 2005, the Registrar transmitted by e-mail 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 July 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July�24,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2005.
The Center appointed Tobias Zuberb�hler as the sole panelist in this matter on August�30, 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
The following facts appear from the Complaint and its Annexes, which have not been contested by the Respondent.
Sanofi-aventis is nowadays the third largest pharmaceutical company worldwide.
During the summer of 2004, Sanofi-Synth�labo, a French pharmaceutical company, announced the success of its offer for Aventis shares. The name of the parent company adopted on August 20, 2004, was sanofi-aventis, thus preserving the brand heritage of each of the constituent companies. The merger, details of which were widely publicized in the business press, entered into effect as of December 31, 2004.
The Complainant is now a multinational company present in more than 100 countries across five (5) continents. It offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in a number of therapeutic areas, such as cardiovascular, thrombosis, oncology, diabetes, central nervous system, urology, internal medicine and human vaccines.
After the above-mentioned takeover, Complainant is the owner of the following trademarks:
- AVENTIS (French trademark No. 98 760 585, registered on November�23,�1998);
- AVENTIS (International trademark No. 708 890, registered on February�2,�1999);
- AVENTIS (Community trademark No. 000 993 337, filed on November�18,�1998);
- SANOFI-AVENTIS (International trademark No. 839 358, registered on October 1, 2004);
- SANOFI (French trademark No. 1 482 708, registered on August 11, 1988); and
- SANOFI (US trademark No. 2 129 809, registered on January 20, 1998).
All of the trademarks are registered and widely used by the Complainant, notably in connection with classes 1 and 5 of the international classification, i.e. pharmaceutical products.
In addition the Complainant has registered the following domain names to present its activities and products on the web:
- , registered on March 27, 1998;
- , registered on November 23, 1998;
- , registered on November 25, 1998;
- , registered on March 14, 2004;
- , registered on October 13, 1995;
- , registered on May 16, 2003; and
- , registered on July 12, 2001.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the aforementioned trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Domain Names were registered and are being used in bad faith.
Additional contentions, if relevant to the dispute’s decision, are included in the following discussions and findings.
B. Respondent
Respondent was duly notified of the administrative proceedings as stipulated under paragraph 2(a) of the Rules, but did not reply to Complainant’s contentions. Complainant’s contentions are thus deemed to be unchallenged (See, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(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 is being used in bad faith.
A. Identical or Confusingly Similar
The domain names at issue are , , and . As set forth above, the non-rebutted evidence has shown that the Complainant is the holder of various national and international trademarks for AVENTIS, SANOFI and SANOFI-AVENTIS.
The four domain names are composed in the same way. They consist of one of the Complainant’s trademarks – either AVENTIS or SANOFI – and the added letters “ceu” or “cme”.
AVENTIS and SANOFI are both well-known marks, as held in previous decisions (See, e.g., Aventis, Aventis Pharma v. John Smith, WIPO Case No. D2004-0850; Sanofi-Synthelabo v. Nicki On, WIPO Case No. D2003-0871).
An internet search suggests that the letters “cme” and “ceu” are the abbreviations for “Continuing Medical Education” and “Continuing Education Units”. Both abbreviations are used in the field of medical education and are thus linked to Complainant’s business activities.
The Panel finds the Domain Names at issue to be confusingly similar to the trademarks owned by Complainant. As indicated by the Complainant and in accordance with the prevailing case law (See e.g., Aventis, Aventis Pharma SA v. Dac Hung Nguyen, WIPO Case No. D2004-0252), the addition of descriptive terms, acronyms or abbreviations is not a distinguishing feature. The added letters “cme” and “ceu” are merely descriptive and not sufficient to avoid the likelihood of confusion.
The Panel also acknowledges the Complainant’s fear that the public will assume a connection between the Domain Names and Complainants’ trademarks.
For the reasons stated above, the Panels holds that the Domain Names are confusingly similar to the trademarks of the Complainant. Thus, the Complainant has met the burden of proof set forth under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, inter alia, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your [Respondent’s] 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 and services; or
(ii) you [Respondent] (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 [Respondent] 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.”
Complainant asserts that the Respondent is not a licensee or otherwise permitted to use its trademarks or to register domain names including the above-mentioned trademarks. In addition, there is no association between the Complainant or any of its predecessors and the Respondent.
Respondent failed to show any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services or a non-commercial or fair use of the Domain Names. Respondent also failed to submit proof that it has been commonly known by the Domain Names. Rather to the contrary, there are strong indications that the Respondent, by registering the Domain Names, had the intent to take advantage of Complainant’s well-known trademarks.
In the absence of any indications as to a legitimate interest of the Respondent to use the Domain Names, the Panel concludes that the Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) lays down the following four (non-exclusive) circumstances which, if found to be present by the Panel, are deemed to provide evidence of bad faith in registering and using the Domain Name:
“(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant contends that the Respondent registered and used the Domain Names in bad faith.
Respondent registered the Domain Names on February 28, 2005, shortly after the publicly announced merger between Sanofi-Synth�labo and Aventis. As stated above, AVENTIS and SANOFI are well-known trademarks. In addition, the Complainant has shown that especially Aventis had intensive media coverage in the United States of America in the years before the takeover. It is unconceivable to the Panel that Respondent, at the time of registration, could not have been aware of Complainant’s marks and trade names. These findings lead to the conclusion that the Domain Names at issue were registered in bad faith.
The fact that Respondent never actively used the registered Domain Names does not as such prevent a finding of “bad faith use” (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case D2002-0131). The Panel finds that Respondent, by registering the Domain Names, intended to benefit from the Complainant’s notoriety and that the circumstances of the case at hand amount to a “bad faith use”, although Respondent only passively holds the domains.
Accordingly, the Panel finds that the Complainant has satisfied 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 , , and be transferred to the Complainant.
Tobias Zuberb�hler
Sole Panelist
Dated: September 13, 2005
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