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WIPO Arbitration and
Aventis, Aventis Pharma SA. v. VASHA Dukes
Case No. D2004-0276
1. The Parties
The Complainants are Aventis and Aventis Pharma SA., Antony Cédex, France, represented by Selarl Marchais De Candé, France.
The Respondent is VASHA Dukes, of Dodge City, Kansas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buy-aventis.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2004. On April 15, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 16, 2004, eNom 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 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 12, 2004.
The Center appointed Paz Soler Masota as the Sole Panelist in this matter on
May 17, 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,
4. Factual Background
Complainants belong to a well-known multinational pharmaceutical group and have demonstrated to be the legitimate holders of the following trademarks:
- "AVENTIS," French trademark nº 98760585, registered on November 23, 1998, in classes 1, 5, 10 and 31.
- "AVENTIS," international trademark nº 708890, registered on February 2, 1999, in classes 1, 5, 10 and 31.
- "AVENTIS," Community trademark nº 993337, registered on March 27, 2003, in classes 1, 5, 10 and 31.
Complainants have also demonstrated to be legitimate holders of several domain names reproducing their main trademark all of them being in active use:
- <aventis.com>, registered on March 27, 1998;
- <aventis.net>, registered on November 23, 1998;
- <aventis.org>, registered on November 25, 1998; and
- <aventis.biz>, registered on March 27, 2002.
Respondent has not filed any response in this case.
Nonetheless, the Panel considers worth noting that Respondent registered the domain under discussion on July 11, 2003, therefore long after the registration of Complainants' trademarks and domain names.
The Panel has visited the website operated under the domain <buy-aventis.com>,
which was in active status on the date of issue of the present Decision, where
Respondent operates an online pharmacy offering "aventis" drugs, both
"aventis Prescription" and "Generic aventis,"
providing potential consumers an e-mail address to make the purchase orders.
5. Parties' Contentions
Complainants contend the following:
(1) That the disputed domain name <buy-aventis.com> is confusingly similar to trademarks and domain names in which it has rights, as:
(i) the disputed domain name reproduces the well-known trademarks AVENTIS of the group Aventis, neither the addition of the term "buy" nor the hyphen being capable of differentiating it from the trademark. Moreover, the term "buy" would describe a site on which consumers may purchase the trademarked products;
(ii) there is a risk of association between the domain name and the trademarks, that is, Internet users will trust that the site of Respondent belongs to Aventis group, and that they will be able to purchase Aventis products on it.
(2) That the Respondent has no rights or legitimate interests in respect of the domain name, and that it shall not be in a position to demonstrate that it is commonly known by the disputed domain name nor that it is making a legitimate or fair use of the domain name.
(3) That Complainants have not licensed nor permitted the Respondent to use their trademarks or to use them as part of the disputed domain name.
(4) That there is no resemblance whatsoever between the domain name and the name of the Respondent, Vasha Dukes.
(5) That Respondent registered the disputed domain in bad faith, as it should be aware of the existence of the Aventis group, a leading company in the pharmaceutical market, which operates worldwide and displays an intensive advertising effort to make the public aware of the existence of drugs using the trademarks "AVENTIS," and therefore aware of the risk of deception and confusion which would inevitably follow its registration and use of the domain name.
(6) That the Respondent, by trading on the goodwill existing in the Complainants' trademarks, is seeking, in using the domain name, to intentionally exploit consumer confusion by diverting Internet users to the Respondent's website for its own benefit and commercial gain.
In light of all the abovementioned, Complainants request that the domain name <buy-aventis.com> be transferred to them.
As mentioned above, the Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, complainants should show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which they have rights, that the respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name contains verbatim the trademarks of the Complainants, with the mere addition of the term "buy" followed by a hyphen. This Panel considers that neither of those two elements provide the domain name with a distinctive character.
On the contrary: the inclusion of the term "buy" has a clear promotional effect, consisting of (i) describing the purpose of the Respondent's website to potential consumers and (ii) inducing them, moreover, to enter the website in order to perform their purchases of "aventis" goods or services which, considering the goodwill of the Complainants' trademarks, may be inevitably taken to be the drugs commercialized under the trademarks "AVENTIS." Therefore, the disputed domain name clearly induces consumers to rely on the existence of a relationship between it and the Complainants' trademarks.
The above understanding is to be also found in previous Decisions of the panel: In Koninklijke Philips Electronics N.V. v. Alan Horswill, WIPO Case No. DTV2002-0004, the panel stated that a combination of trademarks with a descriptive term such as "buy" is "likely to be understood by consumers as being a variation of the trademark PHILIPS or an invitation to buy a product of the Complainant (...). When used as a domain name, the combinations chosen by the Respondent are for the same reasons likely to be understood by visitors as providing a link to a website belonging to the Complainant or to a website of an authorized sales agent of the Complainant." Previously, in Sporoptic Pouilloux, S.A. v. William H. Wilson, WIPO Case No. D2000-0265, the panel considered that "Respondent's domain name combines three words: `buy', `vuarnet' and `sunglasses'. The combination, if anything, enhances the likelihood of confusion with the trademark VUARNET as used for sunglasses, and evidences the bad faith of Respondent, who obviously tries to pass himself off as a legitimate source for VUARNET sunglasses."
Therefore, the Panel finds that the disputed domain name is confusingly similar to the registered trademarks of the Complainants, the requirement of the Policy paragraph 4(a)(i) being thus satisfied.
B. Rights or Legitimate Interests
There is no evidence, as Respondent has not contested the Complaint, that it has any right or legitimate interest whatsoever in respect of the disputed domain name, which incorporates the trademarks of the Complainants.
The Complainants, moreover, have alleged that they have not authorized the Respondent to use the trademarks, nor to register the domain name containing them. Therefore, on this point, Complainants prevail.
The Panel therefore finds that Respondent has no rights or legitimate interest in the disputed domain name, the requirement of the Policy paragraph 4(a)(ii) being thus satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the domain name has been both registered and used in bad faith.
Several arguments account for the registration to be qualified as executed in bad faith: Firstly, the mere choice of the combination "buy+a trademark" indicates that the Respondent was fully aware of the existence of the alien trademark which is included in the domain name. The fact of that trademark being well-known confirms this approach. Secondly, the trademarks at issue are clearly fanciful, and that leads to the consideration that Respondent's choice was not at all casual.
The Panel has no doubt that Respondent is using the domain name in bad faith. Respondent's website is featured as an "aventis" online pharmacy, with areas apparently accessible in the site providing information about "aventis medication," "aventis pills" and "aventis side effects," among others. Moreover, Respondent is not using at any time his own trademarks or signs to identify itself before consumers as an independent enterprise. On the contrary, Respondent intentionally permits consumers to rely on the website as a legitimate source to purchase "aventis" drugs. As a matter of fact, the contact e-mail of Respondent is Sales@buy-aventis.com.
Therefore, the Panel considers that the Respondent registered and is using the disputed domain name with the intention of attempting to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's website location, although there is no relationship whatsoever which may entitle Respondent thereto. It is a consolidated doctrine of the Panel that the unauthorized use of an alien trademark in a domain name which incorporates it verbatim is not to be considered as in good faith because that use clearly interferes with the rights of the trademark holders, being that domain name inherently confusing (see, among others, Sanofi-Synthelabo v. Nicki On, WIPO Case No. D2003-0871, and Aventis SA, Aventis Pharma SA v. Nicki On, WIPO Case No. D2003-0899).
Moreover, it is worth noting that Respondent stresses the possibility to acquire "aventis" medication "without a prescription" ("you can Buy aventis whenever you need to refill your prescription without a prescription. Just simply visit this website and place an order"), in large amounts ("you can save yourself even more money buy order several months supply at one time," "save by Buying aventis in large amounts, if you only need 50mg then buy 100mg and split the pills in half, this will reduce your costs") and, in any case, at very convenient prices ("Enjoy Discount Rates Everytime You Place An Order Online"). To a certain extent, Respondent is encouraging consumers to enter into an irresponsible pattern of conduct in the purchase of drugs and even to self-medication in respect to those that need prescription. Considering that Respondent is trading on the goodwill of Complainants' trademarks, it should be also taken into account that the conditions under which Respondent is offering the sale of "aventis" may lessen the reputation associated with Complainants' trademarks.
In consideration of all the above, the Panel finds that the conduct of Respondent
corresponds to that outlined under Section 4(a)(iii) of the Policy.
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 <buy-aventis.com>
be transferred to the Complainants.
Paz Soler Masota
Dated: May 20, 2004