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and Mediation Center
Aventis, Aventis Pharma SA. v. John Smith
Case No. D2004-0850
1. The Parties
The Complainants are Aventis, Schiltigheim, France, and Aventis Pharma SA., Antony, France, represented by Maоtre Patrice de Candй, Paris, France.
The Respondent is John Smith, Ventura, California, United States of America.
2. The Domain Names and Registrars
The disputed domain names <aventislotto.com> and <aventislotto.org>
are registered with eNom Inc. and the disputed domain name <aventislotto.net>
is registered with Melbourne IT, LTD trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2004. On October 19, 2004, the Center transmitted by email to eNom and to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain names at issue. On October 19, 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. On October 20, 2004, Melbourne IT trading as Internet Name Worldwide 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 October 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2004.
The Center appointed Nicoletta Colombo as the sole
panelist in this matter on November 25, 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.
4. Factual Background
Complainants are a well-known multinational pharmaceutical company and have demonstrated to be the legitimate holders of several trademarks and domain names containing the word “AVENTIS”.
“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. 993 337 filed on November 18, 1998.
<aventis.com> registered on March 27 1998;
<aventis.net> registered on November 23, 1998;
<aventis.org> registered on November 25, 1998.
The disputed domain names are:
<aventislotto.com> registered on August 30, 2004;
<aventislotto.net> registered on August 30, 2004;
<aventislotto.org> registered on August 31, 2004.
5. Parties’ Contentions
Complainants contend the following:
1) That the disputed domain names < aventislotto.com>, aventislotto.net> and <aventislotto.org> are confusingly similar to trademarks and domain names in which Complainants have rights.
2) That the disputed domain names reproduce the well-known trademark AVENTIS in its entirety.
3) That the addition of the term “lotto” at the end of the disputed domain names does not prevent Internet users from thinking there is a link between the disputed domain names and the AVENTIS trademarks and domain names.
4) That the Respondent has no rights or legitimate interests in respect of the disputed domain names, that he is not commonly known by the disputed domain names and that he is not making any legitimate or fair use of the disputed domain names.
5) That Complainants have never licensed or otherwise authorized the Respondent to use its trademarks or to use them as part of the disputed domain names.
6) That the Respondent registered the disputed domain names in bad faith, as he should have been well aware of the existence of the Aventis Group, its trademarks and domain names and therefore be aware of the risk of deception and confusion which would inevitably follow his registration and use of the disputed domain names.
7) The bad faith of the Respondent is also demonstrated by the fact that the Complainants have already filed two complaints against him one on July 29, 2004, relating to the domain names <aventisfoundationlottery.org> and <aventisfoundationlottery.com> and the other on August 10, 2004, relating to the domain name <aventislottery.org>. The Respondent then decided to register the disputed domain names on August 30 and 31, 2004.
8) That the Respondent has registered the domain names in order to abusively benefit from the Complainants notoriety.
9) That the disputed domain names have never been used in relation to active web sites and are therefore being “passively held” by the Respondent.
The Respondent did not reply to the Complainants’
contentions and therefore he is in default. He did not make any other submission
whatsoever after the Notification of Respondent Default. Therefore, Respondent
having not contested the allegations in the Complaint, the Panel shall decide
this proceeding on the basis of Complainants’ submissions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy the Complainant must prove that:
1) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and that
2) the Respondent has no rights or legitimate interests in respect of the domain names; and that
3) the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have provided the Panel with sufficient
evidence that they have rights in AVENTIS mark predating the Respondent’s
registration of the domain names in dispute. The Panel finds the disputed domain
names to be confusingly similar to the trademarks owned by the Complainants.
As indicated by the Complainants and in accordance with many UDRP decisions,
the addition of descriptive terms to a trademark is not a distinguishing feature.
In the present case, the addition of the word “lotto” is not sufficient
to exclude the likelihood of confusion between the domain names and the Complainants’
trademark and to avoid misleading Internet users into believing that the Respondent
is somehow associated with the Complainants (see Tickmaster Corporation v.
Dotsan, WIPO Case No. D2002-0167;
Playboy Enterprises International Inc. v. SAND WebNames – For Sale,
WIPO Case No. D2001-0094; Toyota France
and Toyota Motor Corporation v. Computer-Brain, WIPO
Case No. D2002-0002; A. Nattermann & Cie Gmbh, Aventis Pharma SA
v. Derrick Horner WIPO Case No. D2003-0844;
Infospace.com, Inc. v. Tenembaum Ofer, WIPO
Case No. D2000-0075 and Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493).
The Complainants have thus succeeded in providing evidence of the confusing similarity between their trademarks and the domain names under dispute.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is no prima facie indication of any rights or legitimate interests on the part of the Respondent in the domain names.
Moreover, AVENTIS is the registered trademark of the Complainants and the Complainants have used it since at least November 1998.
Further, the Complainants have not licensed or otherwise permitted or authorized the Respondent to use its trademarks or service marks or to apply for or to use the domain names incorporating the said words.
The Complainants have demonstrated the second element and under these circumstances, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain names in bad faith:
i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the Respondent has 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 the holder has engaged in a pattern of such conduct; or
iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s web site or location or of a product or service on the holder’s web site or location.
The AVENTIS trade mark unquestionably is a well-known
international mark and, in the Panel’s opinion, the Respondent was clearly
aware thereof, not only because of the widespread use and fame of the Complainants’
trademark, but also because he registered the disputed domain names after having
received from the Complainants two other complaints against him; one on July 29, 2004,
relating to the domain names <aventisfoundationlottery.org> and <aventisfoundationlottery.com>
and on August 10, 2004, relating to the domain name <aventislottery.org>
(see Aventis, Aventis Pharma SA. v. John Smith, WIPO
Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith,
WIPO Case No. D2004-0624).
Therefore, the Panel, in accordance with previous decisions issued under the
UDRP, is of the opinion that actual knowledge of Complainants’ trademark
at the time of the registration of the disputed domain names is to be considered
an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas
and Christiandior.net, WIPO Case No. D2000-0226).
Moreover, the circumstance that the Respondent has registered three domain names adding to the trade mark AVENTIS the word “lotto”, shows that the Respondent has registered the disputed domain names in order to generate a likelihood of confusion for consumers by letting them think there is a relationship between the Complainants and the Respondent.
The Panel concludes that the Complainants have also
succeed in providing evidence of the registration and use in bad faith of the
domain names by the Respondent.
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, <aventislotto.com>, <aventislotto.org> and <aventislotto.net> be transferred to the Complainants.
Date: December 6, 2004