WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis v. Aventis Audio Visual Limited
Case No. D2003-0226
1. The Parties
The Complainant is Aventis of Schiltigheim, France, represented by Selarl Marchais De Candé of France.
The Respondent is Aventis Audio Visual Limited of Wallingford, Oxfordshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <aventisav.com>, <aventisav.net> and <aventisav.org> are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2003. On March 24, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On the same day, Tucows 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 together with the amendment to 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 March 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003. The due date was extended by consent until May 7, 2003. The Response was filed with the Center on May 7, 2003. On May 14, 2003, the Center received a Supplemental Filing from the Complainant. Although it is not strictly required to do so, the Panel has read and considered this.
The Center appointed Andrew Brown QC as the sole panelist in this matter on May 20, 2003. 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 Complainant is a leading pharmaceutical company. It was formed as a result of a merger between pharmaceutical companies Rhone Poulenc & Hoechst. The name Aventis, which was adopted as the trademark of the newly merged company, appears to have been announced some time in 1998.
According to the Complainantís website, as at December 31, 2002, it had approximately 71,000 employees and its "core business sales" for 2002 amounted to 17.59 billion euros. It has a global prescription drug sales force of nearly 20,000 people and in 2002 spent 3.14 billion euros on research and development alone.
The Complainant is the owner of the following registrations for the trademark AVENTIS:
h France: trademark no. 98 760 585 registered on November 23, 1998, in classes 1, 5, 10, and 31.
h Germany, Benelux, France, Italy, Spain, United Kingdom: International trademark no. 708890 registered on February 2, 1999, in classes 1, 5, 10, and 31.
h European Community: Community trademark filed on November 18, 1998, in classes 1, 5, 10, and 31.
h United Kingdom: British trademark no. 2182304 filed on November 17, 1998, in classes 1, 5, 10, and 31.
The Complainant also owns the following domain names:
<aventis.com> (registered on March 27, 1998)
h <aventis.net> (registered on November 23, 1998)
h <aventis.org> (registered on November 25, 1998)
The Respondent is a British company which carries on business as a supplier of audio visual facilities such as video conference systems. It was originally incorporated under the name Visualex Business Systems Limited, but changed its name to Aventis Audio Visual Limited on January 17, 2002.
On January 14, 2002, the Respondent registered the three disputed domain names namely:
The Respondent operates a website promoting its goods and services which can be accessed via these three domain names.
5. Partiesí Contentions
The Complainant states that the name "Aventis" is a neologism which has no ordinary meaning.
The Complainant contends that the three disputed domain names are confusingly similar to the Complainantís AVENTIS trademarks. The only difference between the disputed domain names and the trademark AVENTIS is the addition of the letters "av" at the end of each domain name. The Complainant claims that this is not sufficient to avoid the likelihood of confusion. The Complainant also asserts that the likelihood of confusion is exacerbated because the trademark AVENTIS is so well-known.
In relation to its claim that the Respondent has no rights or legitimate interests in the disputed domain names, the Complainant notes that the Respondent has only recently adopted the company name Aventis Audio Visual Limited. At the time the Respondent adopted its company name, the Complainantís trademark was well-known in the United Kingdom and around the world. It therefore claims that the Respondent willfully intended to trade on the Complainantís reputation.
The Complainant raises similar issues in support of its claim that the disputed domain names were registered and are being used in bad faith. It asserts that when the Respondent adopted its new company name and registered the disputed domain names, its representatives must have known of the existence of the Complainantís trademark AVENTIS and that therefore the disputed domain names were registered and used in bad faith.
The Respondent claims that the "aventisav" domain names are very different from the Complainantís trademark AVENTIS. It also stresses that it does not operate in the same business or industry as the Complainant.
The Respondent states that it has spent substantial amounts marketing its own brand and building its image for audio and visual products and services over "a considerable period of time". (The Panel notes that this period of time could only have commenced in January 2002, when the Respondent adopted the company name Aventis Audio Visual Limited.)
The Respondent stated that it has traded under the name "Visualex Business Systems" since 1986. However, on December 21, 2001, an affiliated company, Visualex Limited, went into liquidation. The laws of the United Kingdom provide that if associated companies are jointly owned by similar directors and if one of the companies is liquidated, the other associated company cannot continue to conduct business with similar names. Accordingly, it was necessary to change the name of Visualex Business Systems Limited.
The Respondent claims that it chose the name Aventis Audio Visual as follows:
"The name Aventis Audio Visual was chosen during a company brainstorming session because of the prominence of the letters "AV" representing the words "Audio Visual". In the process of selecting and deciding on the name Aventis there was never any consideration or mention of any similarity of the name with the name of the Complainant. The name was not chosen with any intent to create any confusion or similarity with the name of the Complainant."
The Respondent notes that the onus of proof is on the Complainant to show that the Respondent does not have any legitimate interests in the domain names. It claims to have used the domain names for "many years for the conducting of substantial business activity". (Again, the Panel assumes that the Respondent is referring to the period from January 2002, which is when it registered the disputed domain names.) It has operated its website accessible via the domain names since at least March 23, 2002.
Finally, the Respondent denies that the Complainant has presented any real proof that the domain names were registered or used in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has trademark registrations for the mark AVENTIS.
The issue is whether the domain names "aventisav" plus the various suffixes .net, .com and .org are confusingly similar to the Complainantís trademark AVENTIS.
The only difference between the domain names and the Complainantís trademark is the addition of the letters "av" following the mark AVENTIS. On balance, the Panel finds this difference may not be sufficient to take the domain names outside the category of confusingly similar - particularly in circumstances where the Complainantís trademark is an invented word and not a term in common use. AVENTIS may be considered to be the distinctive part of the domain names.
In these circumstances the suffix "av" is not sufficient to distinguish the domain names from the Complainantís trademark: Airport Authority v. HongKongAirport Inc Ė WIPO Case No. D2001-1417 (March 27, 2002).
B. No Rights or Legitimate Interests in domain names
The Complainantís allegation under both this provision and the next provision of the Policy (bad faith) is simply that its trademark AVENTIS is so well known that the Respondent must have known of it at the time it adopted it as part of its own company name. The Complainant therefore contends that the Respondentís use of the name AVENTIS has not been bona fide and cannot give rise to a legitimate right or interest in the domain name. It alleges that in using the mark AVENTIS the Respondentís intention was always to trade off the reputation of the Complainant.
As noted earlier, the Respondent claims that the name Aventis Audio Visual was chosen during a company brainstorming session because of the prominence of the letters "av" representing the words "audio visual". It claims that in the process of selecting and deciding on the name AVENTIS, there was never any consideration or mention of any similarity of the name with the name of the Complainant. The principal owner and director of the Respondent has provided a sworn affidavit signed before a Notary Public in which he has stated these facts on oath. This includes the statement that "the name was not chosen with any intent to create any confusion or similarity with the name of the Complainant". He has also deposed that since its inception the Respondent has engaged in the business of providing audio visual services and products.
The Policy outlines (paragraph 4(c)) circumstances which if found by the Panel to be proved, shall demonstrate the Respondentís right or legitimate interest in the domain name. The circumstance is where:
"Before any notice to the Respondent of the dispute, the Respondentís use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services;"
The Respondent has indeed provided evidence of a sophisticated and comprehensive website at "www.aventisav.com" which has plainly been in use since March 2002, i.e. for a full year before any notice to it of this dispute. Printouts of the website as at March 23, 2002, were referred to by the Respondent and are available at "www.archive.org". These show use of the site for advertising the sale and hire of audio visual equipment. The content and scope of the site (and the links provided on it) have nothing whatever to do with pharmaceuticals and are, in the view of the Panel, plainly genuine commercial offerings. (The .net and .org domain names in issue both point to "aventisav.com".)
The Complainant has not provided any factual basis for showing that the goods and services on the Respondentís websites are not a bona fide offering of goods or services. There is only an assertion that the Respondentís intention was to trade off the Complainantís reputation. But in the view of the Panel, there is nothing on the Respondentís websites which in any way evidences this.
This case can be contrasted with those cases where a Respondent has either put forward no explanation for registering a domain name containing another partyís trademark, or has put forward such an explanation but the Panel has not found the explanation to be credible. For example, The Liverpool Football Club and Athletic Grounds Public Limited Company & Liverpool FC.TV Limited v. Andrew James Hetherington Ė WIPO Case No. D2002-0046 in which the Respondent claimed to have registered <liverpoolfc.com> for use in relation to a business called The Liverpool Fashion Club, however no such business was ever conducted through the website.
A further example is the case Cattlecare Limited v. Wairua Holdings Pty Limited t/a Poplar Pastoral Co Ė WIPO Case No. D2001-1373 in which the Respondent claimed to not be aware of the Complainant or its trademark (which was identical to the domain name). However as the business being operated through the website was in the same country and in the same industry as the well-known Complainant, this claim also lacked credibility with the Panel.
The Panel has carefully considered whether it could be said that the well-known nature of the Complainantís name means that automatically use of the domain name <aventisav.com> (and the associated sites) is not a legitimate or bona fide offering of goods or services. But in the present case the Respondent has stated on oath that there was never any consideration of similarity of the name chosen with the name of the Complainant. In the face of the following cumulative factors:
(a) This sworn statement;
(b) The inability of a Panel to cross-examine a Respondent;
(c) The fact that there is nothing whatever on the Respondentís website (and the sites that link to it) which directly or indirectly suggest any connection whatever with the Complainant;
(d) The fact that the Respondent has provided evidence of a sophisticated website which has been in use for a year prior to the complaint and which offers genuine goods and services quite unconnected with any of the Complainantís activities;
the Panel is on balance not able to find that the Respondentís offering of goods and services lacked bona fides. The facts which persuade the Panel to this conclusion also overlap with those under the next element.
C. Registered and Used in Bad Faith
The Panelís findings in relation to the Respondentís legitimate interests and rights to the disputed domain names are also relevant to whether the disputed domain names were registered and used in bad faith.
Again, the only evidence put forward by the Complainant in support of its claim that the domain names were registered and used in bad faith, is that the Respondent must have known of the Complainant at the time it registered the disputed domain names.
But there is no evidence which provides a substratum of fact which enables a Panel to reach this conclusion. In this regard, the Panel notes that:
h There is no evidence that the Respondent acquired the domain names primarily for the purposes of selling, renting or transferring them to the Complainant. The domain names were registered in January 2002. There appears to have been absolutely no contact whatever between the Complainant and the Respondent between the date of registration or the date of first use of the websites (March 2002) and service of the Complaint on March 28, 2003.
h There is no evidence of a pattern of conduct by the Respondent in registering domain names to prevent owners of service or trademarks reflecting these in a corresponding domain name.
h There is no evidence that the domain names were registered primarily for the purposes of disrupting the business of a competitor. The Respondent and Complainant are not competitors and are in quite different fields of activity.
h There is no evidence of any use of the domain names to attract Internet users to the website for commercial gain. The fields of activity of the Complainant (pharmaceuticals) and the Respondent (audio visual equipment and services) are so different that there is no apparent crossover between them.
h The Respondent has put forward a convincing explanation as to why it was obliged to change its trading name at the time it did and has confirmed this in a sworn affidavit.
In light of these circumstances, the Panel finds that the Complainant has failed to demonstrate that the disputed domain names were registered or used in bad faith. In making this finding, the Panel notes that the Policy was established to permit the expedited disposition of clear cases of bad faith registration of domain names or cybersquatting abuses. This is not such a case. The Panel accepts the reasoning in SBC Communications Inc v. eWorldwideWeb, Inc Ė WIPO Case No. D2002-0608 (October 7, 2002):
"Whether a court would reach the same conclusion in a trademark infringement action, after more complete discovery and analysis under trademark law, is not our concern. See J. Crew v. Crew.com, WIPO Case No. D2000-0054 (April 20, 2000) ("The ICANN policy is very narrow in scope, covers only clear cases of Ďcybersquattingí and Ďcyber piracy,í and does not cover every dispute that might arise over domain names."); Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24th, 1999), "http://www.icann.org/udrp/ udrp-second-staff-report-24oct99.htm 4.1(c)" ("Except in cases involving Ďabusive registrationsí made with bad-faith intent to profit commercially from othersí trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts. . . . [The Policy] does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challengerís trademark).")."
It may very well be that the Complainant has a claim for trademark infringement under section 10(3) of the Trademarks Act 1994 (UK). While any such court finding might have a bearing on issues of bona fide use and/or bad faith, such an infringement claim is a matter which is beyond the scope of the UDRP and the jurisdiction of this Panel.
For all the foregoing reasons, the Complaint is denied.
Andrew Brown QC
Dated: June 9, 2003