WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis v. Woofer Smith.
Case No. D2003-0338
1. The Parties
The Complainant is Aventis, Espace Européen de líEntreprise, Schiltigheim, France represented by Patrice de Candé, Selarl Marchais De Candé, Paris, France.
The Respondent is Woofer Smith, Houston, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <wwwaventis.com>.
The Registrar with which the disputed domain name is registered is Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2003. On May 2, 2003, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, Go Daddy Software, Inc. 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 May 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2003. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 5, 2003.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on June 23, 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. The Administrative Panel is required to give its decision by July 7, 2003.
4. Factual Background
From the Complaint and the various annexures to it, the Administrative Panel has found the following facts:
The Complainant Aventis has been formed in France as a result of merger between Group Rhone Poulenc S.A., France and Hoechst Aktiengesellschaft of Germany. The Complainant is one of the leading manufacturers of pharmaceuticals and patented prescription drugs for respiratory, allergy, cardiology, thrombosis, oncology, diabetes, etc. diseases. The Complainant is the registered owner of the trademark AVENTIS in France. The said trademark AVENTIS is also registered as an international trademark in countries like Germany, Benelux, Italy, Spain, United Kingdom, etc. The Complainant is the owner of the domain names <aventis.com>, <aventis.net>, and <aventis.org>.
Respondentís Identity and Activities
The Respondent did not reply to the Complainantís contentions. Hence, the Respondentís activities are not known.
5. Partiesí Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that it is the owner of the registered trademark AVENTIS in respect of pharmaceuticals and drugs. The Complainant holds a number of domain names incorporating the mark AVENTIS. Domain names <aventis.com>, <aventis.net> and <aventis.org> are in use as web sites providing information relating to the Complainantís organization. The registration of the domain name <wwwaventis.com> by the Respondent is only a "typosquatting". The addition of the words "www" will not make the domain name different in any manner whatsoever from the trademark AVENTIS of the Complainant. Thus, the domain name <wwwaventis.com> is substantially similar or identical to the trademark owned by the Complainant.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <wwwaventis.com> as the Respondent is known as "Woofer Smith". Further that the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of misleading and misdirecting the public to unintended sites.
Regarding the element at (iii), the Complainant contends that the main object of registering the domain name <wwwaventis.com> by the Respondent is to mislead the general public and the customers of the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, 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;
(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.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name <wwwaventis.com>. The Complainant is the registered owner of the trademark AVENTIS in many countries, including the France. The said trademark AVENTIS has been used in the domain name of the Respondent. The Respondent has only added "www" before the trademark. The inclusion in the domain name of the prefix "www" does nothing to distinguish it from the trademark. This is a case of "typosqatting". The domain name <wwwaventis.com> indicates a relationship between the Complainantís trademark and the domain name in question.
In various decisions, the Administrative Panels have held that though an attempt has been made to change the trademarks by prefixing "www" in the domain names, in fact they remain substantially similar or identical to the mark and cannot be allowed. See America Media Operations, Inc. v. Erik Simons, WIPO Case No. AF Ė 0134.
There is no doubt that the domain name is confusingly similar to the trademark of the Complainant. The Administrative Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) 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 a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial 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.
The Respondent has not filed any response in this case. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency Inc. et al v. Greenhouse Agency Ltd. et al, WIPO Case No. D2000-1221. AVENTIS is the registered trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating said trademark and that nobody would use the word AVENTIS unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 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 it 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 Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on its web site or location.
The contention of the Complainant is that the present case is covered by the first circumstance. The Respondent has so far not activated the site. The Administrative Panels have held in Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003 and in a number of other cases, that in some cases "inaction" may constitute bad faith use of the domain name. Further, in the case of General Electric Company v. Fisher Zvieli a/k/a Zvieli Fisher, WIPO Case No. D2000-0377, the Administrative Panel has held that the "typosquatting" constitutes bad faith registration and use.
This and other information submitted by the Complainant leads to the presumption that the said domain name was registered and used by the Respondent in bad faith. The Administrative Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.
In light of the forgoing findings, namely, that the domain name is confusingly similar to the trademark or service mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, the Administrative Panel directs that the domain name <wwwaventis.com> be transferred to the Complainant.
V. K. Agarwal
Dated: July 1, 2003