WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis Pharma, Inc., Merrell Pharmaceuticals, Inc. V. Connor Trip
Case No. D2003-0956
1. The Parties
The Complainants are Aventis Pharma, Inc., West Laval, Quebec, Canada and Merrell Pharmaceuticals, Inc., 3711 Kennett Pike, Suite 200, Greenville, Delaware 19807, United States of America, represented by Selarl Marchais De Candé, of Paris, France.
The Respondent is Connor Trip, Andrews Air Force Base, District of Columbia, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <bentylol.com> is (the "Domain Name") registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2003. On December 2, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. The registrar eNom failed to submit a registrarís verification response. Notwithstanding the above, the Center made a registrarís "Whois" printout on December 10, 2003, and furthermore, this Panel confirmed through the information reflected on the registrarís "Whois" website, which provides information of the domain names that are registered by eNom, Inc., that the Respondent is listed as the registrant; that such domain name is in "registrar-lock" status; and confirmed the details for the administrative and technical contacts at which communications under this domain name dispute have been sent to. 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 December 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2003. The Respondent did not submit any response. Accordingly, the Center provided notice of the Respondentís default on January 4, 2004.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 30, 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
(a) MERRELL PHARMACEUTICALS Inc., formerly called MERRELL DOW PHARMACEUTICALS Inc. is a subsidiary company of AVENTIS Inc. which is part of the AVENTIS Group, a leader in the pharmaceuticals field.
AVENTIS PHARMA INC. formerly called HOECHST MARION ROUSSEL CANADA Inc., is the Canadian pharmaceutical subsidiary of AVENTIS PHARMA S.A.
AVENTIS PHARMA S.A. is a wholly-owned subsidiary of AVENTIS S.A., the new company after a merger between RHONE-POULENC and HOECHST.
AVENTIS PHARMA Inc. and its affiliate company MERRELL PHARMACEUTICALS Inc. have joined in the Complaint against the Respondent.
(b) The AVENTIS Group offers a wide range of patented prescription drugs.
(c) "BENTYL/BENTYLOL" (dicyclomine capsules and tables marketed under the brand BENTYLOL in Canada and BENTYL in other countries) are antispasmodic and anticholinergic drugs mainly used for the relief of gastrointestinal symptoms associated with irritable bowel syndrome.
(d) Information related to these products is available on different pharmaceuticals websites.
(e) MERRELL PHARMACEUTICALS Inc. is the legal and registered owner of:
"BENTYL", US Trademark No. 0681724, registered on July 14, 1959, for "antispasmodic in capsule, tablet, syrup, and injectable forms and as an ingredient in other preparations" in class 5 (see Annex 5-1 of the Complaint). BENTYL was also registered in various other countries (see generally Annex 5 of the Complaint).
(f) AVENTIS PHARMA INC. (formerly called HOECHST MARION ROUSSEL CANADA Inc.) is the legal owner of:
"BENTYLOL", Canadian trademark No. 118834 registered on July 15, 1960 for "antispasmodic in capsule, tablet, syrup and injectable forms and as an ingredient in other preparations" (see Annex 3-7 of the Complaint). The change of name proceedings is pending as indicated in the letter dated of 4 September 2003 from Aventis Pharma S.Aís Canadian agent GOWLINGS (see Annex 5-7 of the Complaint).
(g) All of these trademarks are registered and widely used in connection with class 5 of the international classification i.e. pharmaceutical products.
5. Partiesí Contentions
(i) The Domain Name is confusingly similar to the trademark BENTYL as the element ".com" is not distinctive and is widely known by the Internet user.
(ii) The adjunction of the term ".com" is not sufficient to avoid any likelihood of confusion between the domain name <bentylol.com> and the trademark BENTYL as the terms BENTYLOL and BENTYL are very similar.
(iii) The Domain Name is similar to the prior trademark BENTYL and fully includes the prior Canadian trademark BENTYLOL.
(iv) Respondent has no rights to the Domain Name as it is identical and confusingly similar to the trademarks BENTYLOL and BENTYL, respectively owned and widely used by the Complainants as active trademarks.
(v) By using the Domain Name, the Respondent intentionally attempted to attract for financial gain Internet users to his website, by creating a likelihood of confusion with the Complainantsí trademarks as to the source, sponsorship, affiliation, or endorsement of the websites or of the products or services on the websites.
(vi) The Respondent, as a professional chemist, could not ignore the existence of the drugs and trademarks BENTYL / BENTYLOL. He nevertheless registered the Domain Name in bad faith.
(vii) The Respondent was undoubtedly aware at the moment of the registration of the Domain Name of:
- the existence of the drugs name BENTYL or BENTYLOL respectively developed and sold by the Complainants; and
- the existence of the trademarks BENTYL or BENTYLOL.
(viii) The reproduction by the Respondent of the trademarks of the Complainants without any authorization, creates confusion for consumers.
(ix) The Domain Name was registered and is being used for a commercial purpose.
(x) The Respondent has intentionally attempted to benefit from the Complainantís trademarks by registering and commercially using the Domain Name.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
In light of the above, the Panel may draw such inferences from the Respondentís failure to comply with the Rules as he considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, Complainants must prove each of the following:
(i) the Domain Name is identical or confusingly similar to Complainantsí trademark or service mark;
(ii) 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 Complainants have registered BENTYL and BENTYLOL in various countries in connection with pharmaceutical products and have made continuous use of their marks for many years (see Annex 5 of the Complaint). The Domain Name incorporates Complainantsí distinctive trademarks and as such creates sufficient similarity to be confusingly similar (see Section 4(a) of the Policy).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainantsí trademarks pursuant to the Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO decisions have held that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainants have asserted that the Respondent has no relationship with or authorization from the Complainants to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the Domain Name; the Panel further notes that the Respondent has not, and has never been, commonly known by the Domain Name. The Panelís review is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the Domain Name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainantsí trademarks are very well known worldwide, it is very unlikely that the Respondent, at the time of registration of the Domain Name or thereafter, was not aware that he was infringing the Complainantsí trademarks.
Bad faith can be presumed based on the fame of Complainantsí marks, such that the Respondent was aware or should have been aware of Complainantsí well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices the United States or Canada would have made Complainantsí registrations known to the Respondent.
The Respondent is, in using the Domain Name, seeking to exploit user confusion by diverting Internet users to the Respondentís website for his own benefit and commercial gain. Diverting users in this misleading manner is further evidence of bad faith (see Viacom International Inc. v. Matrix Management and T. Parrott, WIPO Case No. D2001-1442).
Further, the Respondent is trading on the goodwill existing in the Complainantsí trademarks to attract Internet users intentionally to Respondentís website for purposes of commercial gain. This constitutes evidence of bad faith use and registration under Paragraph 4(b)(iv) of the Policy (see Six Continents Hotels, Inc. v. Anti-Globalization Domains, WIPO Case No. D2003-0765; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).
The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered the Domain Name in bad faith
In light of the above, the Panel concludes that the Complainants have proven bad faith in registration and use on the part of 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 name <bentylol.com> be transferred to the Complainants.
Thomas P. Pinansky
Dated: February 13, 2004