WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations
Case No. D2005-0377
1. The Parties
The Complainants are Sanofi-Aventis and Aventis Pharma SA, of France, represented by Selarl Marchais De Candé, France.
The Respondent is Advent Innovations, C/O Millspaugh Tiffany, Shingle Springs, California, United States of America.
2. The Domain Names and Registrar
The disputed Domain Names <aventiservices.com> and <aventisolutions.com> are registered with NamesDirect.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2005. On April 12, 2005, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain names at issue. On April 13, 2005, NamesDirect.com 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 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2005.
The Center appointed Andrea Jaeger-Lenz as the sole Panelist in this matter on June 2, 2005. 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 Sanofi-Aventis is one of the leading pharmaceutical companies in the world, of which the Complainant Aventis Pharma S.A. is the French subsidiary. The details of the merger between Sanofi-Synthelabo and Aventis were widely publicized in the business press in 2004 and are therefore known to the Panel. The Complainant Sanofi-Aventis is the result of the takeover of the pharmaceutical company Aventis by the French pharmaceutical company Sanofi-Synthelabo in 2004. The name of Complainant Sanofi-Aventis was adopted by it on August 20, 2004. The Complainant offers a wide range of patented prescription drugs to treat patients with serious diseases and has leading positions in a number of therapeutic areas. As a consequence to the takeover, the Complainant has become owner of the following trademarks of Aventis:
- “AVENTIS”, French trademark No. 9876058, 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 and designating amongst others under the Paris Convention and the Madrid Agreement the following countries: Benelux, Democratic Peoples Republic of Korea, France, Germany, Italy, Spain, United Kingdom;
- “AVENTIS”, Community trademark No. 000993337 filed on November 18, 1998, for the same goods and services.
All of these trademarks are registered and widely used by the Complainants in connection with goods of Classes 1 and 5.
The Complainants have registered a number of domain names, which lead to active websites, namely;
- <aventis.com>, registered on March 27, 1998,
- <aventis.net>, registered on November 23, 1998,
- <aventis.org>, registered on November 25, 1998,
- <aventis.us>, registered on April 19, 2002.
The Respondent has registered, on January 14, 2005, the Domain Names in dispute.
The Domain Names resolve into the same website with several advertisements (for registrar Dotster and a lottery) and with several hyperlinks to other websites which are related to tourism, travel, financial planning, business and finance, health care, health and beauty and sports tickets.
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.
5. Parties’ Contentions
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainants claims that:
(i) The Domain Names in dispute are confusingly similar to the trademarks in which the Complainants have rights.
The Complainants claim that the disputed domain names reproduce entirely the “AVENTIS” trademarks.
The Complainants further contend that the addition of the suffix “Solutions” and “Services” do not eliminate the risk of confusion with the Complainants’s trademarks, as they are descriptive and do not prevent internet users from thinking there is a link between the Respondent’s Domain Names and the AVENTIS trademarks. In this respect, the Complainants cite “Aventis”, Aventis Pharma S.A. v. John Smith, WIPO Case No. D2004-0624 ruling that the addition of descriptive terms does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and Complainants’ trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names in dispute.
The Complainants state that the Respondent is not licensee nor otherwise permitted by the Complainants to use their trademarks or to register any domain names containing “AVENTIS”. The Complainants further contend that there is no relationship between the parties. Furthermore, neither the term “advent” nor the term “innovation” has any resemblance with “aventis”.
(iii) The Domain Name in dispute was registered and is being used in bad faith.
In support of this position, the Complainants contend that the Respondent must have been undoubtedly aware at the time of registration of the trademarks and domain names for “aventis”, due to the fact that, as from the beginning of the year 2000, the predecessor company of the Complainants have expended substantial amounts of money for advertisement in publications and has received extensive coverage by the media all over the world. The Complainants submit advertisements published also in the United States in the years 2001 and 2002. It is known to the Panel that particularly the merger between Sanofi Synthelabo and Aventis was accompanied by an extensive media and press coverage and campaign publishing the name “Aventis”.
Furthermore, the Complainants claim that as a consequence of their reputation, they have already been the victim of a number of domain name disputes and cites 11 decisions, in which the Complainants were successful in retrieving domain names registered by individuals seeking to take unfair advantage of its brand.
Furthermore, the Complainants contend that the Domain Names have never been used in relation to an active website and is merely passively held and displays pictures of the home pages of the websites, into which the disputed Domain Names resolve. Furthermore, he contends that it is constant jurisprudence of UDRP panels to consider passive holding, under appropriate circumstances, to be evidence of bad faith.
The Respondent did not reply to the Complainants’ contentions. After the expiry of the deadline to respond, the Respondent merely sent a one-line e-mail stating that he did not understand the issue.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainants a remedy:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or confusingly similar
The relevant parts of the domain names in dispute are “aventiservices” and “aventisolutions”. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” must be disregarded as being simply a necessary component of a domain name indicating the nature of top level domain.
The Panel accepts the Complainants’ allegations that the addition of a generic term to a trademark does not prevent a finding of confusing similarity. This refers to the words “solutions” and “services”. There are numerous WIPO UDRP decisions where it was found that the addition of a generic term does not service to distinguish the domain name from the trademark, but rather would reinforce the association of the Complainants’ trademark with a domain name (see Viacom International Inc. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755, Caterpillar Inc. v. Roam the Planet Limited, WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290). The Panel sees no reason to challenge this prevailing opinion. Even the fact that in this particular case the combination of “AVENTIS” and “Solutions” and “Services” respectively, would actually result in domain names containing two “s”, the fact that the Domain Names in dispute only contain one “s” in the middle do not justify a different ruling. The reason for this is that the technically missing “s” in each domain name does not lead to a different overall impression of a combination of the trademark “AVENTIS” with either “Solutions” or “Services”, because this can be merely regarded as a common typographic error when entering a domain name in the browser window.
Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel is satisfied with the Complainants’ statement that the Respondent is neither licensee nor otherwise authorized nor affiliated with the Complainants to use a domain name that includes the word “AVENTIS”. Also, the name “ADVENT”, even though it may bear an allusion to “AVENT” or “AVENTIS” in the sense of “the coming of”, is not sufficiently similar to “AVENITS” as to grant the Respondent the benefit of the right of fair use of the domain name based on his own name. The Respondent himself has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the domain name in dispute.
Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to prove registration as well as use in bad faith of the disputed domain names.
The Panel is satisfied with the Complainants’ contentions that “AVENTIS” is, due to extensive advertisement and press coverage, a well-known trademark. Considering the well-known character of the Complainants’ trademark “AVENTIS”, in particular subsequent to the extensive press coverage of the merger process in 2004, it is not likely that any trader or person, in particular at the time of the Domain registrations in January 2005, could chose to use it without seeking to create the impression of association with the Complainants. The Panel finds that the Respondent must have been aware of the Complainants’ trademark while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.
Considering the question if the disputed domain name is being used in bad faith, it must be taken into account that it is used for a website containing a number of hyperlinks to websites offering travel services, hotel accommodation, but also health product information on health products sold by competitors of the Complainants, this might mislead consumers. Also, advertisements and links on websites generally generate income for the website owner dependent on the number of hits that are generated on the website. It is obvious, that a website containing a well-known brand is hit more often than a no-name website. To this extent, the Respondent is making use of the well-known character of the Complainants’ trademark for generating profits in his own interests. Therefore, the Panel finds that the domain names are also being used in bad faith.
Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules the Panel orders that the domain names <aventisolutions.com> and <aventiservices.com> be transferred to the Complainant Sanofi-Aventis.
Dated: June 16, 2005