WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventis, Aventis Pharma SA. v. Ubaldo Fernandes
Case No. D2004-0910
1. The Parties
The Complainants are Aventis of Schiltigheim, France, and Aventis Pharma SA., Antony, France, represented by Maître Patrice de Candé, of Selarl Marchais de Candé, Paris, France.
The Respondent is Ubaldo Fernandes, Shamiya, Kuwait.
2. The Domain Name and Registrar
The disputed domain name <hpaventis.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2004. 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 November 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2004. The Response was filed with the Center on November 23, 2004.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 8, 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
Aventis is the name of a new pharmaceutical group resulting from the merger of Rhône-Poulenc and Hoechst, its major shareholder at the end of 2003, being Kuwait Petroleum Corporation.
Aventis Pharma SA. is responsible for managing all the domain names of the Aventis group.
The Complainants are the proprietors of the AVENTIS trademark, registered in France under No. 98 760 585, in classes 1, 5, 10 and 31, registered as an International Trade Mark under No. 708890, in the same classes, with a wide number of national designations, and registered as a European Community Trade Mark, under No. 993337, also in the same classes
The Complainants are the proprietors of, inter alia, the top level domain names <aventis.com>, <aventis.net> and <aventis.org>.
5. Parties’ Contentions
The Complainants allege that the name Aventis is well known internationally as belonging to them and have submitted evidence as to the numerous references to it on the Internet, and have submitted details of an advertising and image survey, of a global corporate campaign and of its media planning activities, all dated 2002.
The Complainants further allege that, due to the important shareholding by Kuwait Petroleum Corporation, the Respondent, who is resident in Kuwait, would have been “undoubtedly aware” of the existence and reputation of the name Aventis at the time of registration of the domain name at issue, and have submitted details of publicity relating to the name Aventis on the Kuwait News Agency’s website.
The Complainants allege that the “hpaventis” is confusingly similar to “aventis”, the mere difference of adding “hp” at the beginning of “hpaventis” is not sufficient to prevent the public from thinking that the domain name at issue is “somehow connected to the AVENTIS trademarks”.
The Complainants have drawn the Panel’s attention to two possible uses of “hp” relating to the Complainants’ pharmaceutical business; (1) as the abbreviation of the bacterium known as “helicobacter pylori”, research into which is part of the Complainants’ activities. Details of this usage has been supplied to the Panel; (2) as part of the abbreviation “AP-HP”, for Assistance Publique des Hôpitaux de Paris, a public health federation chaired by the Mayor of Paris, which is the regional hospital centre for the Paris metropolitan area, with 90,000 employees and providing healthcare delivery, teaching, medical research, prevention, health education and emergency care, Evidence of the well known nature of this organization, of the use of the “AP-HP” abbreviation, and the fact that Aventis is listed as one of its partners has been supplied to the Panel.
The Complainants allege that the absence of any obvious linkage to the Respondent’s name, the fact that the registration took place without the Complainants’ permission and the fact that the website has not been used, prove that the Respondent had no rights or legitimate interests in the domain name at issue.
The Complainants allege that the domain name at issue was, consequently, registered in bad faith. The Complainants concede that both registration and use in bad faith need to be established for them to succeed in these proceedings. In the absence of use of the domain name at issue, they have drawn the Panel’s attention to a number of previously decided cases in which non-use, or “passive holding” of a domain name has, in appropriate circumstances, been deemed to satisfy the use in bad faith requirement, notably the well-known decision in Telstra Corporation Limited v. Nuclear Marhmallows, WIPO Case No. D2000-0003 and the decision in Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275, and submit that the circumstances of this case are sufficient to justify a finding in their favour on this ground.
The Respondent states that he is working as a Commercial Manager and Partner with Al-Emtiaz General Trading & Contracting Company, Shuwaikh Industrial Area, Shuwaikh Kuwait, and has, on behalf of the company, been negotiating since 2003 with many Chinese companies of batteries for import and distribution and of batteries in Kuwait and the Middle East, “creating its own brand name called HPAVENTIS”.
He submits that “hpaventis” is a completely different trade name or domain name to “aventis” “and has been developed and created after a lot of hard work and mental strain since it implies a solid meaning in the Battery industry”. He explains that “hpaventis” is “basically a well thought short form or abbreviation” for the slogan “High Power And Vented”, containing the following elements:
HP stands for High Power,
A stands for And
Ventis stands for Vented, Vent or Vent is “(Properly Ventilated Battery Design Structure)”.
He claims: “Furthermore, “Vent is” is a generic word and can be found in the most commonly used thesaurus or dictionary. It is very unfortunate and the limitations of the Internet domain-naming system that it does not allow s a space between alphabets due to which the word’s “Vent is” have been joined together as “Ventis””.
The Respondent denies that the trademark/trade name AVENTIS and HPAVENTIS are confusingly similar, claims that he has legitimate rights and interest in the domain name at issue through independent devising of “hpaventis”, which is “very relevant to the proposed activity”, and that the domain name was not registered in bad faith. He alleges that the fact that the website is not yet operational is due to the fact that it is “still under development”, and he emphasizes that “the Domain Name is very relevant to its proposed activity which is “Batteries”.
He goes on to state: “Furthermore, the Domain Name is not proposed to be used in the pharmaceutical industry or it is not in the same industry where Aventis is currently engaged. This proves that the Complainant is just trying to make its case based on predictions and not based on facts. The fact is that Aventis group being a huge organization and with the backing of huge financial resources is trying to manipulate and dominate without sufficient reasoning with the pretext of protecting its interests, thereby victimizing the innocent and the end result being wasting time and money of financially weak individuals and companies. It is like the big fish eating the small fish”.
6. Discussion and Findings
For the Complainants to succeed, the Panel must, under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
(i) Identical or Confusingly Similar
So far as the Panel is aware, after checking various dictionaries, “aventis” is a word coined for the purpose of identifying the Complainants and its products and services. It is, therefore, entitled to the highest degree of consideration when considering confusing similarity with another word.
The domain name at issue is “aventis” preceded by the letters “hp” in a single word.
As no language known to the Panel has “hp” as being an independently pronounceable phoneme, the first impression of “hpaventis” is likely to be that it either denotes “h” + “paventis”, or “hp (with both letters individually pronounced) + aventis”.
“h” + “paventis” has not been advanced as a potential source or meaning of “hpaventis” by either party to the dispute. In the Panel’s opinion, it can be disregarded.
“hp” has many possible significances. The Complainants have advanced two (to neither of which it has claimed propriety rights). The Respondent has referred to “high powered”. “www.websters-online-dictionary.org” lists the following:
“The Hewlett-Packard Company, commonly known as HP, is a very large, global company headquartered in Palo Alto, California, United States. Its products are concentrated in the fields of computing, printing, and digital imaging. It also sells software and services.
The horsepower (hp) is the name of several non-metric units of power. In scientific discourse the horsepower is rarely used due to the various definitions and the existence of a SI unit for power, the watt (W). However, the idea of horsepower persists as a handy term in many languages, particularly in the automotive industry for listing the maximum power of internal-combustion engines.”
The dictionary also lists a Dutch meaning, “halfpension”, an English meaning “high performance” (similar to the “high powered” mentioned by the Respondent), a French meaning, “haut parleur”, a German meaning, “halbpension”, and a Spanish meaning “hiperparatoidismo”.
The Panelist could add, in the English language, “hp” (or “HP”) as the well known abbreviation for “hire purchase” and as the trademark for a brown sauce commercially available in bottles.
In the Panel’s opinion, this multiplicity of possible meanings of the intials “hp”, and the fact that “hp” is not an independently pronounceable phoneme, renders “aventis” as the predominant element of “hpaventis”. Accordingly, the Panel finds that “hpaventis” is confusingly similar to “aventis”, in which the Complainants have not only registered trademark rights, but have demonstrated to the Panel’s satisfaction that they can take benefit of “well known” mark status.
The Panel regards it as settled by decisions in previous cases that the “.com” element of the domain name at issue is to be disregarded in this context.
This finding is based solely on a comparison of “hpaventis” and “aventis” per se. The Complainants clearly have rights to the trademark AVENTIS. Even though these rights may be held to be limited in other, fuller, proceedings relating to trademark infringement or unfair competition/passing off, the Panel takes the view that the test of paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy is satisfied by a strict comparison of the two signs per se, providing that the Complainant/s has/have satisfied the Panel as to the existence of trademark rights in its/their sign regardless of the goods/services to which the trademark rights might be limited in such fuller proceedings, as the further tests of paragraphs 4(a)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy serve, in conjunction with the test of paragraph 4(a)(i) as above interpreted, to meet the aims of the Uniform Domain Name Dispute Resolution Policy in its own context.
The Panel, accordingly, decides that the Complainants have satisfied the test of paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy
(ii) Rights or Legitimate Interests
Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy sets out guidelines as to what might constitute rights or legitimate interests in a domain name, namely:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
In the present case, only paragraph 4(c)(i) is applicable.
The Respondent claims that, since 2003, he has, on behalf of his company, been negotiating with Chinese companies about possible distribution of Chinese batteries by his company in Kuwait and the Middle East, and that “Hpaventis” was independently devised as a trademark for this project and those goods. In his e-mail response to the complaint, he mentions an Annex 1, containing some e-mail text replies from the Chinese manufacturers, but this was never received by the WIPO Arbitration & Mediation Center, and no evidence of outgoing e-mails from the Respondent or his company to the Chinese manufacturers was presented to the Panel. Accordingly, the Panel only has the Respondent’s uncorroborated testimony to rely on.
The Panel finds that this is not sufficient to meet the “demonstrable preparations” criterion of paragraph 4(c)(i), and that the Complainants have, accordingly, satisfied the test of paragraph 4(a)(ii) of the Uniform Dispute Resolution Policy
(iii) Registered and Used in Bad Faith
It follows that a finding in favour of the Complainant/s in connection with the tests of paragraphs 4(a)(i) and (ii), is likely to result in a finding that the domain name at issue was registered in bad faith.
In Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, the Panel considered the question of a well known mark in connection with the mark NOKIA (the addition of “girls” to the trademark being regarded by the Panel as “a rather neutral addition to this trademark”) and concluded: “The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent … could have been unaware of the trademark rights vested therein when registering the Domain Name, and decided that there had been registration in bad faith in that case.”
In the present case, from his own submission, the Respondent was clearly aware that: “Aventis group [is] a huge organization and with the backing of huge financial resources”. The reference to “huge financial resources”, and the Respondent’s location, makes it difficult to accept that he might not have also known of the important shareholding of Kuwait Petroleum Corporation in the Aventis group, and that the Kuwait Petroleum Corporation are also known (from the Panel’s own knowledge) to be involved in ownership of businesses other than pharmaceutical, such as the Q8 chain of service stations (where, inter alia, batteries, are habitually traded).
The Respondent’s explanation of the provenance of “hpaventis” is difficult, in the Panel’s opinion to fully accept. The “a”, to stand for “and”, is unusual. The Panel, after checking Rogiet’s A-Z Thesaurus and various dictionaries, including “www.websters-online-dictionary.org”, was unable to find any entry of “vent is” (or “ventis”), and a strong suspicion remains that “hpaventis” was inspired (perhaps even unconsciously) to take some benefit from the Aventis group reputation, and its Kuwait Petroleum Corporation connection. The Panel could readily think of a number of alternative domain names to that registered by the Respondent which would have met the Respondent’s “design criteria” and have avoided reasonable action by the Complainants, and finds that any doubt on his part should, in all the circumstances of this case, be resolved in favour of the Complainants.
The Panel, accordingly, finds that the Complainants have satisfied the registration in bad faith “leg” of the dual test of paragraph 4(a)(iii), acknowledged by the Complainants.
In connection with the use in bad faith “leg”, the Panel unreservedly accepts the reasoning of the Panel in Telstra Corporation Limited v. Nuclear Marhmallows, WIPO Case No. D2000-0003, and is aware of a number of cases, including Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275, referred to by the Complainants, and the cases referred to therein, in which “passive holding” has been deemed to constitute use in bad faith.
The Panel believes that the special circumstances of this case, including the fact that the domain name at issue is registered in the Respondent’s personal name and not that of the company to which he refers as belonging, the unconvincing explanation which he has given as to the provenance of the domain name, and his uncorroborated evidence as to the projected use of the domain name, constitute grounds for the Panelist to consider that the necessary special circumstances exist to justify him in finding for the Complainants on this ground.
The Panel also agrees with the Panel in Aventis, Aventis Pharma SA. v. Dac Hung Nguyen, WIPO Case No. D2004-0252, in which the Complainants in this case were also the Complainants, that there is a risk that Internet users may think that the disputed domain name belongs to the Complainants or are controlled by the Complainants.
In all these circumstances, the Panel finds that the Complainants have satisfied the second leg of the test of paragraph 4(a)(iii) of the Uniform Domain Name Dispute.
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 <hpaventis.com> be cancelled, as requested by the Complainants.
George R. F. Souter
Dated: December 22, 2004