AVENTIS PHARMA, Inc.; MERRELL PHARMACEUTICALS, Inc. v. CONNOR TRIP

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 registrar’s verification response. Notwithstanding the above, the Center made a registrar’s "Whois" printout on December 10, 2003, and furthermore, this Panel confirmed through the information reflected on the registrar’s "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 Respondent’s 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.A’s 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. Parties’ Contentions

A. Complainant

(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 Complainants’ 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 Complainant’s

trademarks by registering and commercially using the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s 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 Respondent’s

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 Complainants’ 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

Complainants’ 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

Complainants’ 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 Panel’s 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 Complainants’ 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 Complainants’

trademarks.

Bad faith can be presumed based on the fame of Complainants’ marks, such that

the Respondent was aware or should have been aware of Complainants’ 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 Complainants’ registrations known to the Respondent.

The Respondent is, in using the Domain Name, seeking to exploit user confusion

by diverting Internet users to the Respondent’s 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 Complainants’

trademarks to attract Internet users intentionally to Respondent’s 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.

7. Decision

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

Sole Panelist

Dated: February 13, 2004