d2003-0956 by leeonw


									                WIPO Arbitration and Mediation Center


          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 Sta
     tes of America.

2.   The Domain Name and Registrar

     The disputed domain name is <bentylol.com> is (the “Domain Name”) registered with e

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.

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     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.

           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

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     (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

     (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).

           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

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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

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          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).

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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

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     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.

     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

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Dated: February 13, 2004

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