Johnson & Johnson v. Chris Woll
Claim Number: FA2103001937861
Complainant is Johnson & Johnson (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Chris Woll (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <janssen-vaccine.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 24, 2021; the Forum received payment on March 24, 2021.
On March 25, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <janssen-vaccine.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@janssen-vaccine.com. Also on March 25, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Johnson & Johnson, operates one of the world’s largest healthcare companies. Complainant has rights in the JANSSEN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,465,129, registered Jul. 3, 2001). Respondent’s <janssen-vaccine.com> domain name is confusingly similar to Complainant’s JANSSEN mark, only differing by the addition of a hyphen, the generic term “vaccine,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <janssen-vaccine.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the JANSSEN mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent originally used the domain name to redirect to Complainant’s own <janssen.com> domain name. After contacting the registrar of the disputed domain to terminate the redirect, the disputed domain no longer resolves to a website with any substantive content.
Respondent registered and uses the <janssen-vaccine.com> domain name in bad faith because Respondent inactively holds the disputed domain name. Respondent’s use of a privacy service, along with providing false WHOIS information, further indicates Respondent’s bad faith. Additionally, Respondent possessed actual knowledge of Complainant’s trademark rights prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <janssen-vaccine.com> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the JANSSEN mark through its registration with the USPTO. Registration of a mark with a trademark agency is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 2,465,129, registered Jul. 3, 2001). The Panel finds that Complainant has rights in the JANSSEN mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <janssen-vaccine.com> domain name is confusingly similar to Complainant’s JANSSEN mark, only differing by the addition of a hyphen, the generic term “vaccine,” and the “.com” gTLD. Addition of generic terms and a gTLD along with a hyphen are generally insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <janssen-vaccine.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the JANSSEN mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information on record indicates the registrant of the disputed domain name utilized a privacy service, as it merely lists “WhoIsGuard Protected / WhoIsGuard, Inc.” under the registrant’s name and organization. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent does not use the <janssen-vaccine.com> domain name for any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use, but rather redirects Internet users to Complainant’s legitimate webpage. Previous Panels have held that using an infringing domain name to link back to Complainant’s legitimate website does not confer rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of good or services nor for a legitimate noncommercial or fair use.
After contacting the registrar for the <janssen-vaccine.com> domain name, Complainant was able to terminate this redirection, and contends that since then, the disputed domain name has remained inactive. Failing to make active use of a disputed domain name is also indicative of a lack of rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Although Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant further argues that Respondent’s use of a privacy service when registering the <janssen-vaccine.com> domain name is further evidence of bad faith. Previous Panels have held that use of a privacy service may demonstrate evidence of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The WHOIS information demonstrates that Respondent utilized a privacy service when registering the disputed domain name which is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent registered the <janssen-vaccine.com> domain name with actual knowledge of Complainant’s rights in the JANSSEN mark. Under Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the fame of Complainant’s mark and the use Respondent makes of the disputed domain. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant is one of the largest healthcare companies in the world, and Respondent initially used the disputed domain name to redirect users to Complainant’s website. Complainant also notes that the generic term “vaccine” is closely associated with Complainant’s business. The Panel finds that Respondent had actual knowledge of Complainant’s mark and registered and uses the domain name in bad faith.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <janssen-vaccine.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
April 26, 2021
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