Johnson & Johnson v. Rx USA
Claim Number: FA0205000112609
PARTIES
Complainant
is Johnson & Johnson, New
Brunswick, NJ (“Complainant”) represented by Melissa L. Klipp, of Drinker,
Biddle & Shanley LLP.
Respondent is Rx USA, Long
Island City, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <remicade-chrons-disease.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 30, 2002; the Forum received a hard copy of the
Complaint on May 1, 2002.
On
May 1, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name
<remicade-chrons-disease.com>
is registered with Tucows, Inc. and that the Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
May 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 22,
2002 by which Respondent could file a Response to the Complaint, was transmitted
to Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@remicade-chrons-disease.com by e-mail.
A
timely Response was received and determined to be complete on May 20, 2002.
Complainant filed a timely Additional Submission May 28,
2002.
On May 30, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
Complainant
asserts that it has well-established rights in the mark that is contained in
its entirety in the domain name registered by Respondent and that the domain
name is identical to or confusingly similar to that mark. Complainant urges that it has rights to and
legitimate interest in the mark contained within the domain name and that
Respondent has no such rights.
Complainant further maintains that the Respondent acted in bad faith in
registering a domain name containing Complainant’s mark because, among other
allegations, Respondent knew before registering the domain name that
Complainant had rights in the mark; that Respondent registered the domain name
to profit from Complainant’s goodwill and to create the impression of right and
association with Complainant without license to do so, and that Respondent registered
the domain name to prevent Complainant from utilizing its mark in a domain
name. Further, Complainant urges that Respondent’s offer to sell the domain
name, among other things, establishes Respondent’s bad faith.
B. Respondent asserts in response as follows:
Respondent
does not address the ICANN burden but states that the primary issue is whether
Respondent’s domain name has damaged Complainant’s goodwill. Respondent does
not address the issue of the identical or confusingly similar nature of the
domain name. Respondent asserts a right
as a seller of Complainant’s product to use Complainant’s mark in a domain name
but does not support this allegation with proof of license or right. Respondent
makes the subjective statement that Respondent did not act in bad faith.
C. Complainant’s Additional Submission
maintains as follows:
Complainant’s
Additional Response sets out that Respondent discusses trademark infringement
actions but does not respond to or challenge the Complainant’s showing of the
three-part burden in this type of case.
FINDINGS
Complainant’s
subsidiary holds the rights to REMICADE, a registered trademark that is
registered on the Principal Register of the United States. Complainant’s
subsidiary has expended millions of dollars to research, develop, to test and,
since 1998, to market its REMICADE as an FDA-approved product for the treatment
of Crohn’s Disease and Rheumatoid Arthritis.
More than 230,000 patients worldwide use REMICADE
and Complainant has invested millions of dollars in promoting it on an
international market as a treatment for autoimmune diseases.
REMICADE is a coined and fanciful term without
dictionary meaning.
Complainant operates at least four domain name web
sites to provide information about REMICADE.
Respondent registered the disputed domain name
September 7, 2000, long after Complainant acquired rights to the mark. Respondent is not affiliated with
Complainant and has no trademark or other rights in the REMICADE mark.
The central issue is not whether the
goodwill surrounding Complainant’s trademark has been damaged; the issue is
whether Complainant has made the necessary showing pursuant to ICANN Policy and
Rules to prevail.
Respondent concedes that Complainant
maintains its trademarks on its products and Respondent concedes that
Respondent has been selling Complainant’s product REMICADE by utilizing the
name of Complainant’s well-known product in a domain name. Respondent further
concedes that although it disclaims affiliation with Complainant on the Web
site, Respondent knowingly is making use of a protected trademark that is owned
by Complainant without making a showing of proof that Complainant has given
Respondent any right to use the mark.
Respondent further concedes that it
obtains the drug from legitimate wholesale sources but Respondent has failed to
show how this empowers Respondent to sell Complainant’s product using
Complainant’s well-known product name as bait to attract business without
Complainant’s permission.
Respondent has engaged in a pattern of
registering domain names that wholly incorporate the trademarks of
pharmaceutical companies, including <gleeve-oncology.com>,
<activase.net>, <gonal.net>, <lovenox-anticoagulants.com>,
<hycamtin.net>, <temodar-oncology.com>,
<elspar-oncology.com>, <rituxan-oncology.com>,
<fludaraoncology.com> and <vesanoid.net>.
On March 25, 2002, Complainant sent a
Cease and Desist letter to Respondent and on March 26, 2002, Respondent offered
to add a disclaimer to its Web page.
Complainant notified Respondent that a disclaimer was insufficient to
solve the problem and, in turn, Respondent offered to sell the site to
Complainant. No amount of money was specified.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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.
Identical to and/or Confusingly Similar
Complainant
has established that it has rights in the REMICADE mark, registered as a
trademark with the United States Patent and Trademark Office. Complainant notes that the REMICADE mark is
used to reference its prescription drug treatment for Crohn’s Disease and
Rheumatoid Arthritis. Complainant also
notes that it operates a website at <remicade-crohns.com> for individuals
looking for information on REMICADE.
Respondent
does not refute that the disputed domain name contains Complainant’s entire
REMICADE mark. Respondent argues that
no confusion is created by the disputed domain name because the ultimate source
is identified as Complainant on Respondent’s Web site. The Panel is not persuaded by this
contention absent proof that Respondent has been given permission by
Complainant to use its trademark in this manner.
The Panel finds that ICANN Policy ¶ 4(a)(i) addressing
“confusing similarity” has been satisfied.
Rights to or Legitimate Interests
Complainant
has established its rights to and legitimate interest in the mark contained in
its entirety in the domain name registered by Respondent. Complainant asserts that Respondent uses the
disputed domain name to divert Internet users to its Rx USA website for
Respondent’s commercial gain.
Complainant argues that Respondent’s use is not in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), because
diverting consumers to its own website by using Complainant’s REMICADE mark is
not a legitimate use of the domain name.
See Vapor Blast Mfg. Co. v.
R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also Centeon L.L.C. v. Ebiotech.com, FA 95037 (Nat. Arb. Forum July 20,
2000) (finding that Respondent illegitimately used the domain names when it
used Complainant’s trademarks to lead Internet users to its on-line pharmacy).
Complainant
argues that Respondent is not commonly known by the disputed domain name and is
not licensed or authorized to use the REMICADE mark. The Panel may find that Respondent is only known as Rx USA; thus,
Respondent has not refuted Complainant’s showing under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Complainant
also asserts that Respondent’s rerouting activities are for Respondent’s
commercial gain because Respondent sells Complainant’s trademark products at an
online pharmacy. Complainant argues
that Respondent misleadingly diverts potential consumers of its product by
using Complainant’s REMICADE mark, which evidences Respondent’s lack of rights
or legitimate interests under Policy ¶ 4(c)(iii). See Kosmea Pty Ltd.
v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain
name where Respondent has an intention to divert consumers of Complainant’s
products to Respondent’s site by using Complainant’s mark); see also Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate
interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR).
The
Panel does not find persuasive Respondent’s claim that it is making a bona fide
offering of goods or services in connection with the disputed domain name
because Respondent is a licensed pharmacy and legally sells “genuine REMICADE”
with a disclaimer that it has no relations with Complainant. Nor is the Panel
persuaded by Respondent suggestion that Complainant cannot sell the REMICADE
drug itself directly to consumers and that therefore, Respondent is legitimately
using the REMICADE mark as an online retailer of the drug. Any authority that would support that
contention does not apply here because Respondent is not making a bona fide
offering of goods and services; Respondent is knowingly using Complainant’s
mark for its own gain without making a showing that it has any right to do so. See
Realmark Cape Harbour L.L.C. v. Lewis,
D2000-1435 (WIPO Dec. 11, 2000) (finding that the Respondent was using the
domain name in connection with a bona fide offering of goods and services where
Respondent was not holding itself out as Complainant given its disclaimer on
the website).
Respondent
further claims to be using Complainant’s REMICADE mark in the disputed domain
name legitimately and fairly because the mark serves as a mere advertisement in
the same manner that a “retail store may display a Coca-Cola banner to
advertise the availability of Coca-Cola in their store.” Respondent does not dispute that it is not
known by the domain name pursuant to Policy ¶ 4(c)(ii) and that Respondent
operates its business as Rx USA.
Respondent has not offered proof that Complainant has asked Respondent
to advertise or sell its product using the name of Complainant’s product to do
so. The Panel finds that Respondent does not acquire rights to and legitimate
interests in Complainant’s mark in the manner Respondent has used here.
The Panel finds that ICANN Policy ¶ 4(a)(ii) addressing
“rights to or legitimate interests” has been satisfied.
Complainant
asserts that Respondent uses the disputed domain name in connection with a Web
site that offers Complainant’s REMICADE drug for sale. Complainant argues that this activity is bad
faith use. Complainant suggests that
Respondent acted in bad faith under Policy ¶ 4(b)(iii) because, as a
competitor, it used Complainant’s mark in the disputed domain name to sell
Complainant’s products. See Volkswagen of Am., Inc. v. Site Design
Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM
from Respondent automobile dealership specializing in Volkswagens to
Complainant); see also Fossil,
Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring
<fossilwatch.com> from Respondent watch dealer to Complainant).
Complainant
claims that Respondent’s use is in bad faith under Policy ¶ 4(b)(iv) because
Respondent uses the name to divert consumers by creating a likelihood of
confusion with Complainant’s REMICADE mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website. Furthermore, Complainant argues that Respondent registered the
disputed domain name in bad faith because it chose to use Complainant’s famous
REMICADE mark, which is fanciful, to suggest a non-existent association with
Complainant. See Fanuc Ltd v. Mach. Control Serv., FA
93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy
¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com>
because customers visiting the site were confused as to the relationship between
the Respondent and Complainant); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that the Respondent acted in bad faith by registering the domain name
<fossilwatch.com> and using it to sell various watch brands).
Complainant
argues that Respondent registered the disputed domain name in bad faith by
providing evidence that Respondent offered to sell the name to
Complainant. See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); but cf. State Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb.
Forum June 14, 2001) (despite a finding of bad faith for other reasons,
"to offer a web-site for sale to the public is not necessarily evidence of
bad faith, where, as here, an active site exists").
Complainant also urges that Respondent’s disclaimer, an explanation of
trademark ownership, and Complainant’s lack of relation to Respondent’s
business, does not mitigate bad faith. See
New
York Times Co. v. New York Internet Servs., D2000-1072 (WIPO Dec. 6, 2001) (ordering transfer of the
domain name to Complainant even though Respondent had placed a disclaimer on
the website); see also AltaVista Co. v. AltaVista, FA 95480 (Nat.
Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could
not, accompany the domain name, then the “domain name attracts the consumer’s
initial interest and the consumer is misdirected long before he/she has the
opportunity to see the disclaimer”).
Complainant also urges that Respondent acted in bad
faith in making an offer to sell the domain name to the Complainant. Respondent asserts that this is not bad
faith because the disputed domain name was not registered for the primary
purpose of selling it to Complainant.
Rather, Respondent states that the disputed domain name serves as an
address to a website that sells pharmaceuticals, which was the primary purpose
of registration. Respondent claims the
offer to sell the disputed domain name was made as a settlement attempt to
reduce the potential cost of litigation over the disputed domain name. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15,
2000) (finding that considering or offering to sell a domain name is
insufficient to amount to bad faith under the Policy; the domain name must be
registered primarily for the purpose
of selling it to the owner of trademark for an amount in excess of
out-of-pocket expenses); see also State Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001)
(despite a finding of bad faith for other reasons, "to offer a web-site
for sale to the public is not necessarily evidence of bad faith, where, as
here, an active site exists"); see also Collegetown Relocation, L.L.C. v. Concept Software & Tech. Inc.,
FA 96555 (Nat. Arb. Forum Mar. 14, 2001) (finding that offers to sell a domain
name made during settlement discussions are inadmissible).
Respondent
also claims it has no intent to disrupt Complainant’s business and that,
therefore, Respondent is not acting in bad faith under Policy ¶ 4(b)(iii). In fact, Respondent states that as a
reseller of Complainant’s product, it wishes continued success for
Complainant. Respondent concedes that
it sells Complainant’s product and Respondent argues that since Complainat
cannot directly sell to consumers, Respondent is not a competitor of
Complainant’s and that no bad faith exists under Policy ¶ 4(b)(iii). Yet, Respondent came forward with no proof
that Complainant has permitted Respondent to operate using Complainant’s mark
as the means of attracting business and Respondent avoids Complainant’s
contention that it has not given Respondent authorization to do these things
under the name of Complainant’s well-known product.
Respondent also contends that its use of
the disputed domain name does not confuse consumers as to the source of
Complainant’s product because of Respondent’s aforementioned disclaimer and
thus that no bad faith exists. See
Caterpillar Inc. v. Off Road Equip. Parts, FA 95497 (Nat. Arb.
Forum Oct. 10, 2000) (finding no bad
faith when Respondent put a very visible disclaimer on its website located at
<catparts.com> , because the disclaimer eliminated any possibility that
Respondent was attempting to infer an affiliation with Complainant and
Complainant’s CATERPILLAR mark).
Further, Respondent claims no bad faith exists because the disputed
domain name is used for a Web site designed for its licensed pharmacy, which
legally sells Complainant’s products. See
DJF Assocs,. Inc. v. AIB Communications,
FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it
has a legitimate interest in the domain name because Respondent selected the
name in good faith for its website, and was offering services under the domain
name prior to the initiation of dispute); see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000)
(finding that Respondent did not register or use the domain name
<metagen.com> in bad faith where Respondent registered the domain name in
connection with a fair business interest and no likelihood of confusion was
created). The Panel is not persuaded by
Respondent’s argument. The cases
referenced above do not apply to a situation such as that which exists here
where Respondent attracts business to Respondent’s site using the name of
Complainant’s well-known product as bait.
Complainant
filed an Additional Submission asserting that Respondent did not directly
address the requirements of ICANN Policy and Rules, but that Respondent argues
its defense under Section 43(a) of the Lanham Act. The Panel agrees that Respondent has failed to provide the Panel
with support for its contentions in this domain name dispute under ICANN Policy
and Rules. Complainant also argues that
a legal retail sale of its drug REMICADE does not give Respondent the right to
use Complainant’s REMICADE mark in Respondent’s domain name. The Panel also
agrees with this contention. Complainant also refutes Respondent’s advertising
argument by asserting that a domain name is not a means of advertisement,
rather, it is a means of identification on the Internet. Therefore, Respondent’s use of Complainant’s
REMICADE mark in the disputed domain name implies an association with
Complainant.
Considering all the
surrounding circumstances here, the Panel finds that Policy ¶ 4(a)(iii)
addressing “bad faith” has been satisfied.
Having found that Complainant satisfied all three of
the necessary showings in order to qualify for the requested relief, it is
accordingly ORDERED that the domain
name, <remicade-chrons-disease.com>, be
transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 13, 2002.
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