Johnson & Johnson v. Rx USA
Claim Number: FA0205000112609
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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
Dated: June 13, 2002.
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