Johnson & Johnson v Stephen Eisel
Claim Number: FA0207000115085
Complainant is Johnson & Johnson, New Brunszwick, NJ (“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley, LLP. Respondent is Stephen Eisel, Lakewood, OH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <depuyacromedjnj.com> and <jnjdepuyacromed.com>, registered with VeriSign, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 12, 2002; the Forum received a hard copy of the Complaint on July 12, 2002.
On July 16, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain names <depuyacromedjnj.com> and <jnjdepuyacromed.com> are registered with VeriSign, Inc. and that Respondent is the current registrant of the names. VeriSign, Inc. has verified that Respondent is bound by the VeriSign, 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 July 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 7, 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 firstname.lastname@example.org, email@example.com by e-mail.
On August 13, 2002 Respondent sent a brief e-mail detailing conversations he had with Complainant’s attorney, but provided none of the elements required of a formal Response and failed to respond to the allegations raised in the Complaint.
Having received no formal Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.” 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 names be transferred from Respondent to Complainant.
The <depuyacromedjnj.com> and <jnjdepuyacromed.com> domain names are confusingly similar to its DEPUY and ACROMED marks.
Respondent has no rights or legitimate interests in the <depuyacromedjnj.com> and <jnjdepuyacromed.com> domain names.
Respondent registered the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant has used its DEPUY and ACROMED marks in relation to medical devices for many years. Complainant first began using the DEPUY mark in 1967, the ACROMED mark in 1983, and the DEPUY ACROMED mark has been used since 1998. All of the marks, are incontestable and famous. Complainant is the owner of numerous trademark registrations of the marks including: U.S. Trademark Registration Number 1,166,357 for DEPUY in relation to orthopedic products, U.S. Trademark Registration Number 1,313,310 for ACROMED also in relation to orthopedic products.
Complainant is Johnson & Johnson, popularly known by the abbreviation JNJ. Complainant also owns a domain name registration for the name located at <jnj.com>.
Respondent registered the disputed domain name on March 1, 2000. Respondent is a former employee of Complainant. Respondent, in response to Complainant’s cease and desist letter, offered to sell the disputed domain names to Complainant for a “reasonable price.”
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.”
In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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 and/or Confusingly Similar
Complainant has established that it has rights in the DEPUY and ACROMED marks through registration with the United States Patent and Trademark Office and longstanding use.
Furthermore, Complainant’s DEPUY and ACROMED marks are confusingly similar to Respondent’s <depuyacromedjnj.com> and <jnjdepuyacromed.com> domain names because Respondent merely combines both marks and adds the letters “jnj” to the beginning or end. The “jnj” letters are a common abbreviation of Complainant’s “Johnson & Johnson” name. The addition of letters or words that describe the marks included in the disputed domain names does not create new distinct marks capable of overcoming a claim of confusing similarity. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a formal Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent has failed to use, or make any demonstrable preparations to use the disputed domain names in relation to any bona fide offering of goods or services for the past two years. The passive holding of domain names for two years creates the presumption that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name).
Respondent is not commonly known as DEPUY, ACROMED or any combination of the two marks. Furthermore, there is no evidence that Respondent is commonly known as <depuyacromedjnj.com> or <jnjdepuyacromed.com>. Respondent is known to this Panel only as Stephen Eisel. Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).
Respondent offered to sell the disputed domain names to Complainant for a “reasonable price,” in response to Complainant’s cease and desist letter. Based on this behavior it can be inferred that Respondent registered the disputed domain names with the intention of selling it back to Complainant. This type of behavior is not considered to be a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is a former employee of Complainant, therefore, Respondent had actual notice of Complainant’s marks when it registered the disputed domain names. Respondent’s registration of two domain names incorporating Complainant’s marks despite this notice is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was employed by Complainant’s business, was fully aware of the name of her employer, and made no use of the infringing domain name); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
Respondent’s registration of the disputed domain names and failure to use them for over two years is considered to be passive holding and evidence of bad faith use on the part of Respondent. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Furthermore, Respondent’s offer to sell the disputed domain names to Complainant in conjunction with Respondent’s failure to create a website at either of the disputed domain names creates an inference that Respondent registered the domain names for the purpose of selling, renting or transferring them. The registration of domain names primarily for the purpose of selling, renting or transferring is considered to be evidence of bad faith use pursuant to Policy ¶ 4(b)(i). See 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”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain names <depuyacromedjnj.com> and <jnjdepuyacromed.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: August 27, 2002
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