Johnson & Johnson v Stephen Eisel
Claim Number: FA0207000115085
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@depuyacromedjnj.com, postmaster@jnjdepuyacromed.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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
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.”
DISCUSSION
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.
DECISION
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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