JohnsonDiversey, Inc. v. William Vaughan c/o SMTM Investments Ltd
Claim Number: FA0803001163473
Complainant is JohnsonDiversey, Inc. (“Complainant”), represented by Lori
S. Meddings, of Michael Best & Friedrich LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johsondiversey.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 2008 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <johsondiversey.com> domain name is confusingly similar to Complainant’s JOHNSONDIVERSEY mark.
2. Respondent does not have any rights or legitimate interests in the <johsondiversey.com> domain name.
3. Respondent registered and used the <johsondiversey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant markets, distributes, and sells commercial
cleaning, sanitation and hygiene solutions.
Complainant registered the JOHNSONDIVERSEY mark with the United States
Patent and Trademark Office (“USPTO”) on
Respondent registered the <johsondiversey.com>
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 response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel finds that Complainant has established rights in
the JOHNSONDIVERSEY mark for purposes of Policy ¶ 4(a)(i).
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Complainant contends that Respondent’s <johsondiversey.com> domain name is confusingly similar to its JOHNSONDIVERSEY mark. The <johsondiversey.com> domain name differs from Complainant’s mark in two ways: (1) the first letter “N” has been removed from the term “JOHNSON”; and (2) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <johsondiversey.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the disputed domain name, <johsondiversey.com>,
nor have they ever been the owner or licensee of the JOHNSONDIVERSEY mark. The WHOIS record for the disputed domain name
lists the Respondent as “William Vaughan, c/o Smtm investments.” This evidence, along with the fact that
Respondent has failed to show any evidence contrary to Complainant’s
contentions, compels the Panel to find that Respondent is not commonly known as
pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Great S. Wood Preserving, Inc. v.
TFA Assocs., FA 95169 (Nat. Arb.
Respondent maintains a
website at <johsondiversey.com> that contains a commercial search engine and links to sites
offering Complainant’s goods and other goods. The Panel finds that these
uses of the domain name <johsondiversey.com>
are neither bona fide offerings of
goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair
uses under Policy ¶ 4(c)(iii). See Trans Global
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website, through the confusion caused by the similarity between
the JOHNSONDIVERSEY mark and the <johsondiversey.com>
domain name. The Panel finds
that Respondent’s use of the disputed domain name disrupts Complainant’s
business, and is evidence of registration and use in bad faith pursuant to
Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining
commercially through this diversion, both through the commercial search engine and
through click-through fees. The Panel
finds that this is an intentional use of the disputed domain name for
commercial gain through a likelihood of confusion with Complainant’s mark, and
so, pursuant to Policy ¶ 4(b)(iv), this use is also
evidence of registration and use in bad faith.
See Bank of Am. Corp. v.
Complainant also contends that
Respondent has a history of registering infringing domain names that
incorporate trademarks to host commercial search engines and websites
containing sponsored links. Deceuninck NV v. William Vaughan, smtm investments ltd., D2007-1911 (WIPO
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <johsondiversey.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 2, 2008
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