JohnsonDiversey, Inc. v. johnsondiverse.com
Claim Number: FA0805001189055
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 <johnsondiverse.com>, registered with Namesdirect.
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 electronically May 6, 2008; the National Arbitration Forum received a hard copy of the Complaint May 7, 2008.
On May 7, 2008, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <johnsondiverse.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect verified that Respondent is bound by the Namesdirect registration agreement and thereby has 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 8, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of May 28, 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.
On June 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <johnsondiverse.com>,is confusingly similar to Complainant’s JOHNSONDIVERSEY mark.
2. Respondent has no rights to or legitimate interests in the <johnsondiverse.com> domain name.
3. Respondent registered and used the <johnsondiverse.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JohnsonDiversey, Inc., is a producer and marketer of commercial cleaning, sanitation, and hygiene products for businesses in the lodging, retail, food, and healthcare sectors. Since 2002, Complainant has operated under the JOHNSONDIVERSEY mark (Reg. No. 3,009,342, issued October 25, 2005, filed February 28, 2003), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <johnsondiversey.com> domain name in connection with its business, wherein Complainant offers information and case studies concerning its products, as well as prospective investor and career information.
Respondent registered the <johnsondiverse.com> domain name October 20, 2007, and is currently using the disputed domain name to resolve to a website operated by Medifast, Inc., a company that sells weight loss products and guides over the Internet.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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’s registration of the mark with the USPTO confers sufficient rights under Policy ¶ 4(a)(i) for the purposes of this UDRP proceeding. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <johnsondiverse.com> domain name
includes Complainant’s complete and unchanged JOHNSONDIVERSEY mark, except for
the omission of the “y,” and the addition of the generic top-level domain
(“gTLD”) “.com.” Generally, the mere
deletion of a single letter will fail to render a disputed domain name distinct
under Policy ¶ 4(a)(i). This case does not yield a different result,
as Complainant’s mark is still largely intact phonetically. Finally, the generic top-level domain
addition is irrelevant in this analysis.
The Panel therefore finds that Respondent’s disputed domain name is
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See 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); see also State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Because this assertion constitutes a sufficient prima facie case supporting its allegations, Respondent receives the burden of demonstrating its rights or legitimate interests under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s <johnsondiverse.com> domain name merely operates to resolve Internet users to a website hosted by Medifast, Inc., which sells products that are unrelated to Complainant’s products and are for weight loss accessories and guides. Complainant asserts that it has no relationship with Respondent and Respondent’s the disputed domain name uses Complainant’s mark but shows no cognizable relation to weight-loss products. Such a use of the disputed domain name—clearly designed to reroute unsuspecting Internet users seeking Complainant—cannot be said to constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). Nor can this use be said to represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), since the disputed domain name obviously is utilized to siphon Internet users to a commercial website unrelated to Complainant. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the evidence in the record, the Panel finds no basis to conclude that Respondent is commonly known by the disputed domain name. Respondent has not submitted a Response in this proceeding, but even fair inferences do not support a finding in Respondent’s favor. The WHOIS domain name registration provides no safe harbor as it merely relists the disputed domain name as its own registrant. Moreover, the disputed domain name simply redirects to Medifast, Inc.’s website, which bears no phraseology or other signifier akin to the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant has also charged that Respondent is “typosquatting,” which is defined as an attempt by a disputed domain name registrant to position the disputed domain name in such a manner as to exploit and manipulate the common typographical errors of Internet users. Commonly, disputed domain names that fit this bill will add or omit one or more letters, punctuations, or other elements. The end result is a disputed domain name that superficially resembles an Internet user’s intended domain name locale, but in reality carries the minor changes that will divert the Internet user away from the intended and expected domain name to a location or website that was wholly unplanned. The Panel finds that the instant case supports Complainant’s claim that deletion of the “y” is not sufficient to create a different domain name and it is quite likely that Internet users, by rush or inadvertence, will also omit the final “y” and end up at Respondent’s site. Such an Internet user seeking Complainant’s products would then be brought to a wholly distinct, unrelated, and unintended website pushing weight loss implements. Such typosquatting violates Internet users’ senses of direction and trust when traversing the Internet. The Panel finds that Respondent has utilized typosquatting, and that such evidence shows Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant manufactures and sells commercial cleaning
products. Respondent’s use of the
disputed domain name deceptively diverts unwary and innocent Internet users to
an unrelated weight-loss product website.
Whatever benefit Respondent gleans from such diversion can likely be
discovered in the fact that the targeted website of redirection is entirely
commercial. Moreover, Respondent
utilized Complainant’s mark in a confusingly similar fashion, in that virtually
all of the mark is included in the disputed domain name, without addition of
any other elements. Yet, the redirected
website displays no relation or semblance of similarity to Complainant. Despite these distinct realms of business
between the parties, Internet users do not escape the likelihood of confusion
that Respondent has createde. Respondent
has created a substantial likelihood of confusion as to Complainant’s
affiliation of the disputed domain name and corresponding website. It is difficult to perceive any other intent
by Respondent, who has failed to submit a Response arguing otherwise, than to
maximize any potential from Complainant’s goodwill surrounding its mark. The Panel finds that Respondent has therefore
registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v.
Respondent’s “typosquatting” supports findings of bad faith registration and use. To render a disputed domain name confusingly similar to Complainant’s mark in such a fashion, and then to mislead Internet users seeking Complainant to an unrelated commercial website, constitutes a clear and present intent to deceive Internet users in bad faith. Such use also infringes upon Complainant’s marketing and promotion of its own mark and misleads Internet users who mistype Internet searches. The Panel finds that Respondent’s use of typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <johnsondiverse.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 18, 2008.
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