Johnson & Johnson v. NA a/k/a Bryant Smith
Claim Number: FA0208000122222
Complainant is Johnson & Johnson, New Brunswick, NJ (“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley LLP. Respondent is NA a/k/a Bryant Smith, Coral Springs, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acuvue.net>, registered with Network Solutions, Inc. d/b/a VeriSign, 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 August 22, 2002; the Forum received a hard copy of the Complaint on August 22, 2002.
On August 26, 2002, Network Solutions, Inc. d/b/a VeriSign, Inc. confirmed by e-mail to the Forum that the domain name <acuvue.net> is registered with Network Solutions, Inc. d/b/a VeriSign, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. d/b/a VeriSign, Inc. has verified that Respondent is bound by the Network Solutions, Inc. d/b/a 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 August 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 17, 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 by e-mail.
Having received no 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 October 7, 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.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
The <acuvue.net> domain name is identical to Complainant's ACUVUE mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant registered its ACUVUE trademark with the United States Patent and Trademark Office as Registration Number 1,458,177 on September 22, 1987, in relation to contact lenses. Complainant’s ACUVUE mark is recognized as the number one brand of soft disposable contact lenses. In the United States, within the last 12 months, Complainant’s approximate net sales were $450 million. Complainant’s ACUVUE lenses are currently sold in 70 countries worldwide. Complainant spends tens of millions of dollars each year promoting its ACUVUE mark, and has gained substantial goodwill and name recognition among consumers and opticians. Complainant also maintains a significant presence on the Internet. Complainant maintains a website at <acuvue.com> as well as <acuvue.co.uk>, and <acuvue.co.kr>.
Respondent registered the disputed domain name on June 28, 2002. Respondent does not have a license from Complainant to use the ACUVUE mark. Respondent is using the disputed domain name in order to divert Internet users to <floridadesigns.com>. This website advertises Complainant’s website design and Internet marketing services. Respondent has registered other domain names that infringe on trademark rights of others, such as <basfcorp.com>. When Complainant contacted Respondent, Respondent told Complainant that “it would be fair to be compensated” for the domain name and eluded to the fact that it had received an offer for $400.
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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant established that it has rights in the ACUVUE mark through continuous use and by registration of the mark with the United States Patent and Trademark Office.
Respondent’s <acuvue.net> domain name is identical to Complainant’s ACUVUE mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain “.net.” The addition of a top-level domain name is irrelevant because it is a required part of any domain name. Therefore, the addition of a top-level domain does not detract from the fact that the most identifying part of Respondent’s domain name is identical to Complainant’s ACUVUE mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to respond, and therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations in the Complaint as true. 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent is using the disputed domain name in order to divert Internet users to its own unconnected website. Respondent is essentially using Complainant’s famous mark as a vehicle to advertise its own business. Respondent diverts Internet users looking for Complainant at <acuvue.net> to the <floridadesigns.com> domain name. This type of use is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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).
No evidence on record suggests that Respondent is commonly known as ACUVUE or <acuvue.net> and Respondent has not come forward with a Response to bring such evidence. Therefore, Respondent has failed to provide any evidence that it has rights or legitimate interests in the disputed domain name 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 Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has alluded to selling the domain name to Complainant for a price that does not reflect its out-of-pocket costs for maintaining the disputed domain name. Respondent told Complainant that “it would be fair to compensated,” and made a point to tell Complainant that it had received an offer for $400 from another party. The registration of a domain name with the intent to rent, sell or transfer the domain name registration is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); 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”).
Complainant has presented evidence that Respondent has engaged in a pattern of registering domain names that infringe on the marks of others. The registration of more than one domain name that infringes on the marks of others is considered to be a pattern of bad faith behavior and therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted 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 name <acuvue.net> be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 21, 2002.
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