Johnson & Johnson v. Eurobox Ltd. c/o Eurobox Administrator
Claim Number: FA0907001272261
Complainant is Johnson & Johnson (“Complainant”), represented by Norm
D. St. Landau, of Drinker Biddle & Reath LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <johnsons-baby.com>, registered with Openname LLC.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 7, 2009.
On July 23, 2009, Openname LLC confirmed by e-mail to the National Arbitration Forum that the <johnsons-baby.com> domain name is registered with Openname LLC and that Respondent is the current registrant of the name. Openname LLC has verified that Respondent is bound by the Openname LLC 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 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 2009 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@johnsons-baby.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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 <johnsons-baby.com> domain name is identical to Complainant’s JOHNSON’S BABY mark.
2. Respondent does not have any rights or legitimate interests in the <johnsons-baby.com> domain name.
3. Respondent registered and used the <johnsons-baby.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Johnson & Johnson, is an international company specializing in personal care products for children and babies. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the JOHNSON’S BABY mark (Reg. No. 1,912,135 issued August 15, 1995).
Respondent registered the <johnsons-baby.com> domain name on June 2, 2007. Respondent’s disputed domain name resolves to a website displaying third-party websites in competition with Complainant’s offering of personal care products for children and babies. Also displayed on the website resolving from Respondent’s disputed domain name is an offer to sell the disputed domain name.
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.
Complainant has a trademark registration with the USPTO for
the JOHNSON’S BABY mark (Reg. No. 1,912,135 issued August 15, 1995). The Panel finds that Complainant has
established rights in the JOHNSON’S BABY mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Reebok Int’l Ltd. v.
Complainant alleges that
Respondent’s <johnsons-baby.com> domain name is identical to
Complainant’s JOHNSON’S BABY mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark, omits an apostrophe, adds a hyphen, omits space between the
terms, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition or omission
of such punctuation marks as apostrophes and hyphens, as well as the addition
of a gTLD are irrelevant in distinguishing a disputed domain name from a
registered mark. See Chernow Commc’ns,
Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or
absence of punctuation marks, such as hyphens, does not alter the fact that a
name is identical to a mark"); see
also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000)
(finding the domain name <chichis.com> to be identical to the
complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen
from the mark); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding
that eliminating the space between terms of a mark still rendered the
<gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES
mark); see also Reichert, Inc. v. Leonard, FA 672010
(Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to
Complainant’s mark, but for the addition of a generic top-level domain suffix
(“.com” or “.net”)…”). Therefore, the
Panel finds that Respondent’s <johnsons-baby.com> domain name is identical to
Complainant’s JOHNSON’S BABY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the <johnsons-baby.com> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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).
Complainant contends that Respondent is neither commonly
known by nor licensed to register the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Whois privacy services.” The Panel finds that the WHOIS
information demonstrates that Respondent is not commonly known by the disputed
domain name. Therefore, pursuant to
Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the <johnsons-baby.com>
domain name. See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent registered the <johnsons-baby.com>
domain name on June 2,
2007 and is using the resolving website to display links advertising
third-party websites in competition with Complainant’s offering of personal
care products for children and babies.
The Panel infers that Respondent is using the disputed domain name to
earn click-through fees, and thus finds that Respondent has not made 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). See Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain
name to maintain a commercial website with links to the products and services
of the complainant’s competitors did 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)); see also Bond
& Co. Jewelers, Inc. v.
In addition, the Panel finds that Respondent lacks rights
and legitimate interests in the <johnsons-baby.com> domain name pursuant to
Policy ¶ 4(a)(ii) due to the resolving website explicitly displaying that the
disputed domain name is for sale. See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6,
2000) (finding that rights or legitimate interests do not exist when one holds
a domain name primarily for the purpose of marketing it to the owner of a
corresponding trademark); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where the respondent registered the
domain name with the intention of selling its rights).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant presents evidence that
website resolving from Respondent’s <johnsons-baby.com>
explicitly displays that the disputed
domain name is for sale. The Panel finds
that this demonstrates Respondent’s primary intent to sell, which is evidence
of bad faith registration and 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 Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer
of the disputed domain name registration for sale establishes that the domain
name was registered in bad faith under Policy ¶ 4(b)(i).”).
The Panel finds that Respondent’s use of the <johnsons-baby.com> domain name to disrupt the business of Complainant by offering links to competitor’s websites in the children and babies personal care industry is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Lastly, Respondent is using the <johnsons-baby.com> domain name to intentionally divert Internet users to
the associated website, which displays third-party links to competing
websites. In cases such as this, the
Panel presumes that Respondent is collecting click-through fees and attempting
to profit by creating a likelihood of confusion between Complainant’s JOHNSON’S
BABY mark and the identical <johnsons-baby.com> domain name. The Panel finds that Respondent’s use of the
disputed domain name is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <johnsons-baby.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 3, 2009
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