Johnson & Johnson v. Jorgenson Group of Companies
Claim Number: FA0907001276264
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 <nizoralshampoo.com>, registered with Godaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2009.
On July 29, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nizoralshampoo.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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
31, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 20, 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@nizoralshampoo.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 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <nizoralshampoo.com> domain name is confusingly similar to Complainant’s NIZORAL mark.
2. Respondent does not have any rights or legitimate interests in the <nizoralshampoo.com> domain name.
3. Respondent registered and used the <nizoralshampoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant markets and sells antifungal products, including a shampoo, under the NIZORAL mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on September 29, 1981 (Reg. No. 1,170,891). Complainant has used the NIZORAL mark continuously in commerce since at least as early as 1980.
Respondent registered the <nizoralshampoo.com> domain name on October 5, 2001. The disputed domain name resolves to a website where Complainant’s products are marketed and sold.
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 NIZORAL mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (Reg. No. 1,170,891, issued September 29, 1981). See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Am.
Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb.
Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark
through registration of the mark with several trademark authorities throughout
the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant contends that
Respondent’s <nizoralshampoo.com>
domain name is confusingly similar to its NIZORAL
mark. The disputed
domain name differs from Complainant’s mark in two ways: (1) the descriptive
term “shampoo” has been added to the end of the mark; and (2) the generic
top-level domain (“gTLD”) “.com” has been added to the end of the mark. The
Panel finds that under Policy ¶ 4(a)(i), adding a descriptive term to a mark
doesn’t sufficiently distinguish a domain name from the mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126
(WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is
confusingly similar to the SUTTON mark because the addition of descriptive or
non-distinctive elements to the distinctive element in a domain name is
immaterial to the analysis under Policy ¶ 4(a)(i)); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding
confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”). Furthermore, the
Panel finds that the addition of the gTLD “.com” does nothing to distinguish a
domain name from a mark because all domain names must include a top-level
domain. See Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain
name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Therefore, the Panel finds that the disputed domain name is
not sufficiently distinguished from, and remains confusingly similar to,
Complainant’s NIZORAL mark pursuant to Policy
¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known
by the <nizoralshampoo.com>
domain name, nor has it ever been the owner or licensee of the NIZORAL
mark. The WHOIS record for the disputed
domain name identifies Respondent as “Jorgenson
Group of Companies,” and no evidence anywhere indicates that Respondent
has ever been commonly known by the disputed domain name. Because Respondent
has failed to show any evidence contrary to Complainant’s contentions and is
not known by any variant of the NIZORAL mark, the Panel finds that Respondent
is not commonly known by the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the
respondent was not commonly known by the <lilpunk.com> domain name as
there was no evidence in the record showing that the respondent was commonly
known by that domain name, including the WHOIS information as well as the
complainant’s assertion that it did not authorize or license the respondent’s
use of its mark in a domain name); see also 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).
Respondent is using the <nizoralshampoo.com> domain name to host a website where Complainant’s products are being marketed and sold. The Panel finds that Respondent’s unauthorized sale of Complainant’s products at the website that resolves from the <nizoralshampoo.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has used the <nizoralshampoo.com> domain name, registered on October 5, 2001, to divert confused Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name. Complainant also contends that Respondent intentionally disrupts Complainant’s business by marketing and selling Complainant’s own products to these diverted Internet users. The Panel finds that Respondent’s actions do disrupt Complainant’s business, and that therefore, Respondent has registered and used the <nizoralshampoo.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant also contends that Respondent gains commercially
from the diversion of Internet users, as Respondent is using the disputed
domain name to profit from the sale of Complainant’s products to those Internet
users. The Panel finds that Respondent
is intentionally using 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 Respondent’s registration and use in bad
faith.
See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad
faith where the respondent used the disputed domain name to sell the
complainant’s products without permission and mislead Internet users by
implying that the respondent was affiliated with the complainant); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to
sell Complainant’s goods and services without Complainant's authority . . . is
bad faith use of a confusingly similar domain name.”).
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 <nizoralshampoo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 11, 2009
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