Johnson & Johnson v. Quasar Services LLC
Claim Number: FA1012001361414
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington D.C., USA. Respondent is Quasar Services LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aveenobaby.com>, registered with Fabulous.com Pty Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2010; the National Arbitration Forum received payment on December 2, 2010.
On December 5, 2010, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <aveenobaby.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aveenobaby.com. Also on December 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <aveenobaby.com> domain name is confusingly similar to Complainant’s AVEENO mark.
2. Respondent does not have any rights or legitimate interests in the <aveenobaby.com> domain name.
3. Respondent registered and used the <aveenobaby.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Johnson & Johnson, is a global company dealing in all types of consumer products including skin care items for all ages. Complainant has been using its AVEENO mark to market and sell skin and hair care products since 1943. Complainant holds multiple federal trademark registrations in its AVEENO mark as well as multiple variations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 626,087 issued May 1, 1956); which it uses to support its business activities.
Respondent, Quasar Services LLC, registered the <aveenobaby.com> domain name on December 1, 2004. The disputed domain name resolves to a website offering links to third-party services offering baby care products that directly compete with goods offered by Complainant.
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 contends that it has established rights in the mark via registration with a federal trademark authority. Registration with a federal trademark authority is sufficient to establish a company’s rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has established rights in the AVEENO mark through registration with the USPTO (e.g., Reg. No. 626,087 issued May 1, 1956) according to Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <aveenobaby.com> domain name is confusingly similar to its AVEENO mark. The disputed domain name incorporates the entire mark while adding the descriptive term “baby” and the generic top-level domain (“gTLD”) “.com.” The term “baby” is descriptive in this context because Complainant offers skin and hair care products for babies. The Panel finds that Respondent has failed to sufficiently differentiate its <aveenobaby.com> domain name from Complainant’s mark by adding a gTLD and a descriptive term. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <aveenobaby.com> domain name is confusingly similar to Complainant’s AVEENO mark under Policy ¶ 4(a)(i).
The Panels finds that the requirements of Policy ¶ 4(a)(i) have been satisfied.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent. The burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name after Complainant has met its prima facie burden. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). When a respondent fails to provide a response to the initial complaint, the Panel may assume that it does not have any rights or legitimate interests in the disputed domain name, <aveenobaby.com>. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the record in its entirety to ascertain whether Respondent retains rights or legitimate interests in the disputed domain name according to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name. Respondent has failed to set forth any evidence to contradict this contention. The WHOIS information identifies the registrant as “Quasar Services LLC,” which Complainant alleges is not similar to the <aveenobaby.com> domain name. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name according the Policy ¶ 4(c)(ii). 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant also contends that Respondent is not engaging in the bona fide offering of goods or services or a legitimate noncommercial or fair use of the <aveenobaby.com> domain name. Respondent’s disputed domain name resolves to a site offering third-party links to competitors of Complainant. Respondent ostensibly receives click-through fees from the companies to which it links. The Panel determines that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate or noncommercial fair use of the <aveenobaby.com> domain name according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s <aveenobaby.com> domain name resolves to a website offering links to third-party services offering baby care products that directly compete with goods offered by Complainant. Complainant contends that the disputed domain name disrupts its business by offering competing services and goods. The Panel finds that the confusingly similar domain name does in fact disrupt Complainant business by using the confusion created by the disputed domain name to offer third-party links to Complainant’s competitors under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv) due to the fact that Respondent presumably receives click-through fees for the maintenance and operation of the <aveenobaby.com> domain name. The Panel finds that Respondent’s capitalization on the confusion for its own commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have 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 <aveenobaby.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 12, 2011
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