Johnson & Johnson v. Chad Moston
Claim Number: FA 1361418
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington D.C., USA. Respondent is Chad Moston (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aveenoageless.com>, registered with Dynadot, 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.
James A. Carmody, Esq., 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 2, 2010, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <aveenoageless.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@aveenoageless.com. Also on December 3, 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 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <aveenoageless.com> domain name is confusingly similar to Complainant’s AVEENO mark.
2. Respondent does not have any rights or legitimate interests in the <aveenoageless.com> domain name.
3. Respondent registered and used the <aveenoageless.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Johnson & Johnson, offers a very wide variety of household and personal care products. Complainant first used its AVEENO in connection with skin care products in 1943. The AVEENO mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 626,087 issued May 1, 1956). Complainant also holds a trademark registration with the USPTO for its POSITIVELY AGELESS mark (Reg. No. 3,605,906 issued April 14, 2009).
Respondent, Chad Moston, registered the disputed domain name <aveenoageless.com> on March 3, 2009. The disputed domain name resolves to a website that offers hyperlinks to many other websites that purport to offer products similar to, and competing with, Complainant’s AVEENO products.
Respondent has also been a respondent in other UDRP proceedings in which disputed domain names have been transferred from Respondent to respective complainants. See Experian Info Solutions, Inc. v Chad Moston, FA 1320517 (Nat. Arb. Forum June 3, 2010); see also LeapFrog Entrs., Inc. v Chad Moston, FA 1261649 (Nat. Arb. Forum June 17, 2009); see also SPTC, Inc. and Sotheby's v Speedplexer c/o Chad Moston, FA 1221152 (Nat. Arb. Forum Sept. 30, 2008).
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 it holds the necessary rights in the AVEENO and POSITIVELY AGELESS marks pursuant to Policy ¶ 4(a)(i). After reviewing Complainant’s evidence, the marks’ USPTO registrations (Reg. No. 626,087 issued May 1, 1956) and (Reg. No. 3,605,906 issued April 14, 2009), the Panel concurs. Many previous panels have held that a marks registration with the USPTO sufficiently evidences the necessary rights under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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).”). Therefore, the Panel finds that Complainant has demonstrated rights in the mark necessary under Policy ¶ 4(a)(i).
Complainant also contends that the disputed domain name <aveenoageless.com> is confusingly similar to its AVEENO mark. Respondent has merely combined Complainant’s AVEENO mark with a portion of Complainant’s POSITIVELY AGELESS mark and added the generic-top-level domain (“gTLD”) “.com.” The second term “ageless” is a portion of Complainant’s POSITIVELY AGELESS mark which is also registered with the USPTO. Previous panels have found that when a disputed domain name combines multiple marks that are similar in nature it increases the potential to confuse Internet users. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Accordingly the Panel finds Respondent’s use of two of Complainant’s mark renders the <aveenoageless.com> confusingly similar to Complainant’s AVEENO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <aveenoageless.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant evidences this contention with the disputed domain name’s WHOIS information. This information indicates that Respondent is not commonly known by the disputed domain name or any form of the disputed domain name. This type of evidence, when viewed in light of the complete absence of contradicting evidence and a respondent’s lack of reply, allows a panel to find that a respondent is not commonly by a disputed domain name. 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). Therefore, the Panel finds that the evidence presented indicates that Respondent is not commonly known by the <aveenoageless.com> domain name pursuant to Policy ¶ 4(c)(ii).
The Panel further finds that Respondent’s use of the disputed domain name is a use that diverts Internet users away from Complainant and is therefore evidence 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 pursuant to Policy ¶ 4(c)(iii). Respondent uses the disputed domain name, found confusingly similar above, to operate a links page that displays links to Complainant’s competitors. The use of a confusingly similar domain name to host a links page that redirects Internet users away from Complainant is evidence is evidence 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 pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent has made neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <aveenoageless.com> domain name is a part of a pattern of bad faith use and registration. Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See Experian Info Solutions, Inc. v Chad Moston, FA 1320517 (Nat. Arb. Forum June 3, 2010); see also LeapFrog Entrs., Inc. v Chad Moston, FA 1261649 (Nat. Arb. Forum June 17, 2009); see also SPTC, Inc. and Sotheby's v Speedplexer c/o Chad Moston, FA 1221152 (Nat. Arb. Forum Sept. 30, 2008). The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).
The Panel finds that Respondent’s intent to offer links that compete with Complainant’s business evidences a bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Respondent domain name resolves to a page the displays links to competing websites. These websites purport to sell similar products as Complainant. The use of a confusingly similar domain name to host competing links in this fashion evidences a bad faith registration and use pursuant to ¶ 4(b)(iii). See 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds bad faith in Respondent’s registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel also finds that Respondent is using the domain name to create confusion as to the affiliation or sponsorship of the website in order to attract Internet users to its website for profit. Respondent’s actions demonstrate the intent to confuse Internet users into believing that its website is sponsored by Complainant. Respondent intends this confusion to attract Internet users to its website so Respondent will see increase revenue by way of click through fees. The creation of confusion in order to attract Internet users to a website for financial gain is evidence of a bad faith registration and use. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Accordingly, the Panel finds the presence of bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has met the requirements of 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 <aveenoageless.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 30, 2010
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