Johnson & Johnson v. Lustia VanRibbonMorson
Claim Number: FA1101001369486
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington D.C., USA. Respondent is Lustia VanRibbonMorson (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onetouchultrasmart.net>, registered with Moniker Online Services, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2011; the National Arbitration Forum received payment on January 25, 2011.
On January 27, 2011, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <onetouchultrasmart.net> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, 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 January 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2011 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@onetouchultrasmart.net. Also on January 28, 2011, 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 February 22, 2011, 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 <onetouchultrasmart.net> domain name is confusingly similar to Complainant’s ONETOUCH mark.
2. Respondent does not have any rights or legitimate interests in the <onetouchultrasmart.net> domain name.
3. Respondent registered and used the <onetouchultrasmart.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells blood glucose monitoring devices and related diabetes care products. Complainant owns two United States Patent and Trademark Office (“USPTO”) registrations for the ONETOUCH mark: Reg. No. 2,863,393 issued July 13, 2004 and Reg. No. 3,039,103 issued January 10, 2006. Complainant also holds a trademark registration for ULTRASMART (USPTO Reg. No. 2,730,626 issued June 24, 2003).
Respondent registered the <onetouchultrasmart.net> domain name on August 4, 2010. The disputed domain name resolves to a website prominently displaying Complainant’s ONETOUCH and ULTRASMART marks, logos, and product packaging, purporting to provide information about diabetes, and featuring links to adult-oriented videos.
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 owns two United States Patent and Trademark Office (“USPTO”) registrations for the ONETOUCH mark: Reg. No. 2,863,393 issued July 13, 2004 and Reg. No. 3,039,103 issued January 10, 2006. Complainant also holds a trademark registration for ULTRASMART (USPTO Reg. No. 2,730,626 issued June 24, 2003). The Panel finds that such trademark registrations sufficiently establish Complainant’s rights in the foregoing marks for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <onetouchultrasmart.net> domain name is confusingly similar to Complainant’s ONETOUCH mark because the disputed domain name merely combines Complainant’s ONETOUCH mark with another of Complainant’s marks, ULTRASMART (USPTO Reg. No. 2,730,626 issued June 24, 2003), and the generic top-level domain (“gTLD”) “.net.” The Panel finds that combining two of Complainant’s marks in the disputed domain name fails to differentiate the disputed domain name from either of Complainant’s marks according to Policy ¶ 4(a)(i). 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 Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark). The Panel also finds the addition of a gTLD has no effect on a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel thus concludes that Respondent’s <onetouchultrasmart.net> domain name is confusingly similar to Complainant’s ONETOUCH mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
To establish that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires Complainant to put forth a prima facie case against Respondent. As Complainant has satisfied this obligation in the instant proceeding, the burden now rests on Respondent to demonstrate rights and legitimate interests. In defaulting, Respondent has failed to meet this burden. The Panel consequently finds that Complainant’s allegations may be taken as true and that Respondent possesses no rights and legitimate interests in the <onetouchultrasmart.net> domain name. See 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.”); see also America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will first examine the record to determine whether Respondent has rights and legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <onetouchultrasmart.net> domain name. The WHOIS information for the disputed domain name identifies the registrant as “Lustia VanRibbonMorson,” a name with no connection to the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also Education Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant contends that Respondent uses the <onetouchultrasmart.net> to pass itself off as Complainant. Complainant argues that Respondent attempts to do this by displaying Complainant’s marks, logos, and product images on the resolving website and using the ONETOUCH and ULTRASMART marks as trade names in the website copyright notice. Complainant asserts that Respondent purportedly features information about diabetes on the resolving website, such as a blog that reproduces questions and answers about diabetes and its treatment. The Panel finds that Respondent’s efforts to pass itself off as Complainant in this manner is not consistent with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant also alleges that Respondent displays links to adult-oriented videos and other videos wholly unrelated to Complainant on the resolving website. The Panel finds that using the <onetouchultrasmart.net> domain name to host such video links tarnishes Complainant’s reputation and reveals a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of bad faith in Paragraph 49b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 49b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent uses the <onetouchultrasmart.net> domain name in an effort to pass itself off as Complainant by displaying Complainant’s mark, product images and logos and purporting to provide advice and commentary on diabetes-related topics. The Panel finds that such efforts to pass itself off as Complainant indicate Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant also asserts that Respondent displays links to adult-oriented videos on the resolving website, which tarnishes Complainant’s reputation by associating Complainant with such content. The Panel finds that featuring links to adult-oriented videos on the <onetouchultrasmart.net> domain name is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds 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 <onetouchultrasmart.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 3, 2011
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