Johnson & Johnson v. Luca Mueller
Claim Number: FA1101001370312
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington, D.C., USA. Respondent is Luca Mueller, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accuminder.com>, registered with ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2011; the National Arbitration Forum received payment on January 31, 2011.
On February 9, 2011, ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM confirmed by e-mail to the National Arbitration Forum that the <accuminder.com> domain name is registered with ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM and that Respondent is the current registrant of the name. ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM has verified that Respondent is bound by the ABOUT DOMAIN DOT COM SOLUTIONS PVT. LTD. d/b/a WWW.ABOUTDOMAINSOLUTIONS.COM 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 February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 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@accuminder.com. Also on February 11, 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 March 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <accuminder.com> domain name is confusingly similar to Complainant’s ACUMINDER mark.
2. Respondent does not have any rights or legitimate interests in the <accuminder.com> domain name.
3. Respondent registered and used the <accuminder.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Johnson & Johnson, is the designer and manufacturer of the ACUMINDER device that it uses in connection with computer software and related services that provide consumers with reminders about when to change their “Acuvue” brand contact lenses. Complainant has been using its ACUMINDER mark in commerce since May 17, 2007 when it registered its official <acuminder.com> website. Complainant also owns several trademark registrations for its ACUMINDER mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,726,154 filed March 10, 2008; issued December 15, 2009) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 6,734,875 issued June 2, 2009).
Respondent, Luca Mueller, registered the <accuminder.com> domain name on December 25, 2007. Respondent’s disputed domain name resolves to a website that features a commercial search engine and displays third-party links to competing goods and services.
Complainant presents evidence that shows that Respondent has been the respondent in previous UDRP proceedings in which Respondent was ordered to transfer the domain names to the respective complainants. See The Finish Line, Inc. v. Mueller, FA 1359328 (Nat. Arb. Forum Dec. 30, 2010); see also Hidroservice Engenharia LTDA v. Mueller, FA 1282351 (Nat. Arb. Forum Oct. 12, 2009); see also ITV plc v. Mueller, D2010-0253 (WIPO May 6, 2010).
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 presented evidence that it owns trademark registrations for its ACUMINDER mark with the USPTO (Reg. No. 3,726,154 filed March 10, 2008; issued December 15, 2009) and the OHIM (Reg. No. 6,734,875 issued June 2, 2009). The Panel finds that such evidence is sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i) that date back to March 10, 2008, which is the filing date for its USPTO application. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also asserts common law rights in the ACUMINDER mark. Complainant argues, and submits evidence to show, that it registered and began using its official <acuminder.com> website on May 17, 2007. Complainant alleges that since that time it has continuously and extensively advertised and used its ACUMINDER mark in its commercial activities and advertisements. Complainant argues that such usage has enabled it to acquire common law rights by establishing secondary meaning in its mark. The Panel agrees and finds that Complainant has provided sufficient evidence to establish common law rights in its ACUMINDER mark that date back to May 17, 2007, thereby predating Respondent’s domain name registration. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
Complainant further argues that the <accuminder.com> domain name is confusingly similar to Complainant’s ACUMINDER mark, because the domain name simply adds and additional letter “c” and the generic top-level domain (“gTLD”) “.com.” The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any rights or legitimate interests in the <accuminder.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. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). 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).
Complainant further contends that Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain name identifies Respondent as “Luca Mueller,” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain name. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant asserts that Respondent is using the disputed domain name to resolve to a website that features a search engine and third-party links to products and services that compete with Complainant’s contact lens and eye care products. Complainant argues that such use of a confusingly similar domain name is evidence that Respondent does not have rights or legitimate interests in the domain name. The Panel agrees and finds that Respondent is not making 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), where it is using the domain name to operate a website featuring a search engine and third-party links to Complainant’s competitors. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
Lastly, Complainant argues that Respondent’s registration and use of the <accuminder.com> domain name constitutes typosquatting, and as such is further evidence that Respondent does not have rights or legitimate interests in the domain name. The Panel agrees and finds that Respondent’s registration and use of the misspelled version of Complainant’s mark is further evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has presented evidence that Respondent has been the respondent in previous UDRP proceedings in which prior panels ordered Respondent to transfer the domain names to the respective complainants in those cases. See The Finish Line, Inc. v. Mueller, FA 1359328 (Nat. Arb. Forum Dec. 30, 2010); see also Hidroservice Engenharia LTDA v. Mueller, FA 1282351 (Nat. Arb. Forum Oct. 12, 2009); see also ITV plc v. Mueller, D2010-0253 (WIPO May 6, 2010). Complainant argues that such evidence is also evidence that Respondent registered the <accuminder.com> domain name in bad faith. The Panel agrees and finds that Respondent has engaged in a pattern of bad faith registration and use based upon previous adverse UDRP rulings, and that such evidence establishes bad faith 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 Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Further, Complainant has presented evidence that Respondent is using the disputed domain name to divert Internet users seeking Complainant’s products and services to those of Complainant’s competitors. The Panel determines that such use of a confusingly similar domain name disrupts Complainant’s business and online presence and is therefore evidence of bad faith registration and use under Policy ¶ 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 Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, the Panel finds that it may be inferred from Respondent’s use of the disputed domain name that it collects click-through or referral fees from the businesses advertised and linked to on Respondent’s website. The Panel finds that such use is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel has previously determined that Respondent’s registration and use of the disputed domain name constitutes typosquatting. Further, the Panel finds that typosquatting has been recognized by previous panels as further evidence of bad faith under Policy ¶ 4(a)(iii), and so this Panel finds. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
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 <accuminder.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 18, 2011
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