national arbitration forum

 

DECISION

 

Johnson & Johnson v. Benjamin Bertisch

Claim Number: FA1104001385725

 

PARTIES

Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington, D.C., USA.  Respondent is Benjamin Bertisch (“Respondent”), Israel.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <acuvue-contacts.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2011; the National Arbitration Forum received payment on April 26, 2011.

 

On April 26, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <acuvue-contacts.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@acuvue-contacts.com.  Also on April 27, 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 May 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <acuvue-contacts.com> domain name is confusingly similar to Complainant’s ACUVUE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <acuvue-contacts.com> domain name.

 

3.    Respondent registered and used the <acuvue-contacts.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Johnson & Johnson, launched the ACUVUE brand of contact lenses in 1987.  Complainant owns the ACUVUE mark and uses the mark in the promotion of its contact lens products nationally and internationally.  Complainant holds numerous trademark registrations for ACUVUE with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,458.177 issued Sept. 22, 1987).

 

Respondent, Benjamin Bertisch, registered the <acuvue-contacts.com> domain name on June 21, 2006.  The disputed domain name previously resolved to a website which was designed to convey the look of Complainant’s official website by displaying the ACUVUE mark, the JOHNSON & JOHNSON mark, the trade dress of Complainant’s ACUVUE products, and a copyright notice.  The website also included a prominent link to a “drinking games” website unrelated to Complainant’s business.  The disputed domain name now resolves to <lensbob.com/acuvue>, which again continues to falsely convey an association with Complainant through use of Complainant’s ACUVUE mark and other images.  Respondent’s website purports to provide information about Complainant’s contact lens products and care.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant maintains that it has demonstrated rights in its ACUVUE mark.  Previous panels have determined that a complainant may establish rights in a mark through registration with a federal trademark authority.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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).  It is not necessary for Complainant to register its mark within the country of Respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  Here, Complainant holds numerous trademark registrations for the ACUVUE mark with the USPTO (e.g., Reg. No. 1,458.177 issued Sept. 22, 1987).  The Panel finds that Complainant has established its rights in the ACUVUE mark through its registration with a trademark authority pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <acuvue-contacts.com> domain name is confusingly similar to its ACUVUE mark.  The disputed domain name incorporates the entire ACUVUE mark and only changes it by adding a hyphen, the descriptive word “contacts,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a descriptive word, which relates to Complainant’s contact lens products, and the affixation of a gTLD do not sufficiently distinguish the disputed domain name from Complainant’s mark.  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).  The Panel also finds that the addition of a hyphen does not avoid a finding of confusing similarity.  See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).  Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s ACUVUE mark under Policy ¶ 4(a)(i).

           

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent has no rights or legitimate interests in the <acuvue-contacts.com> domain name.  In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.  Complainant has presented a prima facie case in support of its claims.  Due to Respondent’s failure to respond to the Complaint, the Panel may interpret this as evidence that Respondent lacks right and legitimate interests under Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant claims that Respondent is not commonly known by the <acuvue-contacts.com> domain name.  The WHOIS information identifies Respondent as “Benjamin Bertisch,” which is not similar to the disputed domain name.  Complainant further claims that it has not granted any license or consent to Respondent to use its ACUVUE mark within the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the <acuvue-contacts.com> domain name under 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).

 

Respondent’s disputed domain name previously resolved to a website that tried to pass itself off as Complainant’s official site by prominently displaying Complainant’s ACUVUE mark along with the stylized “Johnson & Johnson” mark, the trade dress of Complainant’s products, and a copyright for <acuvue-contacts.com> as a trade name.  The website also included a prominent link to a website devoted to “drinking games.”  Respondent likely received click-through fees from this link.  The Panel finds that Respondent’s use of the disputed domain name to operate a website that attempts to pass itself off as Complainant’s official site, in order to profit, is 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).  See Am. 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

After Complainant objected to Respondent’s use of the <acuvue-contacts.com> domain name, Respondent modified its use of the domain name to resolve to <lensbob.com>.  The resolving page continues to falsely convey an association with Complainant, again through display of Complainant’s ACUVUE mark.  Much of the information on Respondent’s website is inaccurate and incomplete and omits important information regarding use instructions and possible side effects.  Respondent does not sell Complainant’s ACUVUE contact lenses directly, but provides a link to a third-party reseller and likely receives click-through fees. The Panel finds that Respondent’s use of the disputed domain name to display inaccurate information about Complainant’s contact lens products and in doing so, generate click-through fees from featured links, is 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).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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 Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and use of the disputed domain name disrupts its business.  Respondent’s website currently resolves to a website which continues to convey the false impression that the site is sponsored by Complainant by displaying Complainant’s ACUVUE mark and other images implying Complainant’s association.  The website also provides direct links to third-party retailers in direct competition with Complainant’s contact lens products.  The Panel finds that Respondent’s use of the disputed domain name to reroute Internet users to Complainant’s competitors does disrupt Complainant’s business and is evidence of bad faith 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

 

Respondent’s website originally included a link to a “drinking games” website.  After receiving Complainant’s cease and desist letter, Respondent modified the website to resolve to <lensbob.com/acuvue>, which includes links to a third-party retailer selling goods in direct competition with Complainant.  By operating a website that prominently displays Complainant’s ACUVUE mark and related images and information creates a strong likelihood of confusion as to Complainant’s sponsorship of, or affiliation with the website and products offered by the third-party links.  Respondent attempts to capitalize from this confusion by collecting click-through fees from the featured links.  The Panels finds that Respondent’s registration and use of the <acuvue-contacts.com> domain name for its own profit constitutes bad faith under Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <acuvue-contacts.com> domain name be TRANSFERRED from Respondent to Complainant. 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  June 6. 2011

 

 

 

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