national arbitration forum

 

DECISION

 

Johnson & Johnson v. Fundacion Private Whois / Domain Administrator

Claim Number: FA1207001453515

 

PARTIES

Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington, D.C., USA.  Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <genericrisperdal.com>, registered with Internet.bs Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2012; the National Arbitration Forum received payment on July 16, 2012.

 

On July 16, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <genericrisperdal.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2012 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@genericrisperdal.com.  Also on July 19, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 13, 2012, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant owns trademark registrations for the RISPERDAL mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,830,761 registered April 12, 1994), and with the Panamanian Industrial Property Office (“PIPO”) (Reg. No. 55,094 registered December 17, 1991).
    2. Respondent’s <genericrisperdal.com> domain name is confusingly similar to the RISPERDAL mark, only adding the descriptive term “generic” and the generic top-level domain (“gTLD”) “.com.”
    3. Respondent does not have rights or legitimate interests in the disputed domain name as it is not commonly known by the domain name and has not been authorized to use the RISPERDAL mark.
    4. Respondent is not making a bona fide offering of goods or services through the domain name where it is offering generic pharmaceutical medication as genuine RISPERDAL products.
    5. Respondent’s marketing and sale of generic products under the RISPERDAL name and mark disrupts Complainant’s business and is evidence of Respondent’s bad faith.
    6. Respondent clearly had actual knowledge of Complainant’s rights in the RISPERDAL mark prior to registering the disputed domain name which is evidence of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the RISPERDAL mark.  Respondent’s domain name is confusingly similar to Complainant’s mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the  <genericrisperdal.com> domain name and that Respondent registered and uses the domain name in bad faith.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant owns trademark registrations for the RISPERDAL mark with the USPTO (Reg. No. 1,830,761 registered April 12, 1994) and with the PIPO (Reg. No. 55094 registered December 17, 1991).  Complainant’s national trademark registrations are sufficient for it to establish rights in the RISPERDAL mark under Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).

 

Further, Complainant contends that Respondent’s <genericrisperdal.com> domain name is confusingly similar to the RISPERDAL mark, only adding the descriptive term “generic” and the 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 Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name as it is not commonly known by the domain name and has not been authorized to use the RISPERDAL mark.  The Panel notes that the WHOIS information for the <genericrisperdal.com> domain name identifies “Fundacion Private Whois / Domain Administrator” as the registrant and that no further information is available that would indicate that Respondent is or may be commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See 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).

 

Further, Complainant argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name, where it is offering generic pharmaceutical medication as genuine RISPERDAL products.  Complainant notes that, when Internet users click on the “Buy Now” link on Respondent’s website, they are redirected to the third-party website of <tristatemeds.com> that sells “risperidone,” the generic version of Complainant’s RISPERDAL product.  Complainant also asserts that Respondent is providing incorrect information about Complainant’s products through the domain name.  The Panel finds that Respondent is marketing competing products to those of Complainant and is presumably being paid for redirecting Internet users to the <tristatemeds.com> website.  Further, the Panel finds that Respondent is not using the disputed domain name for 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s marketing and sale of generic products under the RISPERDAL name and mark disrupts Complainant’s business and is evidence of Respondent’s bad faith.  As noted above, Complainant claims that Respondent’s website provides incorrect information about Complainant’s RISPERDAL products and redirects Internet users to the <tristatemeds.com> website selling the generic version of Complainant’s products.  The Panel finds that such use disrupts Complainant’s business by diverting customers away from Complainant’s RISPERDAL branded products and to a third party’s generic version of those products.  Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).

 

Finally, Complainant argues that Respondent clearly had actual knowledge of Complainant’s rights in the RISPERDAL mark prior to registering the disputed domain name, which is evidence of bad faith.  Complainant has argued that Respondent’s resolving website features its trademark and product name throughout, while also providing information about Complainant and its RISPERDAL products.  Therefore, the Panel finds that Respondent had actual knowledge of Complainant and its rights in the RISPERDAL mark.  Accordingly, the Panel finds that Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

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 <genericrisperdal.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  August 21, 2012

 

 

 

 

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