Johnson & Johnson v. Suunnittelutoimisto Jotain...(SUUNNITT261) / (SUUNNITT190)
Claim Number: FA1209001462681
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington, D.C., USA. Respondent is Suunnittelutoimisto Jotain...(SUUNNITT261) / (SUUNNITT190) (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <iband-aid.com> and <iband-aid.net>, registered with ASCIO TECHNOLOGIES, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 14, 2012; the National Arbitration Forum received payment on September 14, 2012.
On September 17, 2012, ASCIO TECHNOLOGIES, INC. confirmed by e-mail to the National Arbitration Forum that the <iband-aid.com> and <iband-aid.net> domain names are registered with ASCIO TECHNOLOGIES, INC. and that Respondent is the current registrant of the names. ASCIO TECHNOLOGIES, INC. has verified that Respondent is bound by the ASCIO TECHNOLOGIES, 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 September 17, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 9, 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, administra-tive, and billing contacts, and to postmaster@iband-aid.com, postmaster@iband-aid.net. Also on September 17, 2012, the Written Notice of the Complaint, noti-fying Respondent of the e-mail addresses served and the deadline for a Re-sponse, 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 October 16, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant began using the BAND-AID brand and mark in 1920 to facilitate its marketing of adhesive bandages.
Complainant owns the BAND-AID trademark, which is on file with the United States Patent and Trademark Office ("USPTO") (Reg. No. 194,123 registered January 13, 1925).
Respondent registered the <iband-aid.com> and <iband-aid.net> domain names on July 24, 2010 and July 26, 2010, respectively.
Respondent’s <iband-aid.com> and <iband-aid.net> domain names are confus-ingly similar to the BAND-AID mark.
The disputed domain names resolve to websites purporting to offer bandage-like stickers resembling Complainant’s products and intended to be used for the repair of iPhone antennas.
Respondent is not connected or affiliated with Complainant, does not own any trademark rights in the disputed domain names, and has not been commonly known by the disputed domain names.
Respondent has neither any rights to nor any legitimate interests in the disputed domain names.
Respondent’s commercial use of the BAND-AID mark in the disputed domain names is evidence that Respondent registered and is using them in bad faith.
Respondent knew of Complainant’s rights in the BAND-AID mark when it regis-tered the contested domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the BAND-AID trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that of Respondent’s residence or place of business (here Finland). See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (find-ing that it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <iband-aid.com> and <iband-aid.net> domain names are confusingly similar to Complainant’s BAND-AID trademark. The only differences between the mark and the domain names are the addition to the mark of the letter “i” and of the generic top-level domain (“gTLD”) “.com” or “.net.” See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> were confusingly similar to a complainant’s mark, ICQ); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect a domain name for pur-poses of determining whether it is identical or confusingly similar to the mark of a UDRP complainant).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent is not connected or affiliated with Complainant, that Respondent does not own any trademark rights in the disputed domain names, and that Re-spondent has not been commonly known by the disputed domain names. More-over, the pertinent WHOIS information identifies the registrant of the <iband-aid.com> and <iband-aid.net> domain names only as “Suunnittelutoimisto Jotain...(SUUNNITT261) / (SUUNNITT190),” which does not resemble either of the disputed domain names. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in either of them under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed do-main names where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant contends, without objection from Respondent, that Respondent’s domain names resolve to retail websites purporting to offer bandage-like stickers resembling Complainant’s products and intended for the repair of iPhone antennas. This use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (hold-ing that a respondent’s use of a complainant’s trademark as a means of attract-ing Internet users to the website of an unrelated business was not a bona fide offering of goods or services).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s commercial use of the disputed <iband-aid.com> and <iband-aid.net> domain names, as alleged in the Complaint, demonstrates that Respondent registered and is using them in bad faith within the contemplation of Policy ¶ 4(b)(iv), in that the employment of domain names which are confusingly similar to Complainant’s BAND-AID trademark creates confusion among Internet users as to the possibility of an affiliation of Complainant with the domain names, and that Respondent is attempting to profit from such confusion. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a complainant to its own website, likely profit-ing in the process); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007):
The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the … domain name and Complainant’s … mark in order to profit from the goodwill associated with the mark.
We are likewise convinced from the evidence that Respondent knew of Com-plainant’s rights in the BAND-AID mark when it registered the domain names. This stands as independent proof that Respondent registered the disputed domain names in bad faith. See Minicards Vennootschap Onder FIrma Am-sterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <iband-aid.com> and <iband-aid.net> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 30, 2012
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