national arbitration forum

 

DECISION

 

Johnson & Johnson v. Johnson & Johnson

Claim Number: FA1303001491822

PARTIES

Complainant is Johnson & Johnson (“Complainant”), represented by Jaye S. Campbell of Drinker Biddle & Reath LLP, District of Columbia, USA.  Respondent is Johnson & Johnson (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <johnson-johnson-heath-care.com>, registered with GODADDY.COM, LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2013; the National Arbitration Forum received payment on March 27, 2013.

 

On March 28, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <johnson-johnson-heath-care.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 April 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2013 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@johnson-johnson-heath-care.com.  Also on April 3, 2013, 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 April 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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

Complainant contends as follows:

 

Complainant, Johnson & Johnson, first used the JOHNSON & JOHNSON mark and name in 1886 is in connection with a variety of medical and surgical goods. Since then, Complainant has expanded the use of the JOHNSON & JOHNSON mark to a broad range of personal care, health and beauty, pharmaceutical and medical goods and services, among other goods and services.

 

Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the JOHNSON & JOHNSON mark (e.g., Reg. No. 918,687, registered August 17, 1971).

 

Respondent’s <johnson-johnson-heath-care.com> domain name is confusingly similar to Complainant’s mark as the only differences between Respondent’s <johnson-johnson-heath-care.com> domain and Complainant’s famous JOHNSON & JOHNSON mark are the deletion of the ampersand between the words “Johnson” and “Johnson”, the substitution of hyphens for spaces between words, the addition of the generic top-level domain (“gTLD”) “com,” and the addition of the intentionally misspelled generic term “health-care.”

 

Respondent has no legitimate rights or interests in the domain name. “Johnson & Johnson Heathcare Distributors llc” does not exist, and there is no company commonly known by such name or by the name “Johnson-johnson-heath-care.com.”

 

Respondent profits from the goodwill of Complainant’s JOHNSON & JOHNSON mark by using a confusingly similar domain name to resolve to a pay-per-click website. Respondent registered and uses the domain name in bad faith. Respondent uses the disputed domain to resolve to a pay-per-click site intended to generate revenue through advertising. Respondent’s site also generates sham pop-up advertisements that invite users to enter personal information to become unwilling enrollees in the advertised company’s services.

 

Respondent had constructive knowledge of Complainant’s rights in the JOHNSON & JOHNSON mark when it registered the <johnson-johnson-heath-care.com> domain name.

 

Respondent registered the <johnson-johnson-heath-care.com> domain name on or around June 25, 2012.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns USPTO trademark registrations for the JOHNSON & JOHNSON mark.

 

Complainant acquired rights in its JOHNSON & JOHNSON mark prior to Respondent’s registration of the at-issue domain name.

 

Respondent is not authorized to use Complainant’s trademark in any capacity.

 

Respondent uses the at-issue domain name for a pay-per-click website featuring pay-per-click link advertisements as well as pop-up advertisements where users are asked to enter personal information.

 

Respondent had knowledge of Complainant’s rights in JOHNSON & JOHNSON when it registered the domain name.

 

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

Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.

 

Complainant’s registration of the JOHNSON & JOHNSON mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).

 

In forming the at-issue <johnson-johnson-heath-care.com> domain name Respondent deletes the ampersand between the words “Johnson” and “Johnson” and replaces it with a hyphen, adds a misspelling of the term “health care,” hyphenates the parsed terms and then appends the top level domain name “.com” to the resulting string.  Despite these alterations Respondent’s domain name is nevertheless confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not expressly or impliedly authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information for the at-issue domain name originally identified the domain name’s registrant as Joe Davis of Davis Financial Group, Seminole, Florida and the record before the Panel contains no evidence that might otherwise tend to prove contrary to the WHOIS information that Respondent is commonly known by the at-issue domain name. The fact that the Respondent changed the registrant’s name on the WHOIS record to “Johnson & Johnson Heathcare Distributors llc [sic]” after being notified of the instant dispute fails to credibly show that the Respondent was known by the domain name. To the contrary, using Complainant’s mark in the registration record suggests that Respondent wanted to further confuse interested third parties and Internet users regarding the ownership of the domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).

 

Respondent’s at-issue domain name resolves to a website which features competing and unrelated pay-per-click hyperlinks titled “Healthcare Jobs,” “Walmart Employment,” “Low Cost Health Insurance,” and others. Respondent’s use of the disputed domain name to provide competing and unrelated hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

As mentioned above, the at-issue domain name addresses a website which features competing and unrelated hyperlinks titled “Healthcare Jobs,” “Walmart Employment,” “Low Cost Health Insurance,” and others. Respondent’s use of the confusingly similar domain name to attract Internet users to a website displaying competing and unrelated monetarized hyperlinks shows Respondent’s bad faith use and registration under Policy ¶ 4(b)(iv). See 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.’”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

Respondent’s website also generates sham pop-up advertisements that invite users to enter personal information to become unwilling enrollees in the advertised company’s services. Thereby Respondent tarnishes Complainant’s trademark and brand by associating it with objectionable sham advertisements. Using the domain name in this manner disrupts Complainant’s legitimate business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii) and otherwise. See Cancer Treatment Ctrs. of Am., Inc. (CTCA) v. Henry Chan, D2003-0611 (WIPO September 18, 2003) (finding bad faith where respondent's pop-up advertisements for dating services and gambling tarnished complainant's mark and "annoy[ed] the Internet user ...creat[ing] a false and negative association" between respondent's site and complainant).

 

Additionally and as mentioned above, Respondent again misappropriated Complainant’s trademark prior to the commencement of the instant dispute by changing the registration record to falsely suggest JOHNSON & JOHNSON is the domain name’s owner and registrant. Confounding the name of the registrant was apparently either an attempt by Respondent to gain advantage in the instant proceedings by introducing delay or an attempt to further confuse interested third parties regarding the sponsorship of the domain name and any associated addressed web properties, such as Respondent’s <johnson-johnson-heath-care.com> website, or both. Respondent’s behavior in this manner indicates bad faith under Policy ¶4(a)(iii). See Monster Energy Co. v. Argo Wibowo, FA1452773 (NAF August 23, 2012) (finding bad faith where Respondent changed its WHOIS information from a privacy shield to the name "Argo Wibowo" after receiving notice of a UDRP proceeding); see also Medea Health Solutions, Inc. v. Who is Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent's efforts to disguise its true identity were an example of bad faith conduct).

 

Finally, prior to registering the at-issue domain name Respondent had actual knowledge of Complainant’s rights in the JOHNSON & JOHNSON mark.  Respondent’s prior knowledge is clear from the fact that the <johnson-johnson-heath-care.com> domain name contains an insignificant variant of  Complainant’s entire JOHNSON & JOHNSON trademark and from the Panel’s finding that immediately prior to the commencement of the instant action Respondent altered the original registration record and in the process again misappropriated Complainant’s trademark.  Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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 <johnson-johnson-heath-care.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated:  May 2, 2013

 

 

 

 

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