Johnson & Johnson v. domains Ventures
Claim Number: FA0608000778967
Complainant is Johnson & Johnson (“Complainant”), represented by Norm
D. St. Landau, of Drinker Biddle & Reath LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwlifescan.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 16, 2006.
On August 28, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwlifescan.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 19, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwlifescan.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2006, pursuant to Complainant's request to have the dispute decided 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Acting through its
wholly-owned subsidiary LifeScan, Inc., Complainant has provided diabetes-care products under the
LIFESCAN mark for over 20 years.
In support of the marketing
of its products, Complainant holds a trademark registration for the LIFESCAN
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,384,863, issued March 4, 1986).
Complainant maintains a
significant presence on the Internet and utilizes the domain name <lifescan.com>
to resolve to its commercial website.
Respondent registered the <wwwlifescan.com> domain name on February 13, 2004.
The disputed domain name resolves to a website that provides web searching and sponsored links to websites where Complainant’s goods can be purchased and to third-party websites that compete with the business of Complainant.
The resulting website also contains a link entitled “Inquire about wwwlifescan.com,” which directs Internet users to an online form that solicits offers for the purchase of the subject domain name.
Respondent’s <wwwlifescan.com> domain name is confusingly similar to Complainant’s LIFESCAN mark.
Respondent does not have any rights or legitimate interests in the <wwwlifescan.com> domain name.
Respondent registered and uses the <wwwlifescan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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."
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:
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.
Complainant has established rights in the LIFESCAN mark through registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Complainant asserts that the <wwwlifescan.com> domain name is confusingly similar to
its registered LIFESCAN mark. The
disputed domain name merely adds the common Internet prefix “www,” minus the
customary punctuation, to Complainant’s otherwise unmodified LIFESCAN
mark. This addition to an otherwise
unmodified mark fails to differentiate the disputed domain name from the mark
for purposes of Policy ¶ 4(a)(i). The <wwwlifescan.com>
domain name is confusingly similar to
Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb.
Forum Aug. 1, 2000) (finding that a respondent’s domain name,
<wwwbankofamerica.com>, is confusingly similar to a complainant’s
registered trademark, BANK OF AMERICA, because it “takes advantage of a typing
error (eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683
(Nat. Arb. Forum Dec. 6, 2002) (holding that confusing similarity has been
established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from a complainant's
mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant bears the initial burden of making out a prima facie showing that Respondent lacks legitimate rights and interests in the disputed domain name. Once such a showing has been made, the burden shifts to Respondent to come forward with evidence rebutting Complainant’s prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
On the record before us, Complainant has established a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name through the uncontested assertions and evidentiary
submissions in its Complaint.
Respondent’s failure to submit a Response to these submissions raises a
presumption that Respondent lacks rights and legitimate interests in the
disputed domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.
The Panel, however, chooses to
examine the record to determine if there is any basis for concluding that
Respondent has rights or legitimate interests in the disputed domain.
We begin by noting that, according to the WHOIS registry, the registrant of the disputed domain name is “domain Ventures.” Because there is no evidence in the record to suggest otherwise, we must therefore conclude that Respondent is not commonly known by the disputed domain name as contemplated in Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because that respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have rights or interests in a domain name where, among other things, that respondent was not known by the competing mark).
We next observe that it is undisputed on this record that the disputed domain name resolves to a website providing web searching services and links to websites where Complainant’s goods can be purchased or to third-party websites that compete with the business of Complainant. Respondent’s use of a confusingly similar domain name to resolve to a search engine advertising portal does not qualify as 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 Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that a respondent did not have rights or legitimate interests in a domain name that used a complainant’s mark and redirected Internet users to a website paying domain name registrants for referring those users to its search engine and pop-up advertisements); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that a respondent’s use of a disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name).
Finally, we conclude that Respondent’s undenied attempt to
solicit offers to purchase the contested domain name further evidences its lack
of rights and legitimate interests in the domain. While it may be true that, as a rule, the
resale of generic domain names may amount to a bona fide offering of
goods or services, under Policy ¶ 4(a)(ii), offering
for sale a domain name that is confusingly similar to another’s trademark does
not qualify as a bona fide offering of goods or services. See Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances there demonstrated, a
respondent’s willingness to dispose of a disputed domain name suggested
that it lacked rights or legitimate interests in the domain); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where a respondent registered a domain name with the intention of selling it);
further see Am. Nat’l Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003): “Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful
holder of the RED CROSS mark.”
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant asserts that Respondent has registered and used
the disputed domain name in bad faith.
Owing to the nature of the related website, we may reasonably presume
that Complainant receives commercial gain from its operation. Additionally, due to the confusingly similar
character of the disputed domain name, there is a likelihood of confusion as to
Complainant’s possible sponsorship of or affiliation with the disputed domain
name. Accordingly, Respondent’s use of
the domain name to attract Internet users to its website for commercial gain
evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) (finding that a respondent’s use of an
infringing domain name to redirect Internet users to banner advertisements
constituted bad faith use of the domain); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where a respondent linked a
domain name to another domain, <iwin.com>, presumably receiving a portion
of the advertising revenue from the site by directing Internet traffic there,
thus using the challenged domain name to attract Internet users for commercial
gain).
Moreover, Respondent’s effort to solicit purchase offers for the disputed domain name suggests that Respondent registered the disputed domain name with the intent to sell it. This strongly suggests bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000):
There
is nothing inherently wrongful in the offer or sale of domain names, without
more, such as to justify a finding of bad faith under the Policy. However, the
fact that domain name registrants may legitimately and in good faith sell
domain names does not imply a right in such registrants to sell domain names
that are identical or confusingly similar to trademarks or service marks of
others without their consent.
Finally under this heading, we must conclude that Respondent is charged with at least constructive knowledge of Complainant’s rights in its LIFESCAN mark owing to its registration with the competent authorities in the United States, so that Respondent’s recent registration of a domain name confusingly similar to Complainant’s registered mark is, without more, evidence of Respondent’s bad faith registration and use of the disputed domain name within the compass of the Policy. Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). See also Miller Brewing Co. v. km, FA 158252 (Nat. Arb. Forum Jul. 3, 2003).
For all of these reasons, the Panel finds that Complainant has satisfied 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 GRANTED.
Accordingly, it is Ordered that the <wwwlifescan.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 11, 2006
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