Johnson & Johnson v. min li
Claim Number: FA2108001959742
Complainant is Johnson & Johnson (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is min li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jnj-jlabstaiwan.com>, registered with NameSilo, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2021; the Forum received payment on August 16, 2021.
On August 16, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <jnj-jlabstaiwan.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 August 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 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@jnj-jlabstaiwan.com. Also on August 18, 2021, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 10, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant, Johnson & Johnson, operates one of the largest healthcare companies in the world. Complainant has rights in the J&J mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,493,334, registered Mar. 11, 2014). Respondent’s <jnj-jlabstaiwan.com> domain name is confusingly similar to Complainant’s J&J mark, only differing by changing the “&” to the phonetically identical “N”, adding a hyphen, the “JLABS” mark which Complainant uses in its healthcare innovation efforts, and the geographic term “Taiwan” before appending the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <jnj-jlabstaiwan.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the J&J mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, the disputed domain name previously resolved to a website used to operate a phishing scheme.
Respondent registered and uses the <jnj-jlabstaiwan.com> domain name in bad faith. Respondent uses the disputed domain name to operate a phishing scheme, which may demonstrate bad faith. Also, the disputed domain name currently resolves to an inactive website. Respondent’s use of a privacy service when registering the disputed domain name may also evince bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the J&J mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <jnj-jlabstaiwan.com> domain name.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the J&J mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 4,493,334, registered Mar. 11, 2014). The Panel finds that Complainant has rights in the J&J mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <jnj-jlabstaiwan.com> domain name is confusingly similar to Complainant’s J&J mark. Complainant argues that the “JNJ” within the mark is phonetically identical to Complainant’s own J&J mark, and the additions of a hyphen, the term “JLABS,” which is a term Complainant uses in its business, the geographic term “Taiwan,” and the “.com” gTLD make the domain name confusingly similar. Previous Panels have said that such changes may not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Noodle Time, Inc. v. Bryan Stapp, FA 1723431 (Forum May 4, 2017) (“The residual term, ‘bennyhanna,’ is phonetically identical to the trademark [BENIHANA] and so the Panel finds that the disputed domain name is confusingly similar to the trademark.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see additionally Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s J&J mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (‘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”). The Panel finds that Complainant has made a prima facie case.
Complainant also argues that Respondent fails to use the <jnj-jlabstaiwan.com> domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use, and instead uses the disputed domain to operate a phishing scheme. Such use of an infringing domain name does not qualify as either a bona fide offer of goods or services, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). Screenshots of the disputed domain name demonstrate that Respondent attempts to obtain visitors’ personal and financial information by purporting to operate a Multilevel Marketing Company using the disputed domain name to promote Complainant’s COVID-19 vaccine. The Panel agrees with Complainant and finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Respondent also utilized a privacy service when registering the <jnj-jlabstaiwan.com> domain name. Previous Panels have held that use of a privacy service when registering an infringing domain name may display bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The WHOIS information of record indicates that Respondent used a privacy service. This is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant also claims that Respondent registered the <jnj-jlabstaiwan.com> domain name with actual knowledge of Complainant’s rights in the J&J mark. Registration of a domain name with actual knowledge of another’s trademark rights is sufficient to demonstrate bad faith and may be shown by the notoriety of a mark and the use Respondent makes of the disputed domain name. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant operates one of the world’s largest healthcare companies, and Respondent uses the disputed domain name to operate a phishing scheme by promoting an alleged Multilevel Marketing Company related to Complainant’s COVID-19 vaccine. The Panel finds Complainant had actual knowledge of Complainant’s mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <jnj-jlabstaiwan.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
September 17, 2021
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