Johnson &
Johnson v. Jason Schwab a/k/a Simple Hosting Solutions
Claim Number: FA0107000098008
PARTIES
Complainant is McNeil - PPC, Inc. and parent company, Johnson & Johnson, New Brunswick, NJ (“Complainant”) represented by Norm St. Landau, of Drinker Biddle & Reath LLP. Respondent is Jason Schwab a/k/a Simple Hosting Solutions, Albuquerque, NM (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <ky-jelly.org>, registered with Register.com.
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.
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 9, 2001; the Forum received a hard copy of the Complaint on July 10, 2001.
On July 13, 2001, Register.com confirmed by e-mail to the Forum that the domain name <ky-jelly.org> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 July 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 2001 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@ky-jelly.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody 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.” 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the <ky-jelly.org> domain name is confusingly similar to its federally registered K-Y and K-Y JELLY marks. Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and is using the <ky-jelly.org> domain name in bad faith.
B. Respondent
No Response was received.
FINDINGS
1. Johnson & Johnson and McNeil - PPC, Inc., a member of Johnson & Johnson's family of companies, (collectively "Complainant") are leading manufacturers and sellers of health, personal, and medical care products, nationally and internationally.
2. Since 1904, Complainant, through its predecessors in interest, adopted and have continuously used the K-Y trademark in connection with the sale of personal lubricants.
3. Since 1991, Complainant adopted and has continuously used the K-Y Jelly trademark in connection with the sale of personal lubricants.
4. The Complainant owns all right, title and interest in and to the marks and names K-Y® and K-Y Jelly®, and federal trademark Reg. Nos. 54,124—K-Y and 1,898,527 – K-Y Jelly, which issued June 19, 1906 and June 13, 1995, respectively, and which identify personal lubricants.
5. On October 10, 2000, Respondent registered the <ky-jelly.org> domain name.
6. On March 9, 2001, Complainant sent Respondent a cease and desist letter which included a demand for transfer of the disputed domain name.
7. Prior to Complainant's cease and desist letter, Respondent made no use of the <ky-jelly.org> domain name.
8. After receiving Complainant's cease and desist letter, Respondent created a web page with purported navigation buttons that are inactive.
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or
Confusingly Similar
Complainant has established it has rights in the K-Y and K-Y JELLY marks by virtue of its registrations with the United States Patent and Trademark Office. The <ky-jelly.org> domain name is confusingly similar to Complainant's marks in that it is identical to Complainant’s trademark K-Y Jelly® with the following exceptions:
· the <ky-jelly.org> domain name is in lower case while the trademark contains a combination of upper and lower case letters;
· the disputed domain name has a hyphen between the letters “y” and “j” and the trademark has a hyphen between the letters “K” and “Y;” and
· the domain name adds the generic top-level domain “.org.”
Insofar as domain names are not case sensitive and spaces or punctuation marks are eliminated to form a domain name, such differences have been found to be without legal significance for the purposes of determining if a domain name is confusingly similar to a trademark. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy).
The <ky-jelly.org> domain name is confusingly similar to Complainant's K-Y mark in that it contains the entire mark without the hyphen and simply adds a generic, descriptive word and a TLD after the mark. These changes do not defeat a claim of confusing similarity under UDRP Policy ¶ 4(a)(i). See Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); cf. Marriott Int’l 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 Complainant’s mark “Marriott”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Complainant claims that Respondent has no rights nor legitimate interests in the <ky-jelly.org> domain name because prior to any notice of a domain name dispute, Respondent was not using the <ky-jelly.org> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor was Respondent making a legitimate noncommercial or fair use of the disputed domain name as defined in Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).
Complainant further contends that Respondent is not commonly known by the <ky-jelly.org> domain name as provided under Policy ¶ 4(c)(ii). Respondent has not disputed, nor is there any evidence in the record to contradict, any of Complainant's allegations. The Panel is, therefore, permitted to treat all of Complainant's allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failure to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent's failure to use the <ky-jelly.org> domain name before receiving Complainant's cease and desist letter creates a strong presumption of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). There is ample authority to support a finding that passive holding of a domain name satisfies the bad faith requirements. E.g., Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.
Accordingly, it is Ordered that the <ky-jelly.org> domain name be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: August 10, 2001
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