Johnson & Johnson v. Dyk Dylina
Claim Number: FA1103001380043
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington D.C., USA. Respondent is Dyk Dylina (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onetouchglucosemeter.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.
The undersigned certifies that she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2011; the National Arbitration Forum received payment on March 24, 2011. The Complaint was submitted in both Finnish and English.
On March 29, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <onetouchglucosemeter.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com 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 4, 2011, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of April 25, 2011 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@onetouchglucosemeter.com. Also on April 4, 2011, the Finnish language Written Notice of the Complaint, notifying Respondent of the email 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 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <onetouchglucosemeter.com> domain name is confusingly similar to Complainant’s ONETOUCH mark.
2. Respondent does not have any rights or legitimate interests in the <onetouchglucosemeter.com> domain name.
3. Respondent registered and used the <onetouchglucosemeter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Johnson & Johnson, markets and sells glucose monitoring devices and related diabetes care products. Complainant sells these products under the ONETOUCH mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,863,393 issued July 13, 2004).
Respondent, Dyk Dylina, registered the <onetouchglucosemeter.com> domain name on December 20, 2006. The disputed domain name resolves to a website displaying hyperlinks to the websites of Complainant’s competitors in the sale and distribution of glucose monitoring products.
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:
(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.
Complainant commences these proceedings by contending that it has rights in the ONETOUCH mark which is registered with the USPTO (e.g., Reg. No. 2,863,393 issued July 13, 2004). The Panel finds that Complainant has established rights because registration of a mark with a federal trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <onetouchglucosemeter.com> domain name is confusingly similar to the ONETOUCH mark. Respondent incorporated Complainant’s entire mark and merely added the descriptive terms “glucose” and “meter” to the mark, in addition to the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding descriptive terms and a gTLD to an established mark does not result in a unique domain name and therefore determines that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Under Policy ¶ 4(a)(ii), the burden rests on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie showing in support of its allegation, the burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ (a)(ii). The Panel finds that Complainant has made a prima faice showing and because Respondent failed to make a timely response, the Panel may assume that Respondent lacks rights or legitimate interests in the <onetouchglucosemeter.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel chooses to consider the evidence to determine whether Respondent owns any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts, without contradiction from Respondent, that Respondent is not commonly known by the <onetouchglucosemeter.com> domain name and that Respondent is not authorized to use the ONETOUCH mark. The Panel examined the record and can find no evidence that would support a finding that Respondent is commonly known by the disputed domain name. Furthermore, the information in the WHOIS database lists the registrant of the domain name as “Dyk Dylina” which Complainant alleges is not similar to the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <onetouchglucosemeter.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent uses the disputed domain name to redirect Internet users to a website that display hyperlinks to the websites of Complainant’s competitors in the sale of glucose monitoring products. The Panel presumes that Respondent receives click-through fees in return for this redirection. Therefore, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent uses the disputed domain name and resolving website to display links to various third-party websites, most of which compete with Complainant’s healthcare products business. Respondent’s posted hyperlinks to Complainant’s competitors negatively affects Complainant’s business because Internet users intending to purchase Complainant’s products may purchase similar products from Complainant’s competitors. The Panel determines that Respondent’s use of the disputed domain name disrupts Complainant’s business which is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Lastly, Complainant contends that Respondent used the disputed domain name to divert Internet users to Respondent’s website which displays hyperlinks to Complainant’s competitors. Because of this redirection, Complainant alleges that Internet users are confused as to Complainant’s sponsorship of, and affiliation with the disputed domain name, resolving website, and posted hyperlinks. The Panel presumes that Respondent benefits from this confusion through the receipt of click-through fees. Therefore, the Panel finds that Respondent use constitutes bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onetouchglucosemeter.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 26, 2011
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