Johnson & Johnson v. marketing commando
Claim Number: FA1206001450355
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington, D.C, USA. Respondent is marketing commando (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acuvueoasys.us>, registered with Wild West Domains, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2012; the National Arbitration Forum received a hard copy on June 26, 2012.
On June 25, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <acuvueoasys.us> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 27, 2012, Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following assertions:
1. Respondent’s <acuvueoasys.us> domain name is confusingly similar to Complainant’s ACUVUE mark.
2. Respondent does not have any rights or legitimate interests in the <acuvueoasys.us> domain name.
3. Respondent registered or used the <acuvueoasys.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns rights in the ACUVUE mark via its many trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,458,177 registered September 22, 1987).
2. Complainant also owns rights in the ACUVUE OASYS mark via registration with the USPTO (e.g., Reg. No. 3,331,060 registered November 6, 2007).
3. Complainant’s ACUVUE mark is famous and identifies Complainant’s contact lenses, marketed in the United States, as well as in other international markets.
4. The ACUVUE OASYS mark designates one of Complainant’s brand of contact lenses.
5. Complainant introduced its ACUVUE contact lenses in March of 1987.
6. Complainant’s ACUVUE OASYS line of contacts was launched in 2005.
7. Respondent registered the <acuvueoasys.us> domain name on April 9, 2010.
8. Respondent’s disputed domain name resolves to a website that would lead website visitors to believe that the site is affiliated with Complainant’s business because the website prominently displays Complainant’s ACUVUE OASYS mark at the page’s header, as well as throughout the site, the trade dress of Complainant’s contact lens products, and a copyright notice declaring “Copyright 2010, 2011, 2012. www.acuvueoasys.us. All Rights Reserved.”
9. Respondent does not have permission to use the ACUVUE or ACUVUE OASYS marks in any manner.
10. The <acuvueoasys.us> domain name is confusingly similar to Complainant’s ACUVUE OASYS mark.
11. Respondent does not have rights or legitimate interests in the <acuvueoasys.us> domain name and is not commonly known by the disputed domain name.
12. Respondent uses the disputed domain name for commercial gain by providing links to merchandisers’ websites that sell products that compete with Complainant’s offered goods.
13. Respondent registered the disputed domain name in bad faith by intending to mislead consumers into believing the resolving website is affiliated with Complainant.
14. Respondent had actual knowledge of Complainant’s rights in the ACUVUE and ACUVUE OASYS marks.
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.”).
Complainant claims to own rights in the ACUVUE mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,458,177 registered September 22, 1987), as well as in the ACUVUE OASYS mark through its registrations with the USPTO (e.g., Reg. No. 3,331,060 registered November 6, 2007). The Panel determines that Complainant’s trademark registrations for both the ACUVUE and ACUVUE OASYS marks sufficiently establish Complainants rights in both marks pursuant to 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, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”).
Complainant argues that the <acuvueoasys.us> domain name is confusingly similar to its ACUVUE OASYS mark. Complainant alleges that the disputed domain name incorporates the ACUVUE OASYS mark in its entirety, while adding the country-code top-level domain (“ccTLD”) “.us.” The Panel also notes that the domain name eliminates the space between the words of the mark. The Panel finds that the <acuvueoasys.us> domain name is identical to Complainant’s ACUVUE OASYS mark under Policy ¶ 4(a)(i). See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that no evidence is submitted to the record that demonstrates that Respondent owns service marks or trademarks that reflect the <acuvueoasys.us> domain name. The Panel therefore determines that Respondent does not possess rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark).
Complainant alleges that Respondent is not commonly known by the <acuvueoasys.us> domain name because the WHOIS information identifies the registrant as “marketing commando” and “Ahmad AbdelHakim” as the administrative contact. See Exhibit A. Complainant further contends that Respondent does not have permission to use the ACUVUE OASYS mark. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the UDRP panel stated that the respondent had no rights or legitimate interests in the disputed domain name because the respondent was not permitted to register domain names using the complainant’s mark, and did not submit evidence showing that it was commonly known by the disputed domain name. The UDRP panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), held that the respondent was not commonly known by the disputed domain name based on the WHOIS information, as well as other evidence on record. The Panel concludes that Respondent is not commonly known by the <acuvueoasys.us> domain name under Policy ¶ 4(c)(iii) because the WHOIS information for the domain name reflects another name and Respondent lacks authority to use Complainant’s mark.
Complainant argues that Respondent uses the <acuvueoasys.us> domain name to host a website containing information regarding Complainant’s products, as well as hyperlinks to competing contact lens distributors. Complainant contends that Respondent does not actually offer any goods at its website; rather, Complainant argues that Respondent provides links to businesses that compete with Complainant, and Respondent presumably earns a profit when website visitors click through the hyperlinks. Further, Complainant alleges that Respondent uses its mark and trade dress prominently throughout the resolving website, giving the impression that the website belongs to Complainant. The Panel finds that Respondent’s use of the disputed domain name to host competing hyperlinks as well as to purport to belong to Complainant is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). 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 UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant argues that the website corresponding to the <acuvueoasys.us> domain name displays hyperlinks leading to businesses that compete directly with Complainant and are “merely a click away.” Complainant alleges that using a famous mark to misdirect traffic to its own site to feature hyperlinks of competitors is evidence of bad faith registration and use. The UDRP panel in Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), found that using the resolving website to divert Internet traffic to the complainant’s competitors amounted to registration and use in bad faith. The UDRP panel in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), stated that, by using a confusingly similar domain name to attract Internet users to a website featuring links to the complainant’s competitors, the respondent registered and used the disputed domain name in bad faith. The Panel finds that Complainant demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) by displaying competing hyperlinks at the resolving website.
Complainant asserts that Respondent uses the <acuvueoasys.us> domain name to mislead consumers to believe the website is sponsored by Complainant because Complainant’s ACUVUE and ACUVUE OASYS marks are contained in the header of the website, as well as throughout the website, Complainant’s trade dress for its product is displayed prominently, and the website contains a copyright notice stating “Copyright 2010, 2011, 2012. www.acuvueoasys.us. All Rights Reserved.” Complainant argues that Respondent’s website provides unauthorized and inaccurate information regarding Complainant’s products. The Panel finds that Respondent’s attempt to confuse users and attract Internet traffic to make a profit by maintaining a website that appears to be affiliated with Complainant demonstrates Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005). The Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant points out that Respondent includes a disclaimer that states “NOTE: Acuvue Oasys is a registered trademark of Johnson & Johnson. We are not associated with Johnson & Johnson. Use of product names and images are strictly for independent price shopping comparisons only.” Complainant alleges that a visitor viewing the website would likely not see the disclaimer because it is small and is located in the middle of the site after a list of third-party retailers and is found on only one page of the website. The Panel finds that Respondent’s disclaimer does not relieve Respondent of a finding of bad faith registration and use under Policy ¶ 4(a)(iii) because such a disclaimer might not diminish consumer confusion on a website that appears to be affiliated with Complainant. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under [UDRP] ¶ 4(a)(iii)”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
Complainant claims that Respondent had actual and constructive knowledge of Complainant’s rights in the ACUVUE OASYS and ACUVUE marks at the time Respondent registered the <acuvueoasys.us> domain name. Complainant argues that its federal registrations service as constructive notice of Complainant’s rights and the fact that the resolving website contains Complainant’s marks, as well as the trade dress of Complainant’s products, demonstrates Respondent’s actual knowledge of the marks. The Panel denies a finding of bad faith registration based on constructive notice; however, because Respondent’s website contains numerous references to Complainant and its products and uses Complainant’s marks, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in its ACUVUE OASYS and ACUVUE marks under Policy ¶ 4(a)(i). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acuvueoasys.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 7, 2012
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