Johnson & Johnson v. Vladimir Michalkov
Claim Number: FA1206001450702
Complainant is Johnson & Johnson (“Complainant”), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington, D.C., USA. Respondent is Vladimir Michalkov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <risperdal-medb.com>, registered with ENOM, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payment on June 26, 2012.
On June 27, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <risperdal-medb.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 June 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2012 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@risperdal-medb.com. Also on June 27, 2012, 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 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 Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant owns numerous trademark registrations and applications for its RISPERDAL mark including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,830,761 registered April 12, 1994) and Russia’s Federal Service for Intellectual Property (“RFSIP”) (Reg. No. 523,165 registered April 7, 1988).
2. Respondent registered the <risperdal-medb.com> domain name on November 23, 2011, which is 18 years after Complainant’s first registration for the RISPERDAL mark.
3. Respondent’s <risperdal-medb.com> domain name resolves to a site purporting to sell the generic version of the drug RISPERDAL.
4. Respondent’s resolving website also lists for sale third-party products for health conditions unrelated to Complainant’s product and provides unsupported information regarding related and unrelated health conditions.
5. Respondent has not licensed or consented to Respondent’s use of the RISPERDAL mark.
6. Respondent is not commonly known by the RISPERDAL mark.
7. The <risperdal-medb.com> domain name is confusingly similar to Complainant’s RISPERDAL mark.
8. The <risperdal-medb.com> domain name incorporates Complainant’s RISPERDAL mark in its entirety with the additions of a dash and the term “medb,” as well as the generic top-level domain (“gTLD”) “.com.”
9. Respondent has no legitimate rights or interests in the <risperdal-medb.com> domain name.
10. Respondent’s use of the <risperdal-medb.com> domain name to promote products that compete with Complainant is not a legitimate non-commercial fair use or a bona fide offering of goods or services.
11. Respondent registered the <risperdal-medb.com> domain name in bad faith.
12. Respondent had notice of Complainant’s rights in the RISPERDAL mark.
13. Respondent is passing off the generic version of Complainant’s brand as the genuine version.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights to its RISPERDAL mark.
2. Respondent’s <risperdal-medb.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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."
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 alleges it has rights in its RISPERDAL mark under Policy ¶ 4(a)(i) due to its trademark registrations with the USPTO (Reg. No. 1,830,761 registered April 12, 1994) and RFSIP (Reg. No. 523,165 registered April 7, 1988). In the past, panels have found that evidence of a trademark registration with the USPTO satisfies the requirement of demonstrating right in a given mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”). Based on Complainant’s USPTO and RFSIP trademark registrations, the Panel finds that complainant has established rights in its RISPERDAL MARK pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <risperdal-medb.com> domain name is confusingly similar to Complainant’s RISPERDAL mark. Complainant claims that Respondent’s <risperdal-medb.com> domain name incorporates Complainant’s RISPERDAL mark in full with the additions of a dash, the term “medb,” and the (“gTLD”) “.com.” Complainant further explains that using the term “medb” is confusing in itself because “med” is short for medication and is often used when referring to pharmaceutical preparations. Previous panels have agreed that variations such as those discussed above are insufficient to distinguish a disputed domain name from a given trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Based on this analysis, the Panel finds that Respondent’s <risperdal-medb.com> domain name is confusingly similar to Complainant’s RISPERDAL mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant maintains that Respondent is not commonly known by the <risperdal-medb.com> domain name under Policy ¶ 4(c)(ii). Complainant claims that the WHOIS record for the <risperdal-medb.com> disputed domain name lists “Vladimir Michalkov” as the registrant. Complainant also states that it has not licensed or otherwise authorized Respondent to use or register the RISPERDAL mark. The Panel determines that there is no connection between Respondent and the <risperdal-medb.com> domain name or complainant’s RISPERDAL mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name for the purpose of 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)l; see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Further, Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is using the <risperdal-medb.com> disputed domain name to resolve to a site passing off generic pharmaceutical preparations as Complainant’s RISPERDAL products, as well as selling third-party pharmaceuticals for unrelated medical conditions. Complainant continues by alleging that Respondent’s promotion of products that compete with Complainant is not a legitimate non-commercial fair use or a bona fide offering of goods or services under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). Complainant also states that Respondent’s resolving site implies a relationship with Complainant because the website purports to provide medical information about a medical condition that Complainant’s RISPERDAL product treats. Prior panels have found using a confusingly similar domain name to sell products in competition with Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”) Based on Complainant’s contentions and previous UDRP cases, the Panel finds that Respondent’s use of the disputed domain name to sell products competing with Complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent is using the <risperdal-medb.com> disputed domain name in bad faith by disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). Complainant argues that Respondent is passing off the generic version of Complainant’s brand name pharmaceutical preparations as the original, as well as selling third-party unrelated products, thereby disrupting Complainant’s business by diverting confused customers to Respondent’s <risperdal-medb.com> website. Previous panels have found that, when a respondent uses a confusingly similar domain name to divert Internet users to a site featuring competing products for the purpose of disrupting a complainant’s business, such a use constitutes bad faith registration and use in accordance with Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). The Panel therefore, finds that Respondent registered and uses the <risperdal-medb.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant alludes to the fact that Respondent is financially profiting from its resolving <risperdal-medb.com> website, which Complainant claims demonstrates bad faith in accordance with Policy ¶ 4(b)(iv). Complainant contends that Respondent does this by offering generic versions of Complainant’s products, as well as third-party products, and is thereby commercially profiting. The Panel notes that Respondent uses a confusingly similar domain name to attract Internet users to its site. Typically, panels have found bad faith registration and use under Policy ¶ 4(b)(iv) when a respondent registers a confusingly similar domain name containing Complainant’s mark in order to attract consumers to a website offering competing products in order to profit from the confusion. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”) Thus, the Panel finds that Respondent registered and uses the <risperdal-medb.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) when attracting consumers and financially profiting from the confusion between the disputed domain name and registered mark.
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the RISPERDAL mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). 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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <risperdal-medb.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 8, 2012
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