national arbitration forum

 

DECISION

 

Johnson & Johnson v. Traffigo LTD

Claim Number: FA1010001350717

 

PARTIES

Complainant is Johnson & Johnson ("Complainant"), represented by Christen M. English of Drinker Biddle & Reath LLP, Washington D.C., USA.  Respondent is Traffigo LTD ("Respondent"), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <priligy.mobi>, <priligy-online.com>, <buy-priligy-online.com>, <mypriligy.com>, <buypriligyonline.com>, <onlinepriligy.com>, <priligybuy.com> and <priligynow.com>, registered with Godaddy.com, Inc.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2010; the National Arbitration Forum received payment on October 6, 2010.

 

On October 7, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <priligy.mobi>, <priligy-online.com>, <buy-priligy-online.com>, <mypriligy.com>, <buypriligyonline.com>, <onlinepriligy.com>, <priligybuy.com> and <priligynow.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2010 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@priligy.mobi, postmaster@priligy-online.com, postmaster@buy-priligy-online.com, postmaster@mypriligy.com, postmaster@buypriligyonline.com, postmaster@onlinepriligy.com, postmaster@priligybuy.com and postmaster@priligynow.com.  Also on October 11, 2010, the 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.

 

A timely Response was received and determined to be complete on October 13, 2010.

 

On October 22, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges trademark rights in the word PRILIGY and submits that the disputed domain names are confusingly similar to the trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and is using the disputed domain names in bad faith.

 

B. Respondent

A timely Response was filed but it did not address the Complaint or the Policy in any way.  Instead, Respondent reiterated its willingness to negotiate a sale price for the domain names.

 

FINDINGS

1.      Amongst other things, Complainant manufacturers and sells pharmaceuticals.

 

2.      Complainant coined the trademark PRILIGY in 2003. Complainant filed trademark applications for PRILIGY that same year.

 

3.      The trademark has been in use in many countries since February 2009.

 

4.  Respondent registered the disputed domain names in February 2009.

 

5.  Websites corresponding with the domain names promote the sale of other manufacturers’ products.

 

6.  On November 25, 2009, Complainant sent a cease and desist letter to Respondent and demanded that Respondent immediately transfer the disputed domain names to Complainant.

 

7.   Respondent replied to that letter the following day and indicated that Respondent “would be happy to sell you the domains at a fair price and transfer them accordingly.”  Respondent agreed to transfer the disputed domain names for $450.  After much vacillation, on August 5, 2010 Respondent indicated that instead of the agreed upon $450, it would only transfer the disputed domain names for $1,200.

 

8.  Complainant advised Respondent that it would rely on its Complaint and on the outcome of this Administrative Proceeding.

 

9.  Response consists of copies of the email correspondence between Complainant and Respondent outlined above, together with a willingness to transfer the disputed domain names per the original agreement, for the amount of $450.

 

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."  That said, the Forum is not in the business of brokering settlements between disputants, nor is the Panel empowered to impose conditional terms on the parties.  Accordingly, the willingness or otherwise of one of the parties to reach a commercial agreement is irrelevant to this arbitration.

 

Policy ¶ 4(a) 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.

 

Identical and/or Confusingly Similar

 

Policy ¶ 4(a)(i) requires a two-fold enquiry.  First, a threshold investigation of whether Complainant has rights in a trademark, followed by an assessment of whether the trademark and the domain names are identical or confusingly similar.

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

Complainant has rights in the trademark PRILIGY by virtue of its various trademark registrations.^[i]  The remaining enquiry is whether the domain names are identical or confusingly similar to the trademark.  In making that comparison it is broadly accepted that gTLDs can be disregarded as inconsequential.^[ii]  Panel decides that the domain name

<priligy.mobi> is legally identical to the trademark and that each of the remaining domain names is confusingly similar to Complainant’s trademark.  Each domain name takes the trademark as a whole and merely add the commonplace terms “online”, “buy”, “my” or “now”.[iii]

 

Accordingly, Panel finds that Complainant has established the first element under the Policy in relation to all disputed domain names.

 

Rights and Legitimate Interests

 

Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain names.  Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests.[iv] 

 

The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain names.  There is no evidence that Respondent has any trademark rights.  Complainant has stated there to be no relationship between it and Respondent.

 

Policy ¶ 4(c)(i) provides that a use is legitimate if, prior to commencement of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.

 

The disputed domain names resolve to websites that contain pay-per-click links to third-party websites promoting and offering for sale products that compete with Complainant’s products, or that are manufacturered or sold by Complainant’s competitors.  The Panel finds that Respondent’s use of the disputed domain names for such a purpose is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).[v]   Moreover, to the extent that there is any indication that those same websites are offering for sale relevant goods made and trademarked by Complainant, the Panel refers to the respected[vi] UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where it was held that to be bona fide within Policy ¶ 4(c)(i), the offering must meet several minimum requirements, being that:

 

-     Respondent must actually be offering the goods or services at issue;

-     Respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;

-     the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site;  and

-     Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

 

This Panel follows the majority view put forward in the Oki Data case that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits, amongst other things, the above criteria, and that this remains so even when there is no contractual relationship between the parties. In this case, Respondent is not confining its use of the disputed domain name to the resale of Complainant’s pharmaceuticals by reference to Complainant’s mark.  Instead, it is trading on Complainant’s mark to also promote the sale of third party products.

 

The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.  Respondent has made no submissions that it has no rights or interests in the domain names and has not discharged the onus which then fell to it and so Panel finds that Complainant has established the second limb under the Policy.

 

Registration and Use in Bad Faith

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii) and it follows from what has been said that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site. Pursuant to Policy ¶ 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of Policy ¶ 4(a)(iii).

 

The Panel therefore finds that Complainant has also established this third limb of its case.

 

DECISION

Having established all three elements required under the ICANN Policy in relation to each of the disputed domain names, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <priligy.mobi>, <priligy-online.com>, <buy-priligy-online.com>, <mypriligy.com>, <buypriligyonline.com>, <onlinepriligy.com>, <priligybuy.com> and <priligynow.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated: November 4, 2010