Johnson & Johnson v. Pedro Silva / Janssen / John Underwood / JANSSEN BIOLOGICS / Server Group
Claim Number: FA2201001979969
Complainant is Johnson & Johnson (“Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, USA. Respondent is Pedro Silva / Janssen / John Underwood / JANSSEN BIOLOGICS / Server Group (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online>, registered with GoDaddy.com, LLC; Sav.com, LLC; eNom, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2022; the Forum received payment on January 11, 2022.
On January 12, 2022; January 13, 2022, GoDaddy.com, LLC; Sav.com, LLC; eNom, LLC confirmed by e-mail to the Forum that the <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, <janssen-johnson-johnson.online> domain names are registered with GoDaddy.com, LLC; Sav.com, LLC; eNom, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Sav.com, LLC; eNom, LLC has verified that Respondent is bound by the GoDaddy.com, LLC; Sav.com, LLC; eNom, LLC 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 January 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2022 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@janssen-johnson-johnson.com, postmaster@janssen-johnson-johnson.info, postmaster@janssen-johnson-johnson.online. Also on January 19, 2022, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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" 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 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the instant dispute are similarly constructed since each domain name contains the unique string “janssen-johnson-johnson” as its second-level. Additional, multiple online blogs have referred to each of the three at-issue domain names in a single post. Furthermore, all three of the domain names were registered in 2021 ‑two within the same month.
Thus, while their underlying registrants may nominally differ the at-issue domain names seem to be related to, or controlled by, the same person, persons, or entity. Significantly, Complainant’s contention that the domain names’ registrants are one and the same and thus should be treated as such is unopposed ‑not one of the nominal respondents has filed a response to Complainant’s complaint.
In light of the foregoing, the Panel will treat the at-issue domain names’ registrants as a single entity for the purposes of this proceeding. The nominal registrants will be collectively referred to as Respondent.
A. Complainant
Complainant contends as follows:
Complainant is the world’s largest and most broadly based healthcare company.
Complainant has rights in the JOHNSON & JOHNSON and the JANSSEN marks through its registration of such marks with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online> domain names are confusingly similar to Complainant’s JOHNSON & JOHNSON and the JANSSEN marks. Respondent incorporates the marks in their entirety adding hyphens and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online> domain names as Respondent is not commonly known by the at-issue domain names nor did Complainant authorize Respondent to use the JOHNSON & JOHNSON and the JANSSEN marks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s uses the at-issue domain names to fraudulently advertise sale of products associated with Complainant’s business.
Respondent registered and used the <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online> domain names in bad faith as Respondent fraudulently advertises sale of products associated with Complainant’s business. Respondent also had actual knowledge of Complainant’s rights in the JOHNSON & JOHNSON and the JANSSEN marks due to the longstanding use and fame of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JOHNSON & JOHNSON and the JANSSEN trademarks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the JOHNSON & JOHNSON and the JANSSEN trademarks.
Respondent used the at-issue domain name to fraudulently advertise the sale of healthcare products associated with Complainant’s business.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has USPTO trademark registrations for its JOHNSON & JOHNSON and JANSSEN trademarks. Respondent’s national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online> domain names each contain Complainant’s JOHNSON & JOHNSON trademark less its domain name impermissible spaces. The mark’s ampersand, also a domain name impermissible character, is everywhere replaced with a hyphen. Each domain name also contains Complainant’s JANSSEN trademark. A hyphen separates the two marks and the domain names conclude with either the top-level name “.com,” “.info,” or “online.” The differences between Respondent’s domain names and Complainant’s trademarks are insufficient to distinguish any at-issue domain name from Complainant’s trademarks under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online> domain names are each confusingly similar to both JOHNSON & JOHNSON and JANSSEN. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of a complainant’s marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)), see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names does not identify any domain names’ nominal registrant by a name that is suggestive of one of the at-issue domain names and the record before the Panel contains no evidence that tends to prove that any of the nominal registrants is commonly known by one of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, or <janssen-johnson-johnson.online> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain names to fraudulently advertise the sale of health products associated with Complainant business. Respondent’s use of the at-issue domain names in this manner indicates neither a bona fide offering of goods or services nor legitimate noncommercial or fair use of the domain names per Policy ¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
Given the forgoing and absent any contrary evidence from Respondent or otherwise, Complainant satisfies its initial burden and conclusively shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests Respondent uses the at-issue domain names to fraudulently advertise the sale of health products associated with Complainant business. Respondent’s use of the confusingly similar domain names to trade on Complainant’s marks and facilitate fraud indicates Respondent’s bad faith registration and use of such domain names under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Additionally, Respondent had actual knowledge of Complainant’s rights in the JOHNSON & JOHNSON and JANSSEN trademarks when it registered <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online> as domain names. Respondent’s actual knowledge is evident from the worldwide notoriety of Complainant and its trademarks; from the fact that Respondent registered three domain names each containing two of Complainant’s trademarks; and from Respondent’s use of the domain names to impersonate Complainant in furtherance of fraud. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Respondent’s registration of three at-issue confusingly similar domain names with knowledge of Complainant’s trademark rights therein further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <janssen-johnson-johnson.com>, <janssen-johnson-johnson.info>, and <janssen-johnson-johnson.online> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 15, 2022
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