Generic Top Level Domain Name (gTLD) Decisions

Johnson & Johnson
COMPLAINANT,

vs.

Ethnor.com
RESPONDENT.

DECISION
Claim Number: FA0005000094862

PARTIES

The complainant is Johnson & Johnson, New Brunswick, NJ, USA (“Complainant”). The respondent is Ethnor.com, whose address is given as 4160 Harlem Road, Amherst, NY, 14226 ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is "ETHNOR.COM", registered with NameSecure.com

PANELIST(s)   Robert R. Merhige, Jr.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“The Forum”) electronically on 05/19/2000; The Forum received a hard copy of the Complaint on the same date.

On June 12, 2000. NameSecure.com confirmed by e-mail to The Forum that the domain name “ETHNOR.COM", “ is registered with NameSecure.com and that the Respondent is the current registrant of the name.

On the date of May 23, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On June 12, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On June 26, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the undersigned, Robert R. Merhige, Jr., as Panelist.

Having reviewed the communications records in the case file, the undersigned, as the Administrative Panel (“the Panel”) concludes that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."   Accordingly, 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 undersigned, as the Panel, deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

Complainant seeks relief, citing that it owns and holds rights to the mark “Ethnor,” and seeks transfer of the registration of the domain name “Ethnor.com” to Johnson & Johnson, Complainant herein.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it owns and holds exclusive rights to the mark “Ethnor,” and that the Respondent registered “Ethnor.com” for the sole purpose of selling it to the Complainant, and further that Respondent’s use and registration thereof was unauthorized and its unjustified use of the domain name in issue constitutes bad faith and compels the cancellation of the domain name and the transfer to the Complainant as the lawful owner.

B. Respondent

Respondent, having failed to respond to the Complaint herein, is accordingly in default.

FINDINGS

The uncontradicted evidence establishes that the Respondent registered “ETHNOR.COM” for the purpose of selling it to the Complainant, who holds rights to an identical trademark as well as owning a company by that name, or for selling it to a third party.  The record reflects that Ethnor Ltd. is a wholly owned subsidiary of the Complainant, Johnson & Johnson.  The company was formed for the purpose of manufacturing, importing, exporting, buying and selling pharmaceuticals and has operated under the name Ethnor Ltd. since June 5, 1968.

Complainant’s rights to the Ethnor mark are evidenced by in excess of 20 trademark registrations throughout the world.  Ethnor Ltd., Complainant’s subsidiary, has operated under that name continuously for in excess of 30 years and its predecessor has been incorporated since June 24, 1950.  In 1994 Ethnor Ltd., which had operated as a separate subsidiary of the Complainant, was merged with the Complainant.  As evidenced by the multitude of registrations throughout the world and the long-lasting and continuous use, the Ethnor mark has become famous in the pharmaceutical trade and beyond.  The evidence supports a finding, as I do now, that Respondent has no right or legitimate interest in the domain name in issue.

The evidence reflects that on or about January 30, 2000, Respondent addressed a letter to the Vice President of Ethnor Ltd. advising that company that Respondent had reserved the domain name www.Ethnor.com.  In that letter Respondent offered to sell the domain name for a specific sum and went on to relate that if Ethnor Ltd. was not interested in purchasing it, it would proceed to auction it on the worldwide web.  This offertory letter of Respondent advised Complainant that if it did not purchase it, it would run the risk that the domain name would be sold and might be used in connection with pornographic material and several other threatening suggestions, all of which satisfies the undersigned of the Respondent’s bad faith, and I so find.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be cancelled or transferred:

(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the 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.

The record reflects that there is no question but that the domain name in issue is identical to Complainant’s mark and that the Respondent has no rights or legitimate interest in respect of that name.  There is no doubt in the mind of the undersigned that the domain name had been registered and was being used in bad faith as evidenced by the communication from a representative of the Respondent to the Complainant dated January 30, 1999, to which the undersigned has already made reference.

In addition to that which the undersigned has heretofore made reference, Respondent’s veiled threats, which are patently obvious, reflects not only Respondent’s purpose of registering the domain name to which it has no right or title, but was intended to be used as a weapon to extract from Complainant sums of money well in excess of the usual cost of registering a domain name.

DECISION

Based on the above stated findings and pursuant to Paragraphs 4(i), (ii) and (iii) of ICANN’s Uniform Domain Name Dispute Policy, it is ORDERED as follows:

That the domain name Ethnor.com be forthwith transferred to the Complainant.

The undersigned certifies that he has acted independently and has no known conflict in serving as the arbitrator in this proceeding.

Dated:  June 27, 2000
Honorable Robert R. Merhige, Jr, Retired Judge, Arbitrator