Generic Top Level Domain Name (gTLD) Decisions

Complainant is Johnson & Johnson, New Brunswick, NJ, USA ("Complainant") represented by Norm St. Landau, of Drinker Biddle & Reath LLP. Respondent is Andrew Guion, Charlotte, NC, USA ("Respondent").

The domain name at issue is "depuyace.com" registered with Network Solutions, Inc.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 17, 2001; the Forum received a hard copy of the Complaint on February 15, 2001.

On February 21, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "depuyace.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 21, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@depuyace.com by e-mail.

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 April 2, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Carolyn Marks Johnson 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." 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 name be transferred from Respondent to Complainant.

A. Complainant urges that

B. Respondent, as previously noted, did not submit a Response.

Complainant owns a United States trademark registration, No. 1,166,357, for the mark DEPUYACE.

Respondent registered the domain name in issue on October 14, 1999 but has not as yet used the domain name.

Respondent is a former employee of Complainant’s wholly owned subsidiary, Depuy Inc.

Respondent received no authorization or license from Complainant to use the DEPUYACE or DEPUY marks. Respondent is currently in the business of selling a range of medical products that are manufactured by numerous companies.

Complainant contacted Respondent and offered $100 as reimbursement for his registration expenses in exchange for transferring the domain name to Complainant. Respondent rejected Complainant’s $100 offer. Respondent declared that the domain name <orthopaedic.com> sold for $100,000 and that while the "depuyace.com" might not be worth $100,000, it was certainly worth more than $100. Respondent then suggested that he would transfer the domain name if Complainant extended Respondent’s post-termination compensation that Respondent was receiving after leaving his job with Complainant’s company.

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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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;

(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.

There are two requirements that a Complainant must establish under paragraph 4(a)(i) of the UDRP—that Complainant has rights in a trade or service mark and that the domain name is identical or confusingly similar to the marks. Complainant provided evidence of United States registration for its DEPUYACE mark. The Complainant – as registered proprietor of the mark DEPUYACE – has established the first requirement of this paragraph.

The second requirement of Policy ¶ 4(a)(i) requires the domain name to be identical to or confusingly similar to a Complainant’s mark. The domain name at issue is identical to Complainant’s registered mark. The addition of the hyphen is an immaterial difference. See Just Jeans Group Ltd. v. Domain Trade, D2000-1821 (WIPO Feb. 16, 2001) (finding that "[t]he addition of the hyphen (in the domain name <just-jeans.com>) is an immaterial difference" when making a finding under Policy ¶ 4(a)(i)).

Thus, the Panel finds that Complainant has shown that it has rights in a trademark, and that the domain name is identical to and confusingly similar to this mark. Policy 4(a)(i).

Complainant submits that Respondent has no rights or legitimate interests in the domain name. The fact that Respondent has not made a bona fide or legitimate use of the domain name permits an inference that Respondent is holding the name for the sole purpose of selling it to Complainant in exchange for a substantial purchase price that is far in excess of the expected reasonable expenses for registering a domain name. This is not a legitimate or fair use of a domain name. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling the domain name); Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant).

The Panel finds that Complainant has shown that it has rights to and legitimate interest in the mark contained within this domain name and that Respondent has not shown rights to or legitimate interests in it. Policy 4(a)(ii).

Complainant submits that Respondent registered and is attempting to use the domain name in bad faith. Respondent refused to transfer the domain name absent increased compensation from Complainant. Respondent demonstrated his bad faith in registering a domain name that Respondent knew contained a mark held by Complainant, which was Respondent’s former employer. Respondent then demonstrated additional bad faith by using the domain name to barter with Complainant in exchange for increased post-employment compensation.

Policy ¶ 4(b)(i) sets out one of the circumstances evidencing bad faith registration and use of a domain name: evidence that the Respondent acquired the domain name primarily for the purpose of selling, renting, or transferring the domain name to the trade mark owning Complainant. The circumstances show that Respondent registered the domain name with the intent of selling it to Complainant as set forth in paragraph 4(b)(i).

In addition, there are other circumstances of bad faith evident in this case. Respondent is Complainant’s former employee. It is apparent that Respondent knew of Complainant’s trademarks and company name when he registered the domain name. The proof permits the inference that Respondent registered the domain name to deprive his former employer of the privilege of using its registered trademark in a domain name. See William Hill Organization Ltd. v. Fulfillment Management Services Ltd., D2000-0826, (WIPO Sept. 17, 2000) (finding bad faith registration and use (even though no pattern of conduct existed) where "Respondent’s employee must have had the Complainant’s trademarks in mind when choosing the disputed domain name and that the Respondent‘s interest was to deprive the Complainant of the opportunity to reflect its mark in that name until the registration expired").

Further, Respondent has made no use of the domain name since registering it in October of 1999. Passive holding of a domain name for such an extended period of time may also constitute evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith").

The Panel therefore finds that Respondent registered and attempted to use the domain name in bad faith. Policy 4(a)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name "depuyace.com" be transferred from Respondent to Complainant.