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Generic Top Level Domain Name (gTLD) Decisions |
Johnson & Johnson v. NA a/k/a Bryant
Smith
Claim Number: FA0208000122222
PARTIES
Complainant
is Johnson & Johnson, New
Brunswick, NJ (“Complainant”) represented by Melissa L. Klipp, of Drinker
Biddle & Shanley LLP.
Respondent is NA a/k/a Bryant Smith, Coral Springs, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <acuvue.net>,
registered with Network Solutions, Inc. d/b/a VeriSign, Inc.
PANEL
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 Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 22, 2002; the Forum received
a hard copy of the
Complaint on August 22, 2002.
On
August 26, 2002, Network Solutions, Inc. d/b/a VeriSign, Inc. confirmed by
e-mail to the Forum that the domain name <acuvue.net>
is registered with Network Solutions, Inc. d/b/a VeriSign, Inc. and that
Respondent is the current registrant of the name. Network Solutions, Inc. d/b/a VeriSign, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. d/b/a VeriSign,
Inc. 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
August 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
17, 2002 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@acuvue.net 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
October 7, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<acuvue.net> domain name is
identical to Complainant's ACUVUE mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent failed to submit a Response.
FINDINGS
Complainant registered its ACUVUE
trademark with the United States Patent and Trademark Office as Registration
Number 1,458,177 on
September 22, 1987, in relation to contact lenses. Complainant’s ACUVUE mark is recognized as
the number one brand of soft disposable contact lenses. In the United States, within the last 12
months, Complainant’s approximate net sales were $450 million. Complainant’s ACUVUE lenses are currently
sold in 70 countries worldwide. Complainant
spends tens of millions of dollars each year promoting its ACUVUE mark, and has
gained substantial goodwill and name recognition
among consumers and
opticians. Complainant also maintains a
significant presence on the Internet.
Complainant maintains a website at <acuvue.com> as well as
<acuvue.co.uk>, and <acuvue.co.kr>.
Respondent registered the disputed domain
name on June 28, 2002. Respondent does
not have a license from Complainant to use the ACUVUE mark. Respondent is using the disputed domain name
in order to divert Internet users to <floridadesigns.com>. This website advertises Complainant’s
website design and Internet marketing services. Respondent has registered other domain names that infringe on
trademark rights of others, such as <basfcorp.com>. When Complainant contacted Respondent,
Respondent told Complainant that “it would be fair to be compensated” for the
domain name and
eluded to the fact that it had received an offer for $400.
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.”
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
will draw such inferences as it considers
appropriate pursuant to paragraph
14(b) 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; 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.
Complainant established that it has
rights in the ACUVUE mark through continuous use and by registration of the
mark with the United
States Patent and Trademark Office.
Respondent’s <acuvue.net>
domain name is identical to Complainant’s ACUVUE mark because it incorporates
Complainant’s entire mark and merely adds the generic
top-level domain
“.net.” The addition of a top-level
domain name is irrelevant because it is a required part of any domain
name. Therefore, the addition of a top-level
domain does not detract from the fact that the most identifying part of
Respondent’s domain
name is identical to Complainant’s ACUVUE mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain
(gTLD) “.com” after the name POMELLATO is not
relevant); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1146 (9th
Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . .
assume, as a rule of thumb, that the domain name
of a particular company will
be the company name [or trademark] followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has failed to respond, and
therefore it is assumed that Respondent lacks rights and legitimate interests
in the disputed
domain name. When
Complainant asserts a prima facie case against Respondent, the burden shifts to
Respondent to show that it has rights or legitimate
interests pursuant to
Policy ¶ 4(a)(ii). Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which
could demonstrate any rights or legitimate interests in the
domain name); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in
respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate
interests in the domain name).
Furthermore, because Respondent has not
submitted a Response, it is appropriate for the Panel to accept all reasonable
allegations
in the Complaint as true. See
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”);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
to be deemed true).
Respondent is using the disputed domain
name in order to divert Internet users to its own unconnected website. Respondent is essentially using
Complainant’s famous mark as a vehicle to advertise its own business. Respondent diverts Internet users looking
for Complainant at <acuvue.net> to the <floridadesigns.com>
domain name. This type of use is not
considered to be in connection with 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). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet
traffic is not
a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by
using Complainant’s trademarks).
No evidence on record suggests that
Respondent is commonly known as ACUVUE or <acuvue.net> and
Respondent has not come forward with a Response to bring such evidence.
Therefore, Respondent has failed to provide any evidence
that it has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
Great
S. Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com>
where
Respondent linked the domain name to <bestoftheweb.com>).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has alluded to selling the
domain name to Complainant for a price that does not reflect its out-of-pocket
costs for maintaining
the disputed domain name. Respondent told Complainant that “it would be fair to
compensated,” and made a point to tell Complainant that it had received an
offer
for $400 from another party. The
registration of a domain name with the intent to rent, sell or transfer the
domain name registration is evidence of bad faith
registration and use under
Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the
domain name at issue to Complainant was evidence
of bad faith); see also
Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded,
are evidence of bad faith”).
Complainant has
presented evidence that Respondent has engaged in a pattern of registering
domain names that infringe on the marks
of others. The registration of more than one domain name that infringes on
the marks of others is considered to be a pattern of bad faith behavior
and
therefore evidence of bad faith registration and use pursuant to Policy ¶
4(b)(ii). See
Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain
names which infringe upon
others’ famous and registered trademarks); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution
May 3, 2000) (finding that, where Respondent registered many domain names, held
them hostage, and prevented
the owners from using them, the behavior
constituted bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby
GRANTED.
Accordingly, it is Ordered that the
domain name <acuvue.net> be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 21, 2002.
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