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Generic Top Level Domain Name (gTLD) Decisions |
Johnson & Johnson v. Rx USA
Claim
Number: FA0305000157288
Complainant is
Johnson & Johnson, New Brunswick, NJ (“Complainant”) represented
by Melissa L. Klipp, of Drinker Biddle & Reath LLP. Respondent
is Rx USA, Long Island City, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <rxusa-remicade-sales.com>, registered
with Intercosmos Media Group, Inc. d/b/a Directnic.Com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically May 9, 2003; the Forum
received a hard copy of the Complaint May
12, 2003.
On
May 9, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by
e-mail to the Forum that the domain name <rxusa-remicade-sales.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that
Respondent is the current registrant of the name. Intercosmos
Media Group, Inc.
d/b/a Directnic.Com verified that Respondent is bound by the Intercosmos Media
Group, Inc. d/b/a Directnic.Com
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
May 13, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 2, 2003, 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@rxusa-remicade-sales.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 June 13, 2003, The Forum received a timely filed Additional
Submission, filed pursuant to The Forum’s Supplemental Rule 7.
On
June 9. 2003, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<rxusa-remicade-sales.com>, is confusingly similar to Complainant’s
REMICADE mark.
2. Respondent has no rights or legitimate
interests in the <rxusa-remicade-sales.com> domain name.
3. Respondent registered and used the <rxusa-remicade-sales.com>
domain name in bad faith.
B. Respondent failed to submit a Response in this
proceeding but submitted a timely filed Additional Submission.
Complainant,
Johnson & Johnson, through its subsidiary company, Centocor, has rights in
the REMICADE mark. This mark was registered
on the Principal Register of the
U.S. Patent and Trademark Office on March 8, 2000 (U.S. Reg. No. 2,336,754).
Since 1998, the REMICADE
mark has been used in connection with prescription
drug treatment for Crohn’s Disease and Rheumatoid Arthritis. REMICADE is FDA
approved,
and since its approval some 230,000 patients have been treated with
REMICADE.
Respondent, Rx
USA, registered the <rxusa-remicade-sales.com> domain name on
December 30, 2002, but is not licensed or authorized to use Complainant’s
REMICADE mark for any purpose.
The disputed
domain name redirects Internet users to a web page entitled REMICADE and
displays a link that sends Internet users to
Respondent’s <rxusa.com>
domain name where those users can order REMICADE online. Respondent developed
the website connected
to the domain name for the purpose of soliciting
pharmaceutical orders.
Prior to its
registration of the disputed domain name, Respondent was party to a dispute
under the UDRP with Complainant over the
<remicade-chrons-disease.com>
domain name. In that decision, the disputed domain name was transferred to
Complainant. See Johnson & Johnson v. Rx USA, FA 112609 (Nat. Arb.
Forum June 13, 2002).
In its
Additional Submission, Respondent disavows a wrongful intent in registering the
domain name and asserts that it does not disparage
Complainant’s product and
mark but that it urges greater use of Complainant’s product by Respondent’s
sales.
Respondent did
not adequately address the issues of similarity in the domain name to
Complainant’s mark and does not suggest that
it has rights or interests in the
mark but asserts that it makes a bona fide use of the domain name.
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."
Although
Respondent did not submit a Response, the Panel considered the points set out
in Respondent’s Additional Submission, which
was timely filed. However, the mere denial by Respondent of
Complainant’s allegations does not give the Panel evidence to overcome
allegations by the
Complainant that are supported by extrinsic proof. The Panel shall decide this administrative
proceeding on the basis of Complainant's undisputed representations that are
supported
by evidentiary proof, pursuant to paragraphs 5(e), 14(a) and 15(a) of
the Rules and will draw such inferences from the submissions
of both parties
that the Panel 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 in this proceeding that it has rights and interests in the fanciful
REMICADE mark through registration of
the mark on the Principal Register of the
U.S. Patent and Trademark Office, as well as by widespread use of the mark in
commerce.
See Stork Restaurant v. Sahati, 166 F.2d 348,
76 U.S.P.Q. 374 (9th Cir. 1948) (greater degree of
protection given to fanciful marks than to names in common use); see also
Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 12
U.S.P.Q.2d 1091, 1098 (D. Minn. 1989) (quoting
treatise: "Fanciful marks, if adopted in a bona fide first use, are
considered the strongest of marks because their
inherent novelty creates a
substantial impact on the buyer's mind").
Respondent’s <rxusa-remicade-sales.com>
domain name is confusingly similar
to Complainant’s REMICADE mark. Respondent appropriates Complainant’s fanciful
mark in its domain
name, along with the words “rxusa” (Respondent’s trade- and
domain- name) and the generic word “sales.” Given the fanciful nature
of
Complainant’s mark and the fact that it is the dominant feature of the domain
name, the disputed domain name is confusingly similar
to Complainant’s mark. See
Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant
combined with a
generic word or term); see also Pfizer, Inc. v. Papol Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates
the VIAGRA mark in its entirety, and
deviates only by the addition of the word
“bomb,” the domain name is rendered confusingly similar to Complainant’s mark).
Accordingly, the
Panel finds that the <rxusa-remicade-sales.com> domain name is confusingly similar to
Complainant’s REMICADE mark under Policy ¶ 4(a)(i).
Complainant
established in this proceeding that it has legal rights in the REMICADE mark.
Complainant has expended great sums to develop
the product and the goodwill
associated with the product. Complainant also alleges that Respondent has no
rights or interests in
the mark and that Complainant has not given Respondent a
license to use the mark. Further,
Complainant sets out that Respondent has already had one domain name
transferred from it to Complainant. It was after Respondent
was found to have
no rights or legitimate interests in the <remicade-chrons-disease.com>
domain name that Respondent registered
the <rxusa-remicade-sales.com> domain name. As in the previously mentioned
decision, Respondent is using Complainant’s mark, without license, to sell both
Complainant’s
and other drug companies’ pharmaceutical products. Respondent’s
unauthorized use of Complainant’s mark is evidence that it has no
rights or
legitimate interests in the disputed domain name. See G.D.
Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002)
(finding Respondent’s use of the disputed domain name to solicit pharmaceutical
orders
without a license or authorization from Complainant does not constitute
a bona fide offering of goods or services under Policy ¶
4(c)(i)); see also
G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19,
2002) (finding that because Respondent is using the infringing domain name to
sell prescription
drugs it can be inferred that Respondent is opportunistically
using Complainant’s mark in order to attract Internet users to its
website).
This conclusion is bolstered by the fact that Respondent was aware that
it had no rights or legitimate interests in a domain name
that incorporated
Complainant’s mark by virtue of its previous dealings with Complainant under
the UDRP and also by the fact that
the Additional Submission that Respondent
filed failed to establish proof that Respondent has any such rights. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (holding where Complainant has asserted that Respondent has no rights or
legitimate interests
in respect of the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because
this information is “uniquely within the knowledge and control of the
respondent”); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no
legitimate interest in the domain names).
Respondent’s
Additional Submission sets out that Respondent has made a bona fide and
legitimate use of the domain name. Since
the domain name prominently displays Complainant’s REMICADE mark, Respondent is
using Complainant’s mark as a tool to attract
Internet users searching for
Complainant’s products. This is an
unauthorized use of the REMICADE mark designed to captivate part of
Complainant’s market. Respondent’s use
is not in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it does not
represent a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
Nat’l Collegiate Athletic Ass’n v.
Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to
sell Complainant’s goods without Complainant’s authority, as
well as others’
goods is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001)
(finding that use of Complainant’s mark to sell Complainant’s perfume, as well
as other brands of
perfume, is not bona fide use); see also MBS
Computers Ltd. v. Workman, FA
96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interests when Respondent is using a domain name identical
to Complainant’s
mark and is offering similar services).
Respondent
has no affiliation with Complainant and is not a pharmacy that is authorized to
use Complainant’s REMICADE mark to promote
its business. The Panel knows Respondent only by the
information provided or as RX USA International. Respondent has not come
forward to establish
that it is commonly known by the <rxusa-remicade-sales.com>
domain name. Therefore, Respondent
has no rights or legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the <rxusa-remicade-sales.com>
domain name under Policy ¶
4(a)(ii).
Complainant
alleges that Respondent acted in bath faith in registering and using a domain
name that is confusingly similar to a mark
in which Complainant has legal
rights. Respondent concedes that it uses the disputed domain name to solicit
prescription drug orders.
Unauthorized use of another’s fanciful mark to sell
both Complainant’s and other pharmaceutical companies’ products, creates a
likelihood
of confusion in the minds of Internet users for commercial gain.
Respondent’s activities therefore evidence bad faith use and registration
of
the disputed domain name pursuant to Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website
where
it solicited pharmaceutical orders); see also Pfizer, Inc. v. Internet
Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding Respondent “was
aware of and had knowledge of” Complainant’s mark when registering the
domain
name because Complainant’s mark was a coined arbitrary term with no meaning
apart from Complainant’s products).
Despite Respondent’s established
knowledge of Complainant’s rights in the REMICADE mark, Respondent registered a
domain name that
incorporates the mark in its entirety, which constitutes bad
faith registration. See Exxon
Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given
the world-wide
prominence of the mark and thus Respondent registered the domain name in bad
faith); see also Ty Inc. v. Parvin,
D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use
of an identical and/or confusingly similar domain
name was in bad faith where
Complainant’s BEANIE BABIES mark was famous and Respondent should have been
aware of it); see also Chanel,
Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that
Respondent's registration and use of the famous CHANEL mark suggests
opportunistic
bad faith).
Further, Respondent’s Additional Submission permits the
Panel to find that Respondent knowingly is making diversionary use of the
confusingly similar < rxusa-remicade-sales.com> domain
name. Such use also constitutes bad faith under Policy ¶ 4(b)(iv). Respondent is commercially gaining from the
established goodwill associated with the REMICADE mark by using the mark to
attract Internet
users to its website that solicits pharmaceutical orders. Respondent’s website will likely confuse
Internet users as to Complainant’s affiliation or sponsorship since the
REMICADE mark is
prominently displayed in the corresponding domain name. Thus, Respondent is using Complainant’s mark
in bad faith. See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding Respondent acted in bad faith by registering the
domain name <fossilwatch.com>
to sell various watch brands).
In addition, Respondent competes with Complainant in the
pharmaceutical industry because both parties distribute pharmaceutical
medication. As a competitor, Respondent
disrupts Complainant’s business by attracting consumers to its website by way
of using Complainant’s REMICADE
mark.
Therefore, the Panel finds that Respondent uses the domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). See
Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in
opposition to another and the context does not imply
or demand any restricted
meaning such as commercial or business competitor”); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).; see
also Nokia Corp. v. Uday Lakhani,
D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from
Respondent cellular phone dealer to Complainant).
The Panel thus
finds that Respondent registered and used the <rxusa-remicade-sales.com>
domain name in bad faith, and that
Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the < rxusa-remicade-sales.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 23, 2003.
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