DECISION

Johnson & Johnson v. Tomato Pages Website Production Services

Claim Number: FA0306000162058

PARTIES

Complainant is Johnson & Johnson, New Brunswick, NJ (“Complainant”) represented by Norm D. St. Landau and Heather M. Hughes, of Drinker Biddle & Reath LLP.  Respondent is Tomato Pages Website Production Services, Potomac, MD (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Assoc., PC.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <johnsons.com>, registered with Network Solutions, Inc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 8, 2003; the Forum received a hard copy of the Complaint on June 9, 2003.

On June 12, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <johnsons.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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@ johnsons.com by e-mail.

On June 27, 2003, Respondent requested an extension for the filing of its Response. The Forum granted the extension and extended the deadline to July 14, 2003.

A late Response was received and determined to be complete on July 15, 2003.

Complainant submitted an Additional Submission on July 21, 2003, which complied with the Forum’s Supplemental Rule 7.

On July 24, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the Complaint concerns the Respondent’s bad faith registration and use of a domain name nearly identical to Johnson & Johnson’s registered, famous, and distinctive marks.  The Respondent is profiting from its misuse of the famous JOHNSON’S® marks by using the <johnsons.com> domain name to redirect Internet users to a variety of pop-up advertisements, and by ransoming the domain name to Johnson & Johnson. Complainant also contends as follows:

· Johnson & Johnson owns and holds the rights to the JOHNSON’S® marks.  Hundreds of millions of dollars of products have been sold under the JOHNSON’S® marks worldwide.  Moreover, Johnson & Johnson has invested hundreds of millions of dollars into producing and promoting the JOHNSON’S® line of products.

· On or about October 29, 2002, in blatant disregard of Johnson & Johnson’s rights in the JOHNSON’S® marks, the Respondent registered the domain name <johnsons.com>. The domain name <johnsons.com> is confusingly similar and nearly identical to Complainant’s JOHNSON’S® marks.

· Respondent has no connection or affiliation with Johnson & Johnson, and has received no license or consent, express or implied, to use the trademarks in a domain name or in any other manner.

· The <johnsons.com> domain name redirects Internet users to at least six different pop-up advertisements for a variety of companies, including: NetZero Internet services, domain name registrations at VeriSign.com, FireHunt Web portal, term life insurance, Ninja wireless video camera, and PC optimization software.

· On May 13, 2003, Rich Harrison, a domain name broker, contacted Johnson & Johnson’s Consumer Products Company division on behalf of Respondent, and stated that the <johnsons.com> domain name was for sale.  He later stated that he represented the owner of the domain name--Logoit Com located in Jackson, Mississippi.   Mr. Harrison stated that his client demanded one million dollars for the <johnsons.com> domain name.

· Respondent is not known by and has no rights or legitimate interests in the <johnsons.com> domain name.

· Respondent is not a licensee of the Complainant, nor can Respondent show that it has rights in the marks or is otherwise authorized to use the marks.

· Respondent has no legitimate interests in the <johnsons.com> domain name and has not lawfully used the marks to offer goods or services prior to notice of the dispute.

· Respondent’s actions are an attempt to interfere with Complainant’s online identity and to prevent Complainant from owning the domain name.

· Respondent’s choice of a confusingly similar variation of Complainant’s widely famous marks supports a finding of a lack of rights or legitimate interests.

· Respondent knew of Complainant’s widely famous trademarks when it registered the domain name.

· Respondent’s use of a broker to attempt to ransom the domain name to Complainant for one million dollars is in bad faith.

· Respondent boldly asserts that it is entitled to retain the <johnsons.com> domain name because it utilizes the domain name on behalf of its client, Johnson’s Flower and Garden Center.  Response at 5.   But according to the principal of Johnson’s Flower and Garden Center, the company never had a firm relationship with Respondent because Respondent “could not get it together.”

· Respondent never created an operational Web site for Johnson’s Flower and Garden Center.

· Respondent’s act of registering and retaining a domain name in Respondent’s name for a client it never actually had is blatant bad faith.  Respondent has had no contact with Johnson’s Flower & Garden Shop for more than five years.

· Complainant requests that the Panel issue a decision that the registration of <johnsons.com> be transferred to Complainant, Johnson & Johnson.

B. Respondent

Respondent contends that the Respondent in this dispute is a limited liability company established in 1997 for the purpose of providing website development and management services (Exhibits B & J).  One of the clients of Respondent as early as 1997 was JOHNSON’S FLOWER AND GARDEN CENTER, a business which operated from several locations throughout the Greater Metropolitan Washington, DC area since 1933. Respondent also contends as follows:

· On the same day of May 28, 2003, two incidents occurred: (1) Respondent received an anonymous untraceable e-mail asking if he was interested in selling the domain name <johnsons.com> (Exhibit G) and (2) Complainant received an anonymous, untraceable e-mail asking if Complainant was interested in buying the domain name <johnsons.com> (as Complainant describes in the Complaint).

· Respondent denies any association or knowledge of the “domain name broker’s” activities  (Exhibit J).  Although Complainant attempts to allege that the “domain name broker” was an agent of Respondent, sufficient proof is not provided to prove “bad faith” on the part of Respondent that can justify the taking-away of Respondent’s valuable domain name.

· Although Complainant has a registered trademark for the generic word JOHNSONS for certain limited products, Complainant does not necessarily have any enforceable rights under the UDRP Policies.

· Complainant has also failed to sustain its burden of proving that Respondent did not have any legitimate interest in the domain names.  Complainant only makes some unsupported statements that do not relate to the issue of the Respondent’s “legitimate interest in the domain name” for purposes of the UDRP.

· JOHNSON’S FLOWER AND GARDEN CENTER, the Respondent’s client, for whom Respondent was acting as agent, certainly was known by the word “JOHNSON’S”, its name, in which it had acquired common-law trademark rights over an extended period of time

· Respondent has, in fact, utilized the domain name lawfully to market the products and services of JOHNSON’S FLOWER AND GARDEN CENTER.

· Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the domain name. 

· Respondent does, in fact, have rights in the domain name for purposes of Paragraph 4(a)(ii) since Respondent has engaged in the “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”

· Respondent has used the domain name for many years for the conducting of substantial business activity for many years.

· Respondent has not only prepared to utilize the domain name, but has also engaged in considerable active use of the domain name in connection with its bona fide business activities.

· Neither Respondent, his company, his business activities nor any of his associates have had any intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark.

· Neither Respondent, his company, his business activities nor any of his associates have registered the domain name in question in order to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name, (and neither he, his company, his business activities nor any of his business activities have engaged in a pattern of such conduct).

· In situations such as the instant situation, UDRP decisions have held that when no proof of bad faith is presented by the Complainant, the Complainant fails to establish the element of bad faith. 

· There has not been any conclusive evidence presented by Complainant to show one of the listed circumstances or any other circumstance of bad faith. Therefore, the Complainant has failed to establish this required element.  Complainant has failed to prove that there was bad faith both at the time of registration and in the current use of the domain names.

C. Additional Submissions

Complainant submitted a Supplemental Statement that was considered by the Panel.

FINDINGS

The Complainant’s mark and the at-issue domain name <johnsons.com> are confusingly similar.

Complainant has rights to the mark Johnson’s and such mark may be a famous mark.

Complainant’s evidence of Respondent’s offering to sell the domain name to Complainant via an unnamed and undisclosed agent is given no weight. The statements made in the e-mail from Rich Harris to Gary Appelbaum were self-serving. There is no independent evidence showing that the author of the e-mail was acting as Respondent’s agent.

 

There is no indication that Respondent has had any relationship, business or otherwise, with Johnson’s Flower since at least January 1999.

The domain name <johnsons.com> was not originally registered in bad faith.

Respondent’s renewal or reregistration of the domain name is irrelevant to Policy ¶ 4(a)(iii).

DISCUSSION

            Preliminary Matters:

The Response was received one (1) day after the required deadline as proscribed by UDRP Rule 5(a).  Therefore, the Panel may choose to disregard Respondent’s deficient Response.  See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an adequate timely filed Response, all reasonable inferences of fact in the allegations of the Complaint will be taken as true).

Despite its deficiency, the Panel decides to consider Respondent’s untimely Response.  See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a Response which was one day late, and received before a Panelist was appointed and any consideration made); see also Korg, U.S.A., Inc. v. Dutton d/b/a Sunset Strip Broad. Co., FA 102490 (Nat. Arb. Forum Feb. 25, 2002) (noting that as “this Panel cannot find exceptional circumstances in any of the Respondent’s reasons for the untimely filing, The Forum’s decision regarding the untimely filing of the Response and request for a three-member panel is upheld. . . [e]ven though the Respondent’s Response and Additional Response were not timely filed, in an effort to exercise judicial discretion, this Panel reviewed both documents as if in fact they had been timely filed”). 

The untimely filing does not appear to be made for the purpose of delay and is justified given Respondent’s counsel’s extraordinary health related circumstances. Importantly, the acceptance and consideration of the Respondent’s untimely filing does not prejudice the Complainant. On the other hand, ignoring the Response would prejudice the Respondent and unfairly cause it to default in this proceeding.

The Panel notes that the Response is three (3) pages over the maximum page limit as outlined by the Forum’s Supplemental Rule #5(a) in accord with UDRP Rule 5(b)(i).  In light of its deficiencies, the Panel may decide not to consider Respondent’s submission.  See Schott Glas v. Necschott, D2001-0127 (WIPO March 14, 2001) (choosing not to consider the Response in light of formal deficiencies). Nevertheless, the Panel will consider Respondent’s deficient Response.  See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that "[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process"). Here again, there is no material prejudice to the Complainant and any advantage gained by permitting the additional pages is discounted by the fact that Complainant replies to the Response via a lengthy Supplemental Statement.

Substantive Discussion:

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Identical and/or Confusingly Similar

Complainant has provided evidence to establish its rights in the JOHNSON’S marks through registration of the mark with the USPTO and continuous use of the mark in commerce since 1887.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).  Complainant’s mark is thus confusingly similar to the at-issue domain name for the purpose of this proceeding. 

Rights or Legitimate Interests

Complainant’s marks and the name listed in the WHOIS contact information for the disputed domain name supports Complainant’s argument that Respondent is not commonly known by the <johnsons.com> domain name.  See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003). Likewise and with greater force, Respondent accepts that it was, and is, not commonly know as “johnsons.” 

However, this does not end our inquiry. Respondent urges that because it acted as an agent for JOHNSON’S FLOWER AND GARDEN CENTER (hereinafter Johnson’s Flower) who did have legitimate rights or interests in the at-issue domain name, it too has a right to use the domain name. For the purpose of discussion we have assumed that Johnson’s Flower would have rights in the domain name had it registered <johnsons.com> itself.  Accordingly, whether or not Respondent had rights or legitimate interests in the at-issue domain name turns on whether or not Respondent acts as an agent for one with rights/interests in the domain name. 

Complainant argues in its Supplemental Statement that Respondent’s Exhibit D implies there was no intent on the part of Johnson’s Flower to have Respondent register the domain name on its behalf. While the argument appears to have some merit, its validity is not necessary to show that Respondent currently lacks rights or interests in the domain name. Even if  Respondent was acting on behalf of Johnson’s Flowers in or about April 1997, there is no showing that Respondent currently acts as Johnson’s Flower’s agent.  Consistent with this observation, Complainant has demonstrated that Johnson’s Flower currently maintains a website using another domain name <johnsonsflorists.com>, as its URL. 

Respondent argues that it made preparations to use the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(a)(ii).  To wit, Respondent offers evidence that it entered into an agreement with Johnson’s Flower in or about April of 1997, to produce a website supporting Johnson’s Flower’s business interests. As elaborated elsewhere, the intent to produce a website or even the production of a website 5 or 6 years ago is not relevant to the issue of whether or not the Respondent has current rights or interests in the at-issue domain name.

Respondent argues that its legitimate interest is not diminished if a web site is not yet activated because there is no obligation to immediately begin operating a website upon registering. The argument is misplaced. See PROM Software, Inc. v. Relex Publishing, Inc. D2001-1154 (WIPO Mar. 4 2002).  In the instant case there is no showing or suggestion that Respondent, its relationship with Johnson’s Flower now apparently over, intends to use the domain name for a legitimate use at anytime. While a domain name holder need not immediately use a domain name for its intended purpose, a trademark holder need not be prejudiced in a UDRP proceeding when a once intended use becomes impossible or impractical to lawfully effectuate.

The record fails to support the notion that there is a current relationship between Respondent and Johnson’s Flower. A “once-upon-a-time” right to use the at-issue domain name does not carry over after the agency relationship from which it sprang forth has terminated. Therefore, the Panel finds Respondent has no current rights or interests in the domain name <johnsons.com>.

Registration and Use in Bad Faith

Complainant argues that simply registering the <johnsons.com> domain name with the knowledge that it reflects a famous mark demonstrates bad faith registration. The natural conclusion from such reasoning when applied to the instant case is that even if Johnson’s Flower itself registered and used the domain name, such registration would be in bad faith. This result is counter to common definitions of “bad faith” requiring the actor to know that what he or she is doing is wrongful but doing so anyway because of dishonest or moral obliquity. The Complaint’s argument thus is rejected. 

As noted above, the Panel gives no weight to Complainant’s claim that Respondent attempted to sell the domain name to Complainant. The e-mail evidence of a third party’s offering the domain name for sale to Complainant for one-million dollars ($1,000,000) lacks foundation and proper authentication.

 

Respondent repeatedly grounds the substance of its Response on its agency relationship with Johnson’s Flower. In further support it offers correspondence with Johnson’s Flower ostensibly showing the existence of an agency relationship in or about the first half of 1997.

The Respondent also shows that in January of 1999, a Johnson’s Flower web page was referenced by the <johnsons.com> domain name.  But, there is no claim or showing of the existence of any web page after that date.  In fact, Respondent makes no claim, directly or indirectly, that its agency relationship with Johnson’s Flower extended anytime after January of 1999.  Furthermore, while we expect such evidence would be forthcoming if it existed, Respondent fails to show any correspondence or other document originating from Johnson’s Flower supporting Repondent’s agency theory. Even if an agency existed in 1997, at the time of the initial registration, the term of Respondent’s agency is fuzzy at best.

The initial domain registration term expired in June of 1999. Despite any direct or indirect indication (or claim) of agency after the first quarter of 1999, Respondent must have renewed or reregistered the at-issue domain name at least once thereafter.  Resp. Exhibit E.  At such time as the domain name was renewed or reregistered, Respondent admittedly knew of Johnson’s Flower’s interest in the domain name.  Even so, the renewal(s) or registration(s) was made in the name of the Respondent.  While Respondent denies it acted in bad faith by way of declaration, no explanation is offered as to why the domain name was renewed in Respondent’s name after its relationship with Johnson’s Flower appears to have terminated.

Based on the termination of Respondent’s agency relationship with Johnson’s Flower, it is difficult, without any evidence from Respondent on point, to make a good faith case for Respondent’s renewal or reregistration of the domain name.  However, the vast majority of Panels have held that the determination of whether a domain name was registered in bad faith pursuant to Policy ¶ 4(a)(iii) refers solely to the original registration of the domain name.  Therefore, despite Respondent’s apparent lack of good faith in renewing or reregistering the domain name, such renewal or reregistration is immaterial to this proceeding.  See Arena Football League v. Armand F. Lange & Assocs., FA 128791 (Nat. Arb. Forum Dec. 26, 2002) (holding that “once a Panel finds that a domain name was originally registered in good faith, any subsequent renewal which could qualify as having been done in bad faith is irrelevant”); see also Weatherall Green & Smith v. Everymedia.com, D2000-1528 (WIPO Feb. 19, 2001) (despite a finding by the Panel that the <weatheralls.com> domain name registration was renewed in bad faith, the relevant inquiry for purpose of Policy ¶ 4(a)(iii) analysis is whether the original registration was done in bad faith.  The Panel determined that, “a registration of a domain name that at inception did not breach Rule 4(a)(iii), but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii)”); see also Spirit Airlines, Inc. v. Spirit Airlines Pty. Ltd., D2001-0748 (WIPO July 25, 2001) (“Renewal of a domain name registration in this respect is no different from renewal of a trade mark registration. It represents a continuation of the original registration. Were the Complainant’s argument [that bad faith renewal satisfies the bad faith registration element of ¶ 4(a)(iii)] to succeed, all ‘innocent’ registrants of domain names would be at risk of becoming branded ‘cybersquatters’ as a result of a letter of notification coming in out of the blue”); see also Teradyne, Inc. v. 4Tel Technology, D2000-0026 (WIPO May 9, 2000) (noting that, where a domain name was registered in good faith, the registration upon renewal may be “infringing” for the purposes of trademark law, but that the registration was not “abusive” within the meaning of the UDRP and as such, the controversy falls outside its scope); Aetna Inc. v. Jacoby Partners 1999-2, L.L.C. FA 125816 (Nat. Arb. Forum Nov. 22, 2002) (finding that whether a domain name registration was renewed in bad faith is irrelevant in analyzing the bad faith registration element of Policy ¶ 4(a)(iii)); see also Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int'l, Inc.(SAMI), D2001-0782 (WIPO Aug. 14, 2001) (“If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”); see also Hudson v. Ted Machi & Assocs., FA 133759 (Nat. Arb. Forum Jan. 21, 2003) (“Renewal of a registration in bad faith cannot support a finding of bad faith [registration] under Policy ¶ 4(a)(iii)”); see also Verint Sys. Inc. v. CRYSTALSTEVENS, D2002-0896 (WIPO Nov. 21, 2002) (“Paragraph 2 of the Policy . . . expressly indicates that when a registrant asks the registrar to ‘register’ or to ‘maintain or renew’ a domain name, the registrant makes representations and warranties to the registrar, including that it is not knowingly infringing third party rights. Paragraph 4 of the Policy, however, does not base a finding of abusive domain name registration and use on breach of the representations and warranties set out in Paragraph 2”).

For the reasons discussed above the Panel finds that the at-issue domain name was not registered in bad faith.

DECISION

Having failed to establish ¶ 4(a)(iii) as required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.

Accordingly, it is Ordered that the <johnsons.com> domain name REMAIN with Respondent .

Paul M. DeCicco, Panelist
Dated: August 8, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/827.html