DECISION

Johnson & Johnson v. Rx USA

Claim Number:  FA0305000157288

PARTIES

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.

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 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.    

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

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.

FINDINGS

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.

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."

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.

Identical to and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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.

DECISION

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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