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Generic Top Level Domain Name (gTLD) Decisions |
Johnson & Johnson v. Contact Lenses
Claim
Number: FA0411000363824
Complainant is Johnson & Johnson (“Complainant”),
represented by Norm D. St. Landau, of Drinker Biddle & Reath LLP, 1500 K Street, N.W., Suite 1100, Washington, DC 20005.
Respondent is Contact Lenses (“Respondent”),
210 E. Broadway #H 407, New York, NY 10002.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <onetouchstrips4less.com>, <onetouchstripsforless.com>
and <onetouchstripsdiscount.com>, registered with Go Daddy
Software, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
12, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 15, 2004.
On
November 15, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <onetouchstrips4less.com>,
<onetouchstripsforless.com> and <onetouchstripsdiscount.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has
verified that Respondent
is bound by the Go Daddy Software, 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
November 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 6, 2004 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@onetouchstrips4less.com,
postmaster@onetouchstripsforless.com and postmaster@onetouchstripsdiscount.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 13, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <onetouchstrips4less.com>,
<onetouchstripsforless.com> and <onetouchstripsdiscount.com>
domain names are confusingly similar to Complainant’s ONE TOUCH mark.
2. Respondent does not have any rights or
legitimate interests in the <onetouchstrips4less.com>, <onetouchstripsforless.com>
and <onetouchstripsdiscount.com> domain names.
3. Respondent registered and used the <onetouchstrips4less.com>,
<onetouchstripsforless.com> and <onetouchstripsdiscount.com>
domain names in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
through its wholly-owned subsidiary LifeScan, Inc., has used the ONE TOUCH mark
to identify its family of blood glucose
monitoring systems, including strips
for testing blood glucose levels and other related products, since as early as
1987. ONE TOUCH
products had over $800 million of 2003 net sales in the United
States. Complainant has spent millions of dollars each year in advertising
and
promoting the ONE TOUCH mark and building industry and consumer brand
recognition worldwide. The word “strips” is descriptive
of products that
Complainant markets using the ONE TOUCH mark.
Complainant owns
several trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the ONE TOUCH mark
and variations thereof, including Reg.
No. 1,484,999 (issued April 19, 1988), Reg. No. 2,631,514 (issued October 8,
2002), and Reg.
No. 2,710,143 (issued April 22, 2003).
Respondent
registered the <onetouchstrips4less.com>, <onetouchstripsforless.com>,
and <onetouchstripsdiscount.com> domain names on October 7, 2003.
The domain names resolve to parking pages created by Respondent’s domain name
registrar.
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
draw such inferences 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 has
established that it has rights in the ONE TOUCH mark through registration with
the United States Patent and Trademark
Office and through continuous use of the
mark in commerce. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of validity,
which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption).
The disputed
domain names are confusingly similar to Complainant’s ONE TOUCH mark because
they all fully incorporate the mark while
merely removing a space between the
words of the mark, adding the generic top-level domain “.com,” and adding
generic and descriptive
words. It is well established that neither the deletion
of a space between words in a trademark nor the addition of a generic top-level
domain distinguish a domain name from the trademark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25,
2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark).
Furthermore,
Respondent’s addition of the word “strips” to Complainant’s mark does not
lessen the likelihood of confusion because
the word is descriptive of products
that Complainant sells using the ONE TOUCH mark. Adding a descriptive word to
Complainant’s trademark
does not distinguish the disputed domain name from the
mark so as to avoid confusing similarity. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar.
3, 2000) (finding that four domain names that added the descriptive words
"fashion" or "cosmetics"
after the trademark were
confusingly similar to the trademark); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding
that the disputed domain names <caterpillarparts.com> and
<caterpillarspares.com>
were confusingly similar to the registered
trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by
the disputed
domain names and the registered trademarks is that the goods or
services offered in association with [the] domain name are manufactured
by or
sold by the Complainant or one of the Complainants [sic] approved distributors.
The disputed trademarks contain one distinct
component, the word Caterpillar”).
Finally, the
addition of the generic terms “4less,” “forless,” and “discount” to a mark
simply indicates a low or discounted price
for products or services and does
not reduce the likelihood of confusion. Respondent’s addition of these generic
terms does not distinguish
the disputed domain names from Complainant’s ONE
TOUCH mark so as to avoid confusing similarity. 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 Qwest Communications Int’l, Inc. v.
DiscountQwest.com, FA 223006 (Nat. Arb. Forum Feb. 13, 2004) (“‘[d]iscount’
is a generic addition, with no distinctiveness”); see also Six Continents
Hotels, Inc. v. Georgetown Inc., D2003-0214 (WIPO May 18, 2003) (reasoning
that “4less” was an abbreviation of “for less,” meaning at a lower price, and
did not
avoid confusion); see also U-Haul Int’l, Inc. v. ALCorp. N.A.,
FA 124739 (Nat. Arb. Forum Nov. 4, 2002) (holding that even when “[r]espondent
added additional descriptive phrases such as ‘4 less’,
‘4 cheap’, or ‘easy’ . .
. the dominant feature of the [domain] name[s] remain[ed] the [complainant’s]
mark, slightly altered by
generic and descriptive words, yet nevertheless
confusingly similar to [c]omplainant’s mark”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶ 4(c)(i)-(iii).
Such a showing shifts Complainant’s burden to Respondent, who must come forward
with evidence rebutting
Complainant’s allegations in order to prevail on this
element. In this case, Complainant has made a prima facie showing that
Respondent
does not have any rights or legitimate interests in the disputed domain
names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (“[p]roving that the Respondent has no rights or
legitimate interests in respect of the [d]omain
[n]ame requires the Complainant
to prove a negative. For the purposes of this sub paragraph, however, it is
sufficient for the Complainant
to show a prima facie case and the burden of
proof is then shifted on to the shoulders of Respondent. In those
circumstances, the
common approach is for [R]espondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question”);
see also G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to 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”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the disputed
domain names, the burden is
shifted to Respondent to demonstrate that it has rights or legitimate interests
in the domain names.
In this proceeding, Respondent has not submitted a
Response. Thus, Respondent has failed to present any circumstances under which
it could substantiate rights or legitimate interests in the disputed domain
names. Furthermore, because Respondent has failed to
submit a Response in this
proceeding, the Panel may accept as true all reasonable allegations submitted
by Complainant in the Complaint.
See Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent
has no rights or legitimate interests in the domain name because Respondent
never submitted a response or provided the Panel with evidence to suggest
otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the
very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent has
made no use of the disputed domain names; as such, it cannot be said to be
making a bona fide offering of goods or
services, nor can it be said to be
making a legitimate noncommercial or fair use of the domain name. In these
circumstances, Policy
¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See
Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov.
11, 2000) ( “merely registering the domain name is not sufficient to establish
rights or legitimate interests
for purposes of paragraph 4(a)(ii) of the
Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO
Nov. 13, 2000) (finding no rights or legitimate interests where Respondent
failed to submit a Response to the Complaint
and had made no use of the domain
name in question).
Furthermore, no
evidence in the record suggests that Respondent is commonly known by the <onetouchstrips4less.com>,
<onetouchstripsforless.com>, or <onetouchstripsdiscount.com>
domain names. Thus, Respondent has not established rights or legitimate
interests in the disputed domain names 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 Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
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 Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has not used the disputed domain names since their registration over a year
ago. Such passive holding equates to bad faith
use and registration under
Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb.
Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(a)(iii) even though
Respondent has not used the domain
name because “It makes no sense whatever to
wait until it actually ‘uses’ the name, when inevitably, when there is such
use, it will
create the confusion described in the Policy”); see also
Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO
Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain
name in question and there are no
other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose).
Furthermore,
Respondent’s registration of the disputed domain names, which incorporate
Complainant’s well-known ONE TOUCH mark while
adding descriptive and generic
words to it, suggests that Respondent knew of Complainant’s rights in the ONE
TOUCH mark. Additionally,
Complainant’s trademark registration on file at the
United States Patent and Trademark Office gave Respondent constructive notice
of Complainant’s mark. Therefore, the Panel finds that Respondent chose the
disputed domain names based on the distinctive and well-known
qualities of
Complainant’s mark, which evidences bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly
known mark at the time of registration); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <onetouchstrips4less.com>, <onetouchstripsforless.com>
and <onetouchstripsdiscount.com> domains name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
December 20, 2004
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