DECISION

Johnson Financial Group, Inc. v. Wolfgang Janssen a/k/a Janssen Wolfgang a/k/a Privat

Claim Number: FA0311000214465

PARTIES

Complainant is Johnson Financial Group (“Complainant”) represented by Brian G. Gilpin of Godfrey & Kahn, S.C., 780 North Water Street, Milwaukee, WI, 53202.  Respondent is Wolfgang Janssen a/k/a Janssen Wolfgang a/k/a Privat, Casilla de Correos 1701 and 1287, Asuncion, Paraguay 01220 (“Respondent”).

REGISTRARS AND DISPUTED DOMAIN NAMES

The domain names at issue are <johnsonsgroup.net> registered with Enom, Inc. and <johnson-latin.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 25, 2003; the Forum received a hard copy of the Complaint on December 1, 2003.

On November 28, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <johnsonsgroup.net> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 28, 2003, Iholdings.com, Inc. d/b/a Dotregistrar confirmed by e-mail to the Forum that the domain name <johnson-latin.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On December 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@johnsonsgroup.net and postmaster@johnson-latin.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 January 5 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <johnsonsgroup.net> and <johnson-latin.com> domain names are confusingly similar to Complainant’s JOHNSON mark.

2. Respondent does not have any rights or legitimate interests in the <johnsonsgroup.net> and <johnson-latin.com> domain names.

3. Respondent registered and used the <johnsonsgroup.net> and <johnson-latin.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant offers a wide variety of financial services, including trust, personal and business banking, insurance, investment, asset management, international banking, private banking and commercial leasing services. Complainant is privately owned by the S.C. Johnson family and has grown to a global financial services group with more than $2 billion in traditional bank assets and approximately $1 billion in assets under management.

Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) that incorporate the JOHNSON mark, including Reg. No. 2,282,036 (registered on September 28, 2003) in relation to, inter alia, financial analysis and consultation services. Complainant holds several domain name registrations that incorporate the JOHNSON mark.

Respondent registered the <johnsonsgroup.net> and <johnson-latin.com> domain names on  August 16, 2003 and August 17, 2003, respectively. Respondent is using the disputed domain names to redirect Internet traffic to websites that purport to offer credit card services. Much of the graphics and text on Respondent’s websites apparently were copied from Complainant’s website.

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 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.

Identical and/or Confusingly Similar

Complainant has demonstrated its rights in the JOHNSON mark for purposes of Policy ¶ 4(a)(i) through its numerous trademark registrations with the USPTO. See 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); see also 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”).

Complainant contends that Respondent’s <johnsonsgroup.net> and <johnson-latin.com> domain names are confusingly similar to Complainant’s JOHNSON mark because the disputed domain names appropriate the mark and simply add the letter “s” in one case and a hyphen in the other, along with the generic or descriptive terms “group” and “Latin.” The Panel concludes that none of these additions sufficiently differentiate the domain names from the mark because Complainant’s mark remains the principal element of the domain name. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward and challenge Complainant’s allegations. Therefore, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, based on Respondent’s failure in coming forward with a Response, the Panel presumes that Respondent lacks all rights to and legitimate interests in the <johnsonsgroup.net> and <johnson-latin.com> domain names in accordance with Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent is using the <johnsonsgroup.net> and <johnson-latin.com> domain names to redirect Internet traffic to websites that purport to offer credit card services. Much of the graphics and text on Respondent’s websites apparently were copied from Complainant’s website. Respondent’s use of the disputed domain names fails to demonstrate 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 Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, that Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Am. Int’l Group, Inc. v. Busby d/b/a AIG Mergers & Acquisitions, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name).

Complainant has never permitted or authorized Respondent’s use of the JOHNSON mark, or any other mark, in any way. Furthermore, Respondent has presented no evidence and nothing in the record indicates that Respondent is commonly known by the <johnsonsgroup.net> and <johnson-latin.com> domain names. Thus, the Panel finds that Respondent lacks all rights to and legitimate interests in the disputed domain names with regard 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 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).

The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s attempt to pass itself off as Complainant by copying graphics and text from Complainant’s website demonstrates Respondent’s bad faith registration and use of the <johnsonsgroup.net> and <johnson-latin.com> domain names under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby d/b/a AIG Mergers & Acquisitions, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where Respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . . In a nutshell, Respondent used the disputed domain name to perpetrate a fraud”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith).

Furthermore, Respondent’s unauthorized commercial use of domain names confusingly similar to Complainant’s mark to redirect Internet traffic to Respondent’s websites establishes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion").

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <johnsonsgroup.net> and <johnson-latin.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary  Panelist

Dated:  January  19, 2004

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