WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McNeil Consumer Brands, Inc. v. Washington Surgical Services
Case No. D2000-1657
1. The Parties
The Complainant in this proceeding is McNeil Consumer Brands, Inc. ("Complainant"), a New Jersey corporation and a wholly-owned subsidiary of Johnson & Johnson with its principal place of business at 1001 Route 202, Raritan, New Jersey, 08869 USA.
The Respondent in this proceeding is Washington Surgical Services ("Respondent"), the registrant of the domain name in issue with a listed mailing address of 14002 81st Pl. N.E., Bothell, Washington, 98011 USA. Paul Bowman ("Mr. Bowman") is listed as the Administrative/Billing Contact for the registration of this domain name and has the same listed mailing address as the Respondent.
2. The Domain Name and Registrar
The domain name in issue is "".
The registrar of the domain name in issue is Network Solutions, Inc. ("NSI") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.
3. Procedural History
On November 29, 2000, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name "" and paid the required filing fee for appointing a single member Panel.
On December 4, 2000, a "Request for Verification" concerning the domain name was sent to NSI. On December 8, 2000, NSI provided a Verification Response to the Center stating, in pertinent part, that: (i) it had received the Complaint from the Complainant as required by the Policy; (ii) it is the registrar of the domain name ""; (iii) "Washington Surgical Services" is the current registrant of the domain name registration with a listed mailing address of 14002 81st Pl. N.E., Bothell, WA, 98011 USA; (iv) "Paul Bowman" is the Administrative/Billing Contact for the domain name registration; (v) NSI's 5.0 Service Agreement is in effect; and (vi) the domain name is currently in "active" status.
On December 12, 2000, the Center found the Complaint to be in compliance with the formal requirements of ICANN�s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN�s Rules for the Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO�s Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On December 12, 2000, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" and the Complaint to the Respondent at the listed contact details in the domain name registration. Copies of the Notification and Complaint were also sent to the Complainant, NSI and ICANN. On January 2, 2001, the Center received a Response to the Complaint from Mr. Bowman on behalf of the Respondent. On January 3, 2001, the Center sent an "Acknowledgement of Response" to the Respondent and the Complainant.
On February 6, 2001, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. On February 7, 2001, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center and on February 12, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
Based upon a review of the record for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. Based upon the submission of a Response by Mr. Bowman on behalf of the Respondent, the Panelist will hereafter refer to Mr. Bowman and the Respondent, both individually and collectively, as the "Respondent".
4. Factual Background
The Complaint is based on the mark TYLENOL registered with the U.S. Patent and Trademark Office. In support of the Complaint, the Complainant relies on the following U.S. trademark registrations:
TYLENOL, Reg. No. 890,360 (first use and first use in commerce 4/5/55; issued 5/5/70) for analgesic, antipyretic preparations
TYLENOL CODEINE 3 McNEIL & Capsule Design, Reg. No. 1,252,705 (first use and first use in commerce 10/19/81; issued 10/4/83) for a narcotic analgesic medication
TYLENOL, Reg. No. 1,621,973 (first use and first use in commerce 6/89; issued 11/13/90) for allergy, sinus and cold medication
TYLENOL PM, Reg. No. 1,777,613 (first use and first use in commerce 1/23/91; issued 6/22/93) for analgesic sleeping aids
TYLENOL FLU, Reg. No. 1,852,189 (first use and first use in commerce 8/3/93; issued 9/6/94) for pharmaceutical preparation, namely, flu, cold, and cough medication
Copies of the certified copies of these registrations were attached as Annex C to the Complaint showing the Complainant�s ownership of these registrations.
The domain names "" and "" are registered to the Complainant�s parent company, as shown by printouts of the corresponding Whois records for these domain names attached as Annexes D and F to the Complaint. In addition, there is a Website accessible at the "" domain name and copies thereof were attached as Annex E to the Complaint.
A search result from a query of NSI�s Whois database shows that the domain name "" was registered on November 9, 1998 to the Respondent. The domain name resolves to an "Under Construction" Web page. Copies of the Whois records for the domain name in issue with print dates of December 9, 1998 and November 2, 2000 as well as printouts of the corresponding "Under Construction" Web pages for this domain name with print dates of December 9, 1998 and November 17, 2000 were attached as Annexes A, B and U, respectively, to the Complaint.
5. Parties� Contentions
Complainant
The Complainant asserts that it is the owner of five federal trademark registrations for the mark TYLENOL and variations thereof, for use in connection with various medications. Copies of the certified copies of these registrations were attached as Annex C.
The Complainant asserts that its registrations of the TYLENOL mark are conclusive evidence of the validity of the TYLENOL mark and it has an exclusive right to use the mark in commerce or in connection with the goods and services specified in the registrations. The Complainant asserts that the word "TYLENOL" was coined as the brand name for an acetaminophen product, has no meaning in any language apart from serving as a brand signifier for its TYLENOL products and is arbitrary, fanciful and distinctive in the analgesic category. The Complainant further asserts that since as early as 1955, it, and its predecessors-in-title, have continuously and exclusively used the TYLENOL trademark on a variety of analgesic preparations. The Complainant asserts that, as a result of its advertising and marketing efforts and the extraordinary success of the various TYLENOL products, the TYLENOL trademark has acquired enormous fame, goodwill, and nearly universal recognition among consumers and members of the medical community. The Complainant asserts that TYLENOL is one of the best-known and best-selling over-the-counter analgesics in the United States and is sold in virtually every food, drug, mass merchandise, and convenience store in the country.
The Complainant asserts that the domain name "" is identical or confusingly similar to the Complainant�s trademarks because TYLENOL is the primary component of each of these marks and the domain name.
The Complainant asserts that, on December 11, 1998, it provided explicit written notice to the Respondent that the Complainant has exclusive rights in the TYLENOL mark, in which it demanded that the Respondent transfer the "" domain name to the Complainant (a copy of this letter sent by certified mail, return receipt requested, was attached as Annex H). A copy of the return receipt indicating that the letter was delivered to the Respondent�s address and that Mr. Bowman signed to receive the letter was attached as Annex I. The Complainant asserts that, after receiving no response, it commenced a proceeding against the Respondent under Section 8 of NSI�s Domain Name Dispute Policy, then in effect, so as to place the domain name on "Hold" (copies of the letters in this proceeding were attached as Annexes J-O). The Complainant asserts that the "" domain name was placed on "Hold" due to the Respondent�s failure to respond to NSI (a copy of the NSI letter was attached as Annex P).
During this proceeding, the Complainant asserts that it did receive a letter, dated March 23, 1999, from the Respondent in which the Respondent stated that: (1) "[d]omain names rightfully belong to the registrant/purchaser" that first registers them; (2) the Complainant�s own failure to promptly register the domain name "" is inexcusable neglect, justifying the Respondent�s registration of the name; (3) the TYLENOL trademark has been so diluted that it is no longer perceived as a distinct brand but rather a generic term for acetaminophen; and (4) the Complainant had no trademark rights to the word "www." only to the word TYLENOL® in capital letters. (Annex N).
The Complainant asserts that it subsequently received a letter dated February 1, 2000 from NSI, informing it that the dispute proceeding relating to "" would be terminated and that the domain name would be reactivated (Annex Q). The Complainant asserts that it then sent the Respondent a third letter, dated February 16, 2000, renewing its objection to the Respondent�s registration of the domain name in issue and demanding that the Respondent transfer the "" domain name to it (Annex R).
The Complainant asserts that during conversations with Mr. Bowman in February and March 2000, he agreed to transfer the "" domain name to the Complainant in exchange for repayment of the Respondent�s registration costs. The Complainant asserts that the Respondent failed to complete the domain name transfer form sent to it by the Complainant in a letter dated March 7, 2000 (Annex S). The Complainant asserts that in further discussions with the Mr. Bowman in June 2000, it was informed that the Respondent had determined to simply let the "" registration lapse when it was due to expire on November 9, 2000.
The Complainant asserts, that despite representations to the contrary, the Respondent renewed the registration for "" for another two years, through November 9, 2002 (copy of Whois record, Annex B). The Complainant asserts that, after learning of this, it sent a fourth letter to the Respondent dated November 2, 2000, in which it noted the Center�s decision ordering the transfer of the domain name "" to the Complainant (Annex T).
The Complainant asserts that there is no evidence to indicate that the Respondent: (i) has, at any time, used or made demonstrable preparations to use, the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) has been known, commonly or otherwise, by the domain name or any name corresponding to the domain name; (iii) has acquired any legitimate rights whatsoever (including trade/service mark rights) in the domain name or any name corresponding to the domain name; or (iv) has made any legitimate noncommercial or fair use of the domain name.
The Complainant asserts that the arguments presented by the Respondent in its letter of March 23, 1999, which contained attempts to establish its rights to or legitimate interests in the "" domain name, have no merit based upon: (1) the mere registration of a domain name not conferring upon a registrant any rights to or legitimate interests in it; (2) the fact that the domain name in issue was not registered by the Complainant is in no way an abandonment of the Complainant�s rights to the domain name and in no way conferred any rights in the domain name to the Respondent; and (3) the TYLENOL trademark being anything but generic and that the Complainant has a long and successful history of policing infringements, which has only enhanced the TYLENOL trademark�s distinctiveness and strength.
The Complainant asserts the Respondent had registered the "" domain name in bad faith because the wide reputation of the TYLENOL trademark makes it impossible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name, and because it is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. The Complainant further asserts that, even after its repeated protests against the Respondent�s registration of the "" domain name, NSI�s decision to put the domain name on "Hold," and the Respondent�s own agreement to transfer the domain name or let its registration for the domain name lapse, the Respondent�s renewal of the domain name registration is further evidence that the "" domain name was registered in bad faith.
The Complainant asserts that the Respondent used the "" domain name in bad faith due to its passive holding of the registration. The Complainant asserts that, under certain circumstances, actual affirmative use of a domain name is not required for a determination of bad faith.
First, the Complainant asserts that the Respondent�s registration and passive holding of a domain name corresponding to a famous, arbitrary trademark that has no meaning apart from identifying the Complainant�s product is evidence of bad faith use of the domain name.
Second, the Complainant asserts that the Respondent has not provided any evidence whatsoever of any actual or contemplated good faith use of the "" domain name, despite the fact that it registered the domain name nearly two years ago. Respondent's failure to make any legitimate use of the domain name in the nearly two years since it was registered points to a finding of bad faith use.
Finally, the Complainant asserts that the Respondent�s renewal of the "" registration in the face of a trademark owner�s legitimate claim is further evidence of Respondent's bad faith use of the domain name.
Respondent
The Respondent asserts that he had not registered the "" domain name in bad faith. First, the Respondent asserts that he had not registered "" in order to obtain "valuable consideration" and that he has never implied or requested compensation for more than the amount of the registration fee paid to NSI. Second, the Respondent asserts that it has never engaged in any practice preventing the Complainant from promoting its TYLENOL trademark in a corresponding domain name, as evidenced by the Complainant�s registration of the domain name "". The Respondent also asserts that the Complainant has failed to demonstrate any pattern of such conduct by the Respondent. Third, the Respondent asserts that the Complainant has not submitted any evidence to support its allegation that the registration of the domain name "" has caused or will cause it any disruption of business. Fourth, the Respondent asserts that it has never promoted the "" domain name to attract any Internet user for commercial gain and has never made any reference to, or association with, the product "TYLENOL" or the Complainant.
The Respondent asserts that when the Complainant registered the "" domain name, both "" and "" were also available. The Respondent therefore asserts that the Complainant is "wasting the WIPO�s time by attempting to remedy [the Complainant�s parent�s] naivet�."
The Respondent asserts that the Complainant has a number of trademarks that are as "notorious" as TYLENOL, including IMODIUM and MOTRIN. The Respondent alleges that the registrations for "" and "" do not reflect these "respected trademarks" (a copy of the Whois records for these domain names were attached as Annexes 2 and 3).
The Respondent asserts that the Complainant is erroneously relying on the decision in McNeil Consumer Brands, Inc. v. MirWeb Solutions, WIPO D2000-0612 (August 3, 2000), to support its claim of bad faith due to the Respondent�s passive holding of the "" domain name, because the transfer of "" in that decision was based on Policy Paragraph 4 (b)(ii).
The Respondent asserts that the Complainant�s threat of legal action, in conjunction with NSI�s placement of "" on "Hold," prevented it from developing a surgery information Website at that domain name.
The Respondent asserts that it made good faith attempts to transfer the "" domain name to the Complainant. The Respondent asserts that Paul Bowman, the Administrative Contact listed in the Whois for "", visited the legal offices representing the Complainant for the purpose of transferring "" in person on three different occasions in February 2000. The Respondent asserts that no attorney was available at these times to meet with him and effect the transfer. (copy of the letter to the Complainant�s attorney dated November 19, 2000, containing these assertions was attached as Annex 1) The Respondent further asserts that it had never intended to willfully violate the Complainant�s trademark or cause damage to the TYLENOL trademark�s reputation and that it acted in good faith and reasonably.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
However, the Panelist can only rule in the complainant�s favor after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
The Complainant has provided sufficient evidence to show that it is the owner of the mark TYLENOL. Comparing the domain name in issue with the Complainant�s mark TYLENOL, Panelist finds that the domain name is identical to the mark and that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder�s rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder�s 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; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent stated in his letter submitted as Annex 1 with its Response that he "chose the domain name believing it to be, at most, a vague generic reference to acetaminophen" and that "it sounded medical, wholesome and benign as opposed to , which was also available at the time." In addition, the Respondent also stated that he "purchased the domain with the intention of setting up a website supplying surgical information for my patients and some personal items pertaining to my work with NASA as a member of the Space Shuttle Recovery Team" but was prevented with proceeding with such development based upon being threatened with legal action by the Complainant. Such assertions do not demonstrate or support a right to or legitimate interest in the domain name nor has the Respondent presented evidence of any kind to demonstrate or support any such right to or legitimate interest as set forth in Paragraph 4(c) of the Policy.
Particularly, no evidence has been presented that, before notice to the Respondent of this dispute, the Respondent was using or that there were demonstrable preparations to use the domain name in connection with an type of bona fide offering of goods or services, that the Respondent has or had been commonly known by the domain name or that the Respondent is or was making any legitimate noncommercial or fair use of the domain name. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name in issue and that Element (ii) has been satisfied.
Element (iii) - Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder�s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder�s website or location.
Based upon the evidence submitted, it is apparent that the Respondent was aware of the Complainant's mark when first registering the domain name in issue. Indeed, the Respondent's assertions for choosing the domain name in issue along with his statements concerning the Complainant's brand, mark and domain name registrations support such a finding. Even assuming, arguendo, that the Respondent did not have knowledge of the Complainant's mark and ownership thereof when first registering the domain name in issue, his re-registration thereof, after repeated notice to him by the Complainant of its mark and rights therein, defeats such an assumption. In addition, based upon the Complainant�s mark having a strong reputation and being widely known, as shown by the uncontested evidence submitted by the Complainant, together with the above finding that the Respondent has no rights or legitimate interests in the domain name, the Panelist finds that the domain name in issue has been registered by the Respondent in bad faith.
The Complainant has also asserted and submitted evidence to show that the Respondent has held the domain name in issue corresponding to its mark passively thereby preventing the Complainant from reflecting its mark in a corresponding domain name and cites to Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO D2000-003 (February 18, 2000) for support.
While Paragraph 4(b) of the Policy sets forth fourth specific circumstances of bad faith registration and use, it is well established since Telstra Corp. Ltd., that evidence of use in bad faith is not limited to these circumstances, but in given factual situations, "being used in bad faith" can also be found by inaction or "passive holding" of a domain name by a respondent. Telstra Corp. Ltd., � 7.9.
Viewing the evidence and assertions submitted in their entirety, the Panelist finds the Respondent's inactions and actions together result in the domain name being used in bad faith. Such finding is based on: (i) the Complainant's mark being a coined arbitrary term that has no meaning apart from the Complainant's products and having a strong reputation and being widely known; (ii) the domain name in issue, when not placed on "Hold" by NSI, merely resolving to an "Under Construction" Web page since at least as early as December 9, 1998; (iii) no evidence being provided by the Respondent of any actual or contemplated legitimate noncommercial, good faith or fair use of the domain name since it was registered over two years ago; and (iv) the re-registration of the domain name in issue by the Respondent even after repeated notice to him of the Complainant's mark and rights therein thereby continuing his passive holding of the domain name. The Panelist therefore concludes that the Respondent registered and is using the domain name in issue in bad faith and that element (iii) has accordingly been satisfied.
7. Decision
The Panelist concludes: (i) that the domain name in issue is identical to the Complainant�s mark; (ii) that the Respondent has no rights or legitimate interests in the domain name; and (iii) that the Respondent has registered and is using the domain name in bad faith. Accordingly, the Panelist requires that the registration of the domain name in issue be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Dated: March 23, 2001
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