Complainants are Johnson & Johnson, and McNeil PPC Inc., both of New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
Respondent is Registrant [3165489]: Alex Do of Rousseau Valley, Dominica. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2010. On September 16, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On September 17, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on September 23, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainants filed an amended Complaint on September 24, 2010.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 21, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on November 2, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The trademarks upon which the Complaint is based are the MCNEIL marks. According to the documentary evidence and contentions submitted, Complainants own a number of registrations for the MCNEIL mark in different countries, including the CTM Registration No. 003413788 issued on 12/07/04, and in the United States, including the United States Registrations Nos. 1,252,705 issued on 10/04/83; 3,548,610 issued on 12/23/07; 3,079,081 issued on 04/11/06; and 3,325,279 issued on 10/30/07.
According to the documentary evidence and contentions submitted, Complainant McNeil was founded in 1879 by Robert McNeil, and is best known for its development of acetaminophen and Tylenol products. The company was acquired by Complainant Johnson & Johnson in 1959. The J&J family of companies includes an international consumer health company, an international medical devices and diagnostics company, an international biologics company and an international pharmaceuticals company. Complainants market, develop and sell over-the-counter and prescription pharmaceuticals, including the complete product lines of Tylenol, Motrin IB (Ibuprofen), Sudafed and Benadryl for adults and children.
According to the documentary evidence and contentions submitted, Complainants registered the domain name and began operating a website from . Complainants’ domain name was registered on January 12, 2010. Pursuant to the documentary evidence, the domain name was registered with Moniker Online Services, LLC. on January 15, 2010. 5. Parties’ Contentions A. Complainants
Complainants argue that the disputed domain name is virtually identical to the MCNEIL mark because (i) it adopts the MCNEIL mark exactly and in its entirety, differing only by adding the generic words “products” and “recall”, (ii) the gTLD indicator “.com” cannot be taken into consideration when judging confusing similarity, and (iii) registration establishes a presumption of validity in United States trademark law.
Complainants further contend that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has no known connection or affiliation with Complainants and has not received any license or consent, express or implied, to use the MCNEIL Marks in a domain name or in any other manner, (ii) there is no evidence that Respondent ever has been known by the disputed domain name, (iii) Respondent’s only use of the disputed domain name is to misdirect Internet traffic to competing pain relief and medication oriented websites so that it can generate pay-per-click revenue.
Finally, Complainants contend that Respondent registered the disputed domain name in bad faith because (i) Respondent registered the disputed domain name on the day that Complainants publicly announced a recall of their products, which occurred only days after Complainants registered the domain name , (ii) Respondent registered the disputed domain name in an attempt to capitalize on Internet traffic resulting from Complainants’ customers’ confusion and concern, and to attract, for commercial gain, Internet users to the Respondent’s website, and (iii) Respondent appears to be a serial cybersquatter who has registered hundreds of domain names, all of which incorporate internationally well-known trademarks. Complainants further contend that (iv) Respondent’s use of the disputed domain name to generate pay-per-click revenue through links to Complainants’ competitors in the pain relief and medication industries clearly establishes Respondent’s bad faith use, and (v) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use, which in and of itself is evidence of bad faith use of the domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Respondent’s standing
When the Complaint was filed, the registrant of the disputed domain name was recorded as registrant [2451152] Moniker Privacy Services. However, in its response, the registrar Moniker Online Services, LLC. advised that the registrant of the disputed domain name is [3165489]: Alex Do of Dominica.
The Panel is satisfied that Respondent appears as registrant and concludes that the amended Complaint should be accepted as filed. B. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. C. Identical or Confusingly Similar
The domain name incorporates the MCNEIL mark in its entirety. In this type of combination it is clear that the MCNEIL mark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282.
The addition of the generic terms “products” and “recall” increases the likelihood of confusion because it describes the activity of product recall and, therefore, does nothing to distinguish the disputed domain name from the registered trademark. And the validity of the MCNEIL mark has not been disputed.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the domain name is confusingly similar to the MCNEIL mark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
The disputed domain name is not the name of Respondent or the name by which Respondent is commonly known, and the disputed domain name is not the Respondent’s trade name. The Panel finds as reasonable Complainants’ contentions that Respondent has not been licensed or authorized by Complainants to register and use the disputed domain names and that there is no known connection or affiliation of Respondent with Complainants.
The Panel concurs with the prior WIPO UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links including to competitive third-party websites. See ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649. As decided in Gene Kelly Image Trust v. BWI Domain Manager,WIPO Case No. D2008-0342, “[t]he existence of sponsored links on the website also clearly demonstrates that Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that Respondent is using the disputed domain name to make a commercial gain.”
The Panel is convinced that Complainants have done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the disputed domain name (Paragraph 4(c) of the Policy) shows a result in favor of the Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. E. Registered and Used in Bad Faith (i). Bad Faith Registration
Complainants’ first contention is that Respondent has shown a bad faith conduct by registering the disputed domain name on the day that Complainants announced a recall of their products, Respondent having done so to capitalize on Internet traffic and to attract Internet users to the Respondent’s website.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainants and of its trademark MCNEIL when Respondent registered the disputed domain name. That finding is reinforced by the fact that Respondent chose to combine the word “MCNEIL” with the words “productsrecall” to register the disputed domain name exactly when Complainants announced a recall of their products.
As a matter of fact, in the case of a domain name so obviously connected to a registered mark, its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. Net,WIPO Case No. D2000 0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
The Panel finds it most likely that the disputed domain name was created and registered by Respondent in an intentional attempt to benefit from the goodwill of Complainants’ trademark for financial gain. The Panel does not consider necessary to address the issue of whether or not Respondent is a serial cybersquatter. Bad faith registration is clearly proved even without considering that element. (ii). Bad Faith Use
The Panel concurs with Complainants’ contentions that the links at Respondent’s parked website make it evident that Respondent has sought to profit from the disputed domain name by diverting Internet traffic to pay-for-traffic web engines that pay compensation to Respondent. Etro S.p.A. v. Domain Registrations,WIPO Case No. D2006-0207; PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162; Nintendo of America, Inc. v. P, et al.,WIPO Case No. D2001-1020; Nokia Corp. v. N a.k.a IBCC,WIPO Case No. D2000-0102.
The fact that Respondent has formed the domain name by only adding the words “productsrecall” to the MCNEIL mark shows that the combination was made in bad faith with the motivation to exploit user confusion. That conclusion is reinforced by the circumstance that the disputed domain name resolves to a website containing links to competitive websites. This is, as indicated before, evidence of opportunistic bad faith. See Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648.
The Panel concludes that the information provided by the Complainants, including the contents of Respondent’s website, indicates bad faith in the registration and use of the disputed domain name, and notes that Respondent has done nothing to supplant that indication.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant Johnson & Johnson.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: November 15, 2010
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