The Complainant is Johnson & Johnson, of New Brunswick, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“USA”).
The Respondent is Ryan Rupke, of Beaverton, Ontario, Canada. 2. The Domain Names and Registrar
The disputed domain names are , , , and and they are registered with GoD, Inc. (“GoDaddy”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2011. On July 14, 2011, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain names. On July 15, 2011, GoDaddy transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on July 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2011.
The Center appointed David H. Tatham as the sole panelist in this matter on August 22, 2011. 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 Complainant is a large and very well-known company, having more than 250 operating subsidiaries in 60 different countries, employing over 100,000 people, and being responsible for a miscellany of products in the fields of consumer health, medical devices and diagnostics, biologics and pharmaceuticals.
The Respondent did not file a Response so nothing is known about it. All of the five disputed domain names were registered on January 4, 2011.
The Complainant has multiple registrations and applications for its trademarks AVEENO, ROGAINE, and ZYRTEC. They include the following in the USA (its country of origin):
– AVEENO
No. 2052166 for “Skin moisturizers, skin cleaners, shower and bath oil, and moisturizing bath powders” in Class 3.
Dated April 15, 1995 and claiming first use from December 1, 1943.
– AVEENO
No. 3102734 for “Skin and bath cleansers, foaming bath preparations, facial masks, body wash and body soap, body scrubs, skin moisturizers, skin creams and skin lotions, anti-wrinkle creams, body oil, skin cleansing wipes and pads, skin toners, oatmeal bath treatment preparations to soothe and relieve irritated skin, shave gels, lip balms and sunscreen preparations” in Class 3 and “Medicated rash creams, anti-itch gel, lotion, cream and spray, acne soap, and acne preparations” in Class 5.
Dated June 13, 2006 and claiming first use from December 27, 2002.
– AVEENO ACTIVE NATURALS
No. 3329980 for “Skin and bath cleansers, foaming bath preparations, facial masks, body wash and body soap, body scrubs, skin moisturizers, skin creams and skin lotions, anti-wrinkle creams, body oil, skin cleansing wipes and pads, skin toners, oatmeal bath treatment preparations to soothe and relieve irritated skin, shave gels, lip balms and sunscreen preparations; acne soap” in Class 3 and “Medicated rash creams, anti-itch gel, lotion, cream and spray, and acne preparations” in Class 5.
Dated November 6, 2007 and claiming first use from March 13, 2006.
– There is a registration in the USA of ROGAINE No. 1420785 but, according to the copy supplied by the Complainant this does not belong to the Complainant but to Pharmacia & Upjohn Company LLC. However the Complainant does have US registrations of ROGAINE GROWTH COACH No. 3932062, ROGAINE WORKS, THE SOONER THE BETTER No. 3030019, ROGAINE RESULTS No. 2641567, and pending applications for ROGAINE itself, and ROGAINE ROOT CAMP. There were also annexed to the Complaint details of registration for ROGAINE in many other countries around the world.
– ZYRTEC
No. 3512964 for “Pharmaceutical preparations, namely antihistaminic and decongestant agents” in Class 5
Dated October 7, 2008 and claiming first use from January 20, 2008.
– ZYRTEC label
No. 3512967 for “Pharmaceutical preparations, namely antihistaminic and decongestant agents” in Class 5
Dated October 7, 2008 and claiming first use from January 20, 2008.
In Canada (where the Respondent is located) the Complainant has a registration of ROGAINE No. 334005, dated November 6, 1987 and a pending application for the same mark No. 143258600 which was filed on March 26, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends, firstly, that the disputed domain names are similar to its trademarks AVEENO, ROGAINE and ZYRTEC because they incorporate one or other of these trademarks in their entirety, plus the generic word “coupon”, and plus one or other of the top level domain names “.net”, “.org”, or “.com”. The Complainant contends that the addition of the generic word “coupon” does nothing to distinguish the disputed domain names from its trademarks, that the addition of a hyphen in one of the disputed domain names does not alter the visual or phonetic identity to its trademarks, and that the gTLD suffixes should not be taken into consideration when judging similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in any of the disputed domain names because:
(i) It has never authorized or permitted the Respondent to use its trademarks in this way;
(ii) There is no relationship between itself and the Respondent;
(iii) The disputed domain names were registered long after it had established rights in its three trademarks;
(iv) The Respondent is not commonly known by any of the disputed domain names;
(v) All three of its trademarks are so well known that the only reason the Respondent could have for registering the disputed domain names is that it knew the marks and wanted to trade on their renown in order to lure customers to its websites,
(vi) Although the websites at the disputed domain names are constructed so as to appear legitimate and to provide information concerning the Complainant’s products, they are in fact manipulated to produce contrived search results, aimed at generating pay-per-click income for the Respondent; and
(vii) The Respondent’s websites do not disclose any relationship between the Complainant and the Respondent.
Finally, the Complainant contends that the Respondent has acted in bad faith by registering and using the disputed domain names because:
(i) Two of the websites at the disputed domain names are parked sites containing links to websites that directly compete with Complainant, whilst the third is associated with an inactive site;
(ii) When a domain name is obviously connected to a well-known product this suggests opportunistic bad faith;
(iii) The Respondent is banking upon the goodwill associated with the Complainant’s trademarks in order to drive traffic to its own websites;
(iv) The ultimate effect of any use of the disputed domain names will be to cause confusion with the Complainant and its products;
(v) The only reason why the Respondent has used the Complainant’s trademarks and product images is to intentionally confuse consumers; and
(vi) The Respondent earns revenue through its unauthorized use of the Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Remarks
Paragraph 5(b)(i) of the Rules specifies that a Respondent is expected to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name[…]”
In this case, the Center has forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has been given an opportunity to present its case, but it has failed to do so.
Paragraph (14)(b) of the Rules specifies that, in the event of a default, “[…]the Panel shall draw such inferences therefrom as it considers appropriate. It was said in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443 that “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […]In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this present proceeding, since the Respondent has chosen not to submit a Response, its default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the Complainant’s assertions, and to take its decision on the basis of the statements and documents before it, always in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence of a number of registrations of the trademarks AVEENO, ROGAINE, and ZYRTEC, including one of ROGAINE in Canada where the Respondent has its address. However, the Complainant admits that in Canada the product Zyrtec is marketed under the trademark REACTINE. Also, although it does not, apparently, currently own the registration of ROGAINE in the USA, this gap is amply filled by its registrations of this mark elsewhere in the world.
The Complainant has made substantial use of all three of its trademarks over many years. For example, -The Aveeno product line of skin care products dates back to more than half a century. The name currently has annual sales in the USA of more than USD 500 million.
Rogaine is used for the re-growth of hair for both men and women, and it was the first such product to be approved by the USA Food and drug Administration. It has been available for 20 years.
Zyrtec sold through the Health Care Division of the Complainant’s subsidiary McNeill-PPC. It is an antihistamine used to treat allergy symptoms and has been available in the USA since 1987. It has been sold over-the-counter since 2008 and has annual sales of USD 315.9 million.
The Panel concludes that, as a result of this long and extensive use, the Complainant’s three names are well-known.
It is by now well established that, when comparing a disputed domain name with a trademark, then a gTLD such as – in this case – “.net”, “.org” and “.com” should be disregarded. See, for example Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429, in which it was found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademarks AVEENO, ROGAINE, and ZYRTEC and these same words plus the generic word “coupon”.
In the present case, the five disputed domain names consist of the Complainant’s well-known trademarks to which has been added the generic term “coupon” and there is little doubt that the average consumer would regard each of them as referring directly to the Aveeno, Rogaine, and Zyrtec elements of each name, and so directly to the Complainant’s trademarks and widely sold products.
In Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033, it was held that “It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Aventis Pharma SA, Merrell Pharmaceuticals Inc. v. Filips Kostins ,WIPO Case No. D2004-0943, that “The Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes “buy” and “generic” are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the word ALLEGRA.” This Panel also found similarly in two cases involving the trademark VALIUM, F. Hoffmann-La Roche AG v. C / Mike Kazaros, WIPO Case No. D2010-2212, where the comparison was with the word and in F. Hoffmann-La Roche AG v. Hristo Ibouchev, WIPO Case No. D2010-2259, where the comparison was with the words , and .
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that all five of the disputed domain names are confusingly similar to trademarks in which the Complainant has registration or user rights, and that paragraph 4(a)(i) of the Policy is therefore proved in respect of each of them. B. Rights or Legitimate Interests
In Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828, in which it was held that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the Respondent to show that it does have rights or legitimate interests in a domain name. This has now been established in countless other decisions, and in this case, the Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii),in respect of all five disputed domain names.
In the present case, the Respondent has chosen not to file anything in its response despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain names, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in its favour.
The only information available about the Respondent is the WhoIs information, provided by the Registrar, GoDaddy. This contains no evidence of any rights or legitimate interests of the Respondent in any of the disputed domain names which, as found above, are confusingly similar to the Complainant’s distinctive and well-known trademarks AVEENO, ROGAINE and ZYRTEC. The Respondent makes no claim to having rights or legitimate interests in respect of any of the disputed domain names and provides no explanation whatsoever for their registration and use. As submitted by the Complainant, and not denied by the Respondent, the disputed domain names have been associated with, in the case of , , , and websites which purport to provide genuine information about the products Aveeno and Zyrtec. In the case of the disputed domain name it reverts to a site which is inactive. [See below for a fuller description of the content of all these websites]. All of this has taken place without the consent of the Complainant.
In Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903, the panel formulated a test for determining whether a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name. Under this test, the conduct of a respondent must comply with the following requirements:
(1) the respondent must actually be offering the goods of the complainant;
(2) the respondent must use the website to sell only the trademarked goods of the complainant;
(3) the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case, the websites associated with the disputed domain names contain no information about the Respondent and its relationship with the Complainant, and it has been asserted by the Complainant that none such exists. By registering the five disputed domain names, the Respondent has gone well beyond any potential legitimate use; it has made an attempt to corner the market and deprive the Complainant of the possibility of reflecting its own trademark in a similar domain name. It is evident therefore that the Respondent’s conduct does not comply with the elements of the above-mentioned Oki Data test.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names so that paragraph 4(a)(ii) of the Policy is also proved in respect of all five of the disputed domain names. C. Registered and Used in Bad Faith
In the present case, the disputed domain names are confusingly similar to the Complainant’s trademark AVEENO, ROGAINE, and ZYRTEC and clearly refer to the Complainant’s products. The websites at each of them are a curious mixture.
At both and there is what looks like an advertisement for the Complainant’s Aveeno product with an offer to save USD 5 by applying for a coupon. However it also contains links to other websites and coupons for other products such as tires, bed baths, and “Kellogg’s” as well as free printable coupons.
The two Zyrtec websites have a similar layout and links to coupons for “Children’s Claritin” New York Daily coupons, and “Great Savings for Moms”.
The Rogaine website contains just the word “forbidden”.
This is sufficient for the Panel to conclude that at the time of their registration, the Respondent was clearly aware of the Complainant, of at least two of its products, probably also of the third, and that it was using the disputed domain names without the Complainant’s consent.
In addition, the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain names.
It has also been held under the Policy that the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, in which it was said “VEUVECLICQUOT.ORG is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
Precisely the same argument applies in this case, since Aveeno, Rogaine, and Zyrtec are all very well-known and long established products.
Internet users accessing the Respondent’s websites at the disputed domain names may well believe that they are endorsed by the Complainant and that they can obtain money-off coupons by accessing them, not only for Complainant’s products but for a variety of other products too. This would be false. Therefore, and in the absence of any contrary evidence, the Panel accepts that the Respondent has registered and is using the disputed domain names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of these online locations or of the coupons offered on these location.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also proved for all of the disputed domain names.
The Complainant has also referred to, and appended copies of, five other domain names registered by the Respondent which incorporate the word “coupon” appended to what are clearly the trademarks of other manufacturers, but it has not indicated whether any of these domain names have also been the subject of a dispute under the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, , , , , and be transferred to the Complainant.
David H. Tatham
Sole Panelist
Dated: September 5, 2011
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