The Complainant is Johnson & Johnson, United States of America (“United States” or “U.S.”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is 李思恒 (Li Si Heng), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name On April 27, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 27, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2021. The Center appointed Jonathan Agmon as the sole panelist in this matter on June 14, 2021. 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, Johnson & Johnson, was founded in 1930 in Zurich, Switzerland by Emanuel Stolarofff. The Complainant’s NEUTROGENA product line dates back nearly 90 years when Stolaroff started working together with Edmond Fromont, a Belgian chemist, who had developed a clear soap that cleaned but did not leave skin dry after use. Fromont had been selling the product under the NEUTROGENA mark since 1951 and Stolaroff acquired the rights to distribute Fromont’s soap in 1954. Subsequently, Stolaroff’s company’s name was changed to Neutrogena Corporation in 1962. Since then, the Complainant has been selling a variety of NEUTROGENA products, including, sunscreens, shampoo, conditioners and so forth. When the Complainant acquired Neutrogena Corporation in 1994, it had annual sales of more than USD 300 million and its annual sales in the United States have since grown to over USD 1 billion per year. Through extensive use and advertising over the years, the Complainant’s NEUTROGENA’s marks have become uniquely identified with the Complainant’s products and acquired goodwill. The Complainant owns numerous trademark registrations for the NEUTROGENA mark around the world, including in the U.S. and China: - U.S. Trademark Registration No. 2,019,977 registered on November 26, 1996; and The Complainant also owns the domain The disputed domain names The Complainant argues that the disputed domain names are confusingly similar to its NEUTROGENA marks as the disputed domain names incorporate the NEUTROGENA mark in its entirely and merely adding the descriptive terms “sunscreen” and “shampoo”. The addition of the generic terms “sunscreen” and “shampoo” fails to eliminate any confusion between the disputed domain names and the NEUTROGENA marks. The addition of the generic top-level domain (“gTLD”) “.com” is a technical requirement and should not be taken into consideration when assessing confusing similarity. The Complainant also argues that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant did not license or authorize the Respondent to use its NEUTROGENA marks and the Respondent is not commonly known by the disputed domain names. The disputed domain names resolve to websites which attempt to pass off as the Complainant by featuring prominent use of the NEUTROGENA marks and photographs of the Complainant’s products which does not constitute bona fide use of the disputed domain names. The websites also feature third-party links to webpages which are related to skincare. The Complainant further argues that the Respondent registered and is using the disputed domain names in bad faith by confusing the public as to the source, sponsorship, affiliation, or endorsement of the websites to which the disputed domain names resolve to. The disputed domain names appear to mimic the Complainant and mislead the public into believing, falsely, that they are associated with and have a connection with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of Proceedings Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The language of the Registration Agreements for the disputed domain names The Complainant requested that the language of the proceeding be English for the following reasons: (i) the disputed domain names are in English; and (ii) the disputed domain names’ websites were in English. The Respondent did not comment on the language of the proceeding. The Panel cites the following with approval: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). Having considered the above factors, the Panel determines that English be the language of the proceeding. The Panel agrees that the Respondent appear to be familiar with the English language, taking into account its selection of the English-language disputed domain names and the content of the corresponding websites. In the absence of an objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. 6.2 Substantive Issues A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides an indication that the rights in the mark belong to its respective owner. The Complainant has registered rights in the trademark NEUTROGENA. The Panel finds that the Complainant’s trademark has acquired goodwill and reputation as a result of its continuous and extensive use since at least 1951. The disputed domain names Further, it is well established that the addition of the generic Top-Level Domain “.com” is disregarded under the first element confusing similarity test. (See WIPO Overview 3.0, section 1.11.1.) Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns a trademark registration for NEUTROGENA long before the disputed domain names were registered. The Complainant is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). There is also no evidence on record showing that the Respondent is commonly known by the disputed domain names (see WIPO Overview 3.0, section 2.3). The disputed domain names appear to be used for the purposes of passing off as the Complainant, and the websites also contain third party links to websites which purport to sell the Complainant’s products without authority or license, although the Complainant claims these links do not seem to be active. In addition, the Panel finds that the nature of the disputed domain names carries a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its NEUTROGENA trademark. Considering the dictionary terms which are the names of some of the Complainant’s popular products used in combination with the Complainant’s trademark in the disputed domain names, it is highly unlikely that the Respondent did not know of the Complainant and its NEUTROGENA mark prior to registration of the disputed domain names. The disputed domain names incorporate the Complainant’s NEUTROGENA trademark in its entirety with additional terms, which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels have ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). The disputed domain names which resolve to websites attempting to pass off as the Complainant by featuring prominent use of the Complainant’s NEUTROGENA mark and images of the Complainant’s products with third-party links purporting to sell the Complainant’s products, cannot but be considered to have been registered and used in bad faith. The Respondent did not submit a Response in this proceeding which is a further indication of the Respondent’s bad faith, which was considered by the Panel. Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain names and the Complainant’s mark, the fact that the disputed domain names are being used to pass off as the Complainant and the fact that no Response was submitted by the Respondent to the Complaint, and that any good faith use of the disputed domain names is implausible, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith. 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 Jonathan Agmon
- China Trademark Registration No. 46250006 registered on January 21, 2021.
Sole Panelist
Date: June 28, 2021
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