ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Johnson & Johnson v. Privacy Protected by Withheld for Privacy ehf / Fatih Dolan Case No. D2022-3076 1. The Parties The Complainant is Johnson & Johnson, United States of America ("United States"), represented by Fross Zelnick Lehrman & Zissu, PC, United States. The Respondent is Privacy Protected by Withheld for Privacy ehf, Iceland / Fatih Dolan, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2022. On August 19, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2022, the Registrar 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 the Complainant on August 24, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 25, 2022. The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 21, 2022. page 2 The Center appointed Evan D. Brown as the sole panelist in this matter on September 27, 2022. 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 describes itself as "the world's largest and most broadly based healthcare company". It owns many trademarks, including the mark JNJ which it has registered in many countries, including Canada (Reg. No. TMA646035, registered on August 18, 2005). JNJ is also the Complainant's stock symbol at the New York Stock Exchange, and is the domain name used with the Complainant's main website. According to the WhoIs records, the disputed domain name was registered on March 17, 2022. The Complainant asserts that the Respondent has used the disputed domain name in connection with fraudulent emails, thereby imitating the Complainant and deceiving unsuspecting third parties who believe they are seeking employment with the Complainant. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar This first element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the JNJ mark by providing evidence of its trademark registrations. page 3 The disputed domain name incorporates the JNJ mark in its entirety with the term "career", which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's JNJ mark. See WIPO Overview 3.0, section 1.8. The JNJ mark remains recognizable for a showing of confusing similarity under the Policy. The Complainant has established this first element under the Policy. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289. On this point, the Complainant asserts, among other things, that it has not granted any license or consent to the Respondent to use the JNJ mark in the disputed domain name. Instead, the only apparent use the Respondent has made of the disputed domain name is to send email messages in an attempt to impersonate the Complainant and thereby engage in fraudulent conduct. The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent's favor. Furthermore, the nature of the disputed domain name, which incorporates the Complainant's widely known trademark and a descriptive term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. Columbia Insurance Company v. Name Redacted, WIPO Case No. D2022-0528; WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or a product or service on [the respondent's] website or location". Because the Complainant and its JNJ mark is well-known, it is implausible to believe that the Respondent was not aware of that mark when it registered the disputed domain name. Moreover, the use to which the disputed domain name has been put - sending and receiving fraudulent emails - removes any such doubt. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent's activities of using the disputed domain name to send and receive fraudulent email. Archer-Daniels-Midland Company v. Privacy service provided by Withheld for Privacy ehf/ Venture Aviation, WIPO Case No. DCO2022-0037. For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element. page 4 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 name be transferred to the Complainant. /Evan D. Brown/ Evan D. Brown Sole Panelist Date: October 11, 2022
Full & Egal Universal Law Academy