ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Johnson & Johnson v. Do Little, JnJ Case No. D2022-4383 1. The Parties The Complainant is Johnson & Johnson, United States ("United States"), represented by Fross Zelnick Lehrman & Zissu, PC, United States. The Respondent is Do Little, JnJ, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Porkbun LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2022. On November 17, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 (Whois Privacy, Private by Design, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 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 November 23, 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 November 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2022. The Center appointed Colin T. O'Brien as the sole panelist in this matter on December 21, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background For more than 100 years, Complainant has been manufacturing and selling consumer products globally. Complainant as more than 250 operating companies in 60 countries around the world, employing approximately 114,000 people. "www.jnj.com" is Complainant's main website for its consumers around the world. The domain name is also used as Complainant's primary corporate email address and Complainant's employee email addresses use the subdomain its.jnj.com. The stock symbol for Complainant at the New York Stock Exchange is also JNJ. Complainant owns longstanding trademark registrations for its JNJ mark, not only including the Canadian Registration No. TMA646035, registered August 18, 2005, but also: - Mexican Reg. Nos. 745574, 745575, 745576, 745577 and 745573; - Argentine Reg. Nos. 2609107, 2605490, 2601403, 2601404 and 2605491; - Brazilian Reg. Nos. 824644921, 824638611, 824638620, 824638646, 824638654 and 824638638. The Domain Name was registered by the Respondent on August 17, 2022 and is inactive. 5. Parties' Contentions A. Complainant Through Complainant's use and registration of the JNJ mark around the world, the JNJ Mark has come to be exclusively associated with Complainant and its products. The Domain Name was registered decades after Complainants' trademarks were registered around the world and the Domain Name is identical and/or confusingly similar to Complainants' JNJ Marks. There does not appear to have ever been any relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Name. The Domain Name is confusingly similar to Complainant's JNJ Marks, as the Domain Name incorporates Complainant's distinctive JNJ trademark in its entirety, merely adding the non-distinctive term "connect" as well as the ".com" generic Top Level-Domain to Complainant's JNJ trademark. Given that Complainant's adoption and extensive use of the JNJ trademark predates the Respondent's registration of the Domain Name, the burden of production is on Respondent to show evidence of its rights or legitimate interests in the Domain Name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant's trademark in domain names or in any other manner. Respondent has made no use of the Domain Name since its creation. "There is no evidence to suggest that that the Respondent has, before notice of the dispute, made demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name or that the Respondent is or has been making legitimate noncommercial or fair use of the Domain Name without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant's trademark. page 3 Complainant is one of the best-known companies in the world. It is therefore inconceivable that Respondent was unaware of JNJ mark when it registered the Domain Name. Because the ultimate effect of any use of the Domain Name will be to cause confusion with Complainant, the use and registration of the Domain Name must be considered to be in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated it owns registered trademark rights in the famous JNJ trademark throughout the world. The addition of the term "connect-" does not prevent a finding of confusing similarity as the Complainant's JNJ mark is clearly recognizable in the Domain Name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Accordingly, the Domain Name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent has not been commonly known by the Domain Name. The fact that the Respondent obtained the Domain Name decades after the Complainant had begun using its globally famous JNJ mark, indicates that the Respondent sought to piggyback on the mark for illegitimate reasons. After a complainant has made a prima facie case, the burden of production shifts to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Here, the Respondent has provided no evidence of any rights or legitimate interests in the Domain Name, and rather the nature of the disputed domain name itself, being confusingly to the Complainant's well-known JNJ mark with the term "connect", suggests that it was registered to eventually impersonate or falsely suggest sponsorship or endorsement by the Complainant (see section 2.5.1 of the WIPO Overview 3.0). In absence of any evidence rebutting the Complainant's prima facie case indicating the Respondent's lack of rights or legitimate interests in respect of the Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Domain Name was registered years after the Complainant first registered and used its JNJ mark. The evidence provided by the Complainant with respect to the extent of use and global fame of its JNJ mark, a mark with no meaning other than in connection to the Complainant. This, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Domain Name was registered, the Respondent undoubtedly knew of the Complainant's widely known JNJ mark, and knew it had no rights or legitimate interests in the Domain Name. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or page 4 widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The Panel finds that the only plausible basis for registering and passively holding the Domain Name is for illegitimate and bad faith purposes. Accordingly, the Panel finds that the Domain Name has been registered and is 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 name be transferred to the Complainant. /Colin T. O'Brien/ Colin T. O'Brien Sole Panelist Date: January 4, 2023
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