WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Tylenol Company v. Farmacias Mexicana, SA DE CV
Case No. D2002-0597
1. The Parties
The Complainant is The Tylenol Company, a wholly-owned subsidiary of Johnson & Johnson, P.O. Box 151, Route 22 West, Somerville, New Jersey, United States of America.
The Respondent is Farmacias Mexicana, SA de CV, located at Av. Insurgentes # 632, Mexico City, Distrito Federal 11850, Mexico.
2. The Domain Names and Registrar
The domain names at issue are <tylenol-3.com> and <free-tylenol.com>
(hereinafter referred to as the Domain Names).
The Registrar for the Domain Names is Tucows, Inc. (hereinafter referred to as the Registrar).
3. Procedural History
On June 26, 2002, Complainant filed a Complaint, drafted in the English language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center"). The Complaint was received via e-mail on June 26, 2002. The hardcopy was received on June 27, 2002.
On June 28, 2002, the Acknowledgement of Receipt of Complaint was sent to the Complainant. On the same date, the Center sent the Request for Registrar Verification.
On June 28, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Names registrant and further confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Names registration;
- the Respondent is the current registrant of the Domain Names registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Names;
- the Domain Names will remain locked during the pending administrative proceeding;
- the language of the Registration Agreement is English;
- the jurisdiction at the location of the principal office of the Registrar for court adjudication does apply as per section 7 of the Registration Agreement;
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "WIPO Supplemental Rules"), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 2, 2002.
The Panel has reviewed the documentary evidence provided by the parties and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Supplemental Rules.
On July 2, 2002, the Center informed the Respondent of the commencement of the proceedings as of July 2, 2002, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a Response to the Center being July 22, 2002.
In a letter dated July 24, 2002, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Supplemental Rules and that an Administrative Panel would be appointed based on the number of panelists designated by the Complainant.
On July 31, 2002, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties and transmitted the Case File.
The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and has issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to August 14, 2002, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint and the documents submitted in support thereof:
The Complainant is a wholly-owned subsidiary of Johnson & Johnson.
The Complaint is based on the mark TYLENOL registered with the U.S. Patent and Trademark Office. In support of the Complaint, the Complainant relies on the following U.S. trademark registrations:
(a) Reg. No. 890,360 ó TYLENOL for analgesic, antipyretic preparations; registered May 5, 1970; renewed in 1990; and with incontestable status.
(b) Reg. No. 1,252,705 ó TYLENOL CODEINE 3 & Capsule Design for a narcotic analgesic medication; registered October 4, 1983; and with incontestable status.
(c) Reg. No. 1,621,973 ó TYLENOL for use in connection with allergy, sinus and cold medication; registered November 13, 1990; and with incontestable status.
(d) Reg. No. 1,777,613 ó TYLENOL PM for use in connection with analgesic sleeping aids; registered June 22, 1993; and with incontestable status.
(e) Reg. No. 1,852,189 ó TYLENOL FLU for use in connection with pharmaceutical preparation, namely, flu, cold, and cough medication; registered September 6, 1994; and with incontestable status.
Copies of the certified copies of these registrations were attached as Annex C to the Complaint showing the Complainantís ownership of these registrations.
The Tylenol Company, successor-in-interest to McNeil Consumer Brands, Inc. by change of name, has granted to McNeil-PPC, Inc., a New Jersey corporation with a place of business at Kilmer Square, 100 Albany Street, New Brunswick, New Jersey 08903 ("McNeil-PPC"), a license to use the TYLENOL® mark, including the registrations set forth above, in connection with the marketing and sale of various over-the-counter ("OTC") medications. Through its licensee McNeil-PPC, The Tylenol Company engages in the business of manufacturing and selling OTC pharmaceutical, health, and personal care products, including a well-known line of OTC analgesics containing acetaminophen sold under the brand name TYLENOL®.
The Tylenol Company has granted to Ortho-McNeil Pharmaceutical, Inc., a Delaware corporation with a place of business at U.S. Route 202, Raritan, New Jersey 08869 ("Ortho-McNeil"), a license to use the TYLENOL® mark in connection with the marketing and sale of prescription medications. Through its licensee Ortho-McNeil, The Tylenol Company engages in the business of manufacturing and selling prescription medications, including a prescription analgesic containing acetaminophen and codeine sold under the name TYLENOL CODEINE 3®. The Tylenol Company, McNeil-PPC, and Ortho-McNeil are all owned by Johnson & Johnson.
The Tylenol Companyís predecessors-in-title began selling TYLENOL® childrenís elixir in 1955 and the TYLENOL® trademark has been used continuously and exclusively since then on a variety of analgesic preparations. Adult regular-strength TYLENOL® was introduced in 1961 and extra-strength TYLENOL® was launched in 1975. Thereafter, a number of multi-symptom OTC products containing acetaminophen and other active ingredients were launched under the TYLENOL® name, including allergy, sinus, cold, flu, sleep-aid, and menstrual pain preparations. In 1981, "TYLENOL® with Codeine" was introduced as a prescription analgesic containing acetaminophen and codeine.
The Domain Names <tylenol.com> and <tylenol.net> are registered to the Complainantís parent company, as shown by printouts of the corresponding Whois records for these Domain Names attached as Annexes D and F to the Complaint. Moreover, there is a website accessible at the <tylenol.com> Domain Name and copies thereof were attached as Annex E to the Complaint.
The domain name registrations for <tylenol.org> and <tylenol.net> were transferred to Johnson & Johnson pursuant to the orders of WIPO Panels that considered the bad faith registration and use of the domain names. See McNeil Consumer Brands Inc v. Mirweb Solutions, WIPO Case No. D2000-0612, a copy of which is attached as Annex G; McNeil Consumer Brands, Inc. v. Washington Surgical Services, WIPO Case No. D2000-1657, a copy of which is attached as Annex H to the Complaint.
The Respondent registered the Domain Names <tylenol-3.com> and <free-tylenol.com> on April 11, 2002, and May 27, 2002, respectively.
The Complainant sent a protest letter to Respondent by certified mail, return receipt requested, notifying Respondent that The Tylenol Company owned the TYLENOL® and TYLENOL CODEINE 3® trademarks, objecting to Respondentís registration of the <tylenol-3.com> Domain Name, and demanding that Respondent surrender the Domain Name to The Tylenol Company. A copy of this protest letter is attached as Annex I to the Complaint. This letter was returned as undeliverable. A copy of the returned envelope is attached as Annex J to the Complaint.
5. Partiesí Contentions
Over and above the uncontested and unchallenged factual background as noted above, which is hereby incorporated herein by reference, it has been contended by:
h Johnson & Johnson, the parent company of The Tylenol Company, owns the Mexican trademark registration for the TYLENOL® mark, Registration Number 332,683.
h Its registrations of the TYLENOL marks are conclusive evidence of the validity of the TYLENOL and TYLENOL CODEINE marks and of their registrations, of the Complainantís ownership of the marks and its exclusive right to use them.
h TYLENOL® is one of the best-known and best-selling OTC analgesics in the United States and is sold in virtually every food, drug, mass merchandise, and convenience store in the country. TYLENOL® has been an extremely successful brand in both OTC and prescription channels. During the past 40 years, substantial sums have been expended in both consumer and professional advertising for products bearing the TYLENOL® name.
h As a result of these advertising and marketing efforts, the TYLENOL® trademarks have acquired enormous fame, goodwill, and nearly universal recognition among consumers and members of the medical community.
h The word "TYLENOL" was coined as the brand name for an analgesic containing acetaminophen. It has no meaning in any language apart from serving as a brand signifier for The Tylenol Companyís TYLENOL® products. The TYLENOL® name is arbitrary, fanciful and distinctive in the analgesic category.
h The <tylenol-3.com>and <free-tylenol.com> Domain Names registered by Respondent are identical or confusingly similar to The Tylenol Companyís trademarks.
h Respondent has no rights or legitimate interests in the <tylenol-3.com> and <free-tylenol.com> Domain Names. It can demonstrate none of the rights or legitimate interests set out at Paragraph 4(c) of the Policy.
h The Tylenol Company and its licensees have exclusive rights to the TYLENOL® trademark and have not given Respondent a license or any other permission to use the "TYLENOL" name.
h The <tylenol-3.com> and <free-tylenol.com> Domain Names in no way resemble Respondentís name.
h Respondent cannot demonstrate that it has used the <tylenol-3.com> and <free-tylenol.com> Domain Names to make a bona fide offering of goods or services. Respondent has made no commercial use of the domain names. No commercial website has ever been attached to either the "tylenol-3.com" or "free-tylenol.com" addresses.
h The <tylenol-3.com> and <free-tylenol.com> Domain Names have been registered and are being used in bad faith within the meaning of Policy Paragraph 4(b).
h Just as the WIPO Panels that considered the registrations of the <tylenol.org> and <tylenol.net> Domain Names concluded that those Domain Names should be transferred to McNeil Consumer Brands, Inc., the <tylenol-3.com> and <free-tylenol.com> Domain Names should also be transferred to The Tylenol Company. See McNeil Consumer Brands Inc. v. Mirweb Solutions, WIPO Case No. D2000-0612 (Annex G to the Complaint); McNeil Consumer Brands, Inc. v. Washington Surgical Services, WIPO Case No. D2000-1657 (Annex H to the Complaint).
h Given the TYLENOL® markís enormous fame, Respondent was clearly aware of The Tylenol Companyís mark when it registered the <tylenol-3.com> and <free-tylenol.com> Domain Names.
h A registrantís passive holding of a domain name registration, as Respondent has done here, can amount to use in bad faith, taking into consideration the overall context of the Respondentís behavior. Actual affirmative use of the domain name is not required.
The Respondent has either chosen to abstain or has failed to file a timely Response with the Center.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the Domain Names are identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Names; and
(iii) that the Domain Names were registered and used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Names and Complainantís Trademark
The Panel finds Complainant has rights in the TYLENOL mark having used it in connection with various types of medical and pharmaceutical products.
While the Domain Names are not identical to Complainantís TYLENOL mark, the Panel finds that they are confusingly similar. The test of confusion in comparing the words or marks at issue is from the stand point of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.
The Domain Names incorporate in whole Complainantís famous registered TYLENOL mark and the only deviation is that Respondent has added the number "3" and the generic term "free" as a suffix. The Panel adopts the finding in Viacom Internationall Inc. v. MTVMP3.COM, WIPO Case No. D2001-0275 and Parfums Christian Dior v. Netpower, Inc., WIPO Case No. D2000-0022 where it was decided that the addition of a generic term to a famous mark (such as TYLENOL) creates a domain name that is confusingly similar to the trademark. Because the Domain Names refer to "TYLENOL", consumers are likely to believe that they refer to websites that concern information on medications or pharmaceutical products.
Additionally, the fact that the word "TYLENOL" was coined as the brand name for analgesic containing acetaminophen and that it has no meaning in any language apart from serving as a brand signifier for The Tylenol Companyís TYLENOL products enhances its inherent distinctiveness and potentially broadens its ambit of protection.
Pursuant to the above mentioned reasons, the Panel is therefore of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.
(ii) Rights or Legitimate Interests in the Domain Names by Respondent
The Panel finds the Respondent has no rights or legitimate interests in the Domain Names given there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Names. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark.
Moreover, Respondent has not even attempted to explain or rebut the indications that it has not made any commercial use of the Domain Names, by which it could have established that it has rights or legitimate interest in the Domain Names.
For these reasons, the Panel concludes that, on a balance of probabilities, the Complainant has discharged its burden to show that the Respondent has no rights or legitimate interests in the Domain Names especially since there has been no explanation or evidence offered by the Respondent to establish the contrary.
(iii) Bad faith in Registration and Use of the Domain Names by the Respondent
It is most of the time quite difficult, if not impossible to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. Panelís understanding of the Policy is that although the initial burden to prove Respondentís bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw negative inferences. In the case at hand, the Respondent has elected (or failed) not to put forward any justification for its acquisition of the Domain Names and, in the circumstances, the Panel does draw a negative inference out of such omission. See Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 and InterTrade Systems Corporation v. Donna Lawhorn, FA0204000112488 ( Nat. Arb. Forum July 15, 2002).
This is particularly so, given that Internet users are likely to be induced to believe that the Domain Names connect to websites associated with or sponsored by Complainant given Complainantís use of the TYLENOL mark. Further, by using Complainantís mark in its Domain Names without any appearance of interest, Respondent is attempting to ride on the fame of Complainantís mark and use that fame to divert consumers to its websites for commercial advantage.
Additionally, the Complainant has submitted that the passive holding of a domain registration can amount to use in bad faith, taking into consideration the overall context of the Respondentís behavior. It relies on the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. On this matter, the Panel adopts the finding in McNeil Consumer Brands Inc. v. Mirweb Solutions, WIPO Case No. D2000-0612 (August 3, 2000):
"The Panel is prepared to follow the analogy of the Telstra case and to
accept the Complainantís submissions as follows:-
a. That the Complainantís mark TYLENOL is a coined arbitrary term that has no meaning apart from in relation to the Complainantís products.
b. The Respondent has held the domain name "Tylenol.org" passively thereby preventing the Complainant from reflecting its trademark TYLENOL in a corresponding domain name.
d. The Respondent has failed to put the domain name to any legitimate non commercial or fair use.
In the absence of submissions from the Respondent the Panel is prepared to accept that there is no counter evidence of any legitimate non commercial or fair use and that accordingly the registration of the domain name "Tylenol.org" was in bad faith."
Consequently, the Panel finds that Complainant has satisfied its burden to show that Respondent acted in bad faith in registering and using the Domain Names.
For the foregoing reasons, the Panel finds that:
- The Domain Names registered by the Respondent are confusingly similar to the trademark to which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used by the Respondent in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the Domain Names <tylenol-3.com> and <free-tylenol.com> be transferred to the Complainant and directs the Registrar, Tucows, Inc., to do so forthwith.
Jacques A. Léger, Q.C.
Dated: August 14, 2002