WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prisma Presse v Johnson & Johnson
Case No. DBIZ2002-00178
1. The Parties
The Complainant is Prisma Presse having its registered offices at 6 rue Daru 75008, Paris, France.
The Respondent is Johnson & Johnson of One Johnson and Johnson Plaza, New Brunswick, NJ, 08933, United States of America.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <ppi.biz> (the "Disputed Domain Name").
The registrar of the Disputed Domain as at the date of the Complaint is Virtual Internet, PLC of European Operations Center, Elysium House, 126-128 New Kings Road, London, SW6 4LZ, United Kingdom.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by Neulevel Inc. and approved by the Internet Corporation for Assigned Names ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by Neulevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") via email on April 27, 2002, and in hard copy on April 30, 2002. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant.
The Complainant stated that a copy of the Complaint together with the cover sheet had been sent or transmitted to the Respondent on April 27, 2002, by email, in accordance with Paragraph 2(a) of the WIPO Supplemental STOP Rules.
On May 8, 2002, the Center sent the Complainant via email an Acknowledgement of Receipt of Complaint.
Pursuant to Paragraphs 2(a) and 4 of the STOP Rules the Center forwarded an email to the registrar of the Disputed Domain Name, Virtual Internet Plc, on May 30, 2002, requesting Virtual Internet Plc to indicate the specific language of the registration agreement as used by the Complainant for the Disputed Domain Name.
On May 30, 2002, the Center received an email from Virtual Internet Plc confirming that the language of the registration agreement is English.
The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the STOP rules) on June 3, 2002, to the Respondent by post/courier (with enclosures) and by email (without attachments) and to the Complainantís Representative by email. The Center sent a copy of the Complaint (without attachments) on June 3, 2002, to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar, Virtual Internet Plc.
The Respondent failed to file a Response in the time allowed and has not filed a Response to date so far as the Panel is aware.
A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on June 24, 2002. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute.
The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center by email on July 12, 2002.
The Center sent a Transmission of Case File to the Panel by email on July 16, 2002. The documentation was received in hard copy by the Panel on July 19, 2002, in Sydney, Australia.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following is asserted as fact by the Complainant and remains uncontested.
The Complainant is a French company with a share capital of 3 048 980 Euro registered with the Paris Registry of Commerce and Companies under nļ B3 1 8826187.
4.2 The Complainantís Trademarks
The following is asserted as fact by the Complainant and remains uncontested.
The Complainant states that it is the owner of registrations for the following trademarks:
(a) PPI PRISMA PRESSE INTERACTIVE (with device) nļ 3106005, French trademark registered on June 6th, 2001 in classes 9, 16, 35, 38, 41 and 42; and
(b) PPI PRISMA PRESSE INTERACTIVE (with device) nļ 3105981, French trademark registered on June 6th, 2001 in classes 9, 16, 35, 36, 38, 41 and 42.
4.3 The Complainantís Use of the Trademarks
The following information is asserted as fact by the Complainant and remains uncontested.
The trademarks PPI are used for the title and corporate name of a notorious French company named "PPI - PRISMA PRESSE INTERACTIVE". This company was created in 2000 and develops the Internet activities of the Complainant: 20 interactive services and more than 7 important web sites.
The Complainant also asserts that the Complainant owns the following domain names:
<ppi.info>; <PrismaPresseInteractive.com>; <PrismaPressIneractive.net>; <PrismaPresseInteractive.org>; <PrismaPresseInteractive.fr>; <Prisma-Presse-Interactive.net>; <Prisma-Presse-Interactive.org>; <PrismaPresseInteractive-mag.com>; <PrismaPresseInteractive-mag.org>; <PrismaPresseInteractive-mag.net>; <prisma-interactive.org>; <prisma-interactive.net>; <prismainteractivem-mag.org>; <prisma-interactive.com>; <prismainteractive-mag.com>; <prismainteractive-mag.net>; <prismainteractive.net>; <prismainteractive.org>; <prismainteractive.com>.
The Complainant also asserts that the Complainant has spent several million French Francs to create "the firm PPI" and develop its activity under its trademarks.
Annexed to the Complaint are various publications and media extracts, which contain reference to, or information about, the Complainant, which is referred to as "Prisma Presse".
4.4 Activities of the Respondent
As stated above, no Response to the Complainant has been filed.
No information as to the activities of the Respondent is asserted in the Complaint.
5. The Complainantís contentions in the Complaint
5.1 The Complainant asserts that each of the elements specified in Paragraph 4(a) of STOP have been satisfied.
5.2 In reference to the element in Paragraph 4 (a)(i) of STOP, the Complainant asserts that the Disputed Domain Name <ppi.biz> is identical to the registered trademarks "PPI" owned by the Complainant.
5.3 In reference to the element in Paragraph 4 (a)(ii) of STOP, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name registered in March 27, 2002.
The Complainant asserts that the Respondent is not a licensee of the Complainant, and is in no way authorized to use the Complainantís trademarks. The Complainant further asserts that Respondent does not own any trademark including the word "PPI".
The Complainant asserts that it is consequently the owner of the above trademarks and is the only one authorized to use the said trademarks. Consequently, the Respondent, which has no link of any nature with the Complainant, does not have any legitimate interest in using the Disputed Domain Name.
5.4 In reference to the requirement of Paragraph 4 (a)(iii) of STOP, the Complainant asserts that the Disputed Domain Name should be considered as having been registered or used in bad faith by the Respondent on the following basis:
(a) PPI is a notorious company protected by the trademarks before mentioned and by its corporate name.
The Respondent cannot ignore the existence of "PPI" which has a strong reputation, and is well known worldwide for its Internet activities.
Therefore, the Disputed Domain Name has been registered in bad faith.
(b) Besides, prior to any notice to the domain name registrant of the dispute, there is no evidence of the registrantís use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.
Nothing indicates that the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name.
6. Discussion and Panel Findings
This section is structured by reference to the elements required by Paragraph 4(a) of the STOP Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present. As noted above, the Respondent has failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, has not filed a Response at all. Accordingly, all assertions in the Complaint are uncontested and, under Paragraph 5(e) of the STOP Rules, the Panel is required to decide the dispute based upon the Complaint alone.
Notwithstanding this rule, in order to be successful, the Complainant still bears the burden of proving, on the balance of probabilities, that all three elements of Paragraph 4(a) of STOP are present, and this Panel reserves the right to rely upon Paragraph 10 of the STOP rules to avail itself of such publicly available material as it deems appropriate to corroborate or substantiate any assertions made in the Complaint and Response (if any).
6.1 Domain Name identical to trademark in which the Complainant has rights
The Disputed Domain Name is <ppi.biz>. The Complainant owns two trademark registrations in France for "PPI PRISMA PRESSE INTERACTIVE". Paragraph 4(a)(i) of STOP requires that the Disputed Domain Name be identical to a trademark or service mark in which the Complainant has rights. The Panel has taken a strict view of the meaning of "identical" in paragraph 4(a)(i). The Panel is of the view that the Disputed Domain Name constitutes only a small portion of the Complainantís trademark registration. The Panel is of the view that the Complainant cannot claim proprietary rights or an interest in a domain name that constitutes only a selected aspect of their trademark registration. The Panel notes that if the Disputed Domain Name was a domain name that was subject to the Uniform Domain Name Dispute Resolution Policy,to succeed a complainant must prove, inter alia, that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, the Panel in the present proceedings would have found in favor of the Complainant in respect to this particular element of STOP. However, the Panel has interpreted Paragraph 4(a)(i) of STOP narrowly, and is of the view that the Disputed Domain Name is not identical to the Complainantís trademark registrations.
Cedar Trade Associates Inc v Greg Ricks (NAF 93633), concerned the domain name <buypc.com>. That case establishes that a common law (ie unregistered) trademark will be treated in the same way as a registered trademark under the Uniform Domain Name Dispute Resolution Policy. In the additional evidence provided by the Complainant in the annexures to the Complainant there is no reference to the mark "PPI" on a standalone basis where the Complainant or the goods and services offered by the Complainant is being referred to. The Panel has seen insufficient evidence to find that the Complainant has a common law trademark right to "PPI".
Accordingly, the Panel finds that the Disputed Domain Name is not identical to a trademark or service mark in which the Complainant has rights.
6.2 The Respondent has no rights or legitimate interests in the Disputed Domain Name
The Complainant asserts that the Respondent has no legitimate rights or interest in the Disputed Domain Name. The Respondent has not rebutted this assertion. However, the onus is on the Complainant to provide evidence to support its assertion.
Paragraph 4(c) of STOP lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the Disputed Domain Name. The Panel has seen no evidence to support an inference that any of these circumstances exist. The mere act of registering a domain name does not grant the registrant a legitimate interest in the domain name. The Panel finds no evidence that the Respondent is the owner or beneficiary of a trade or service mark that is identical to the Disputed Domain Name.
The Respondent has provided no evidence that it has entered into licensing arrangements with the Complainant to use the trademark "PPI" or derivatives of this trademark.
The Panel does note its disapproval of respondents ignoring administrative proceedings and notes that the Panel is in a position to draw adverse inferences from the failure by a respondent to respond to administrative proceedings. However, the Panel is not prepared to infer that a major organization such as the Respondent has no basis for its use of <ppi.biz>. This is despite what this Panel had to say in WIPO Case No. DBIZ2002-00070 involving the same Respondentís failure to file a response. A cursory search of PPI on the Respondentís website ("www.jnj.com") reveals that PPI is an acronym for Proton Pump Inhibitor, and that Respondentís subsidiary, Janssen Pharmaceutical Inc, co-markets such a product under the ACIPHEX brand name.
The Complainant has not discharged its onus of proving on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, the Complainant has not made out Paragraph 4(a)(ii) of STOP.
6.3 The Disputed Domain Name has been registered and is being used in bad faith
The Panel notes that Paragraph 4(c)(iii) of STOP requires the Complainant to demonstrate that the Disputed Domain Name was either registered or used in bad faith. Due to the Disputed Domain Name not being utilized by the Respondent, the Panel must determine whether the Complainant has demonstrated that the Disputed Domain Name was registered in bad faith.
In order to show bad faith registration by the Respondent, the Complainant asserts that the Respondent cannot ignore the existence of "PPI" which has a strong reputation, and is well known worldwide for its internet activities. The Complainant further asserts that there is no evidence of the Respondentís use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.
STOP identifies for the purposes of Paragraph 4(c)(iii) circumstances, if found, that would be considered evidence of the registration or use of a domain name in bad faith. These circumstances are as follows:
(a) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to that domain name; or
(b) The Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(c) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) By using the domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on your web site or location.
In this matter the Complainant has not tendered any evidence at all to support a finding that any element in paragraph 4(b) of STOP is made out, or a finding that the Disputed Domain Name was registered or being used in bad faith. The Complainant has not provided any evidence to indicate that the Complainant has attempted to contact the Respondent to inquire what interest the Respondent has in the Disputed Domain Name and whether the Respondent would be willing to transfer the Disputed Domain Name to the Complainant. While the Panel finds this unusual it is not determinative. Furthermore, there is no evidence before the Panel that the Complainant and Respondent are operating in similar markets nor any evidence of any mala fides by the Respondent towards the Complainant.
The mere fact that the Respondent has registered the Disputed Domain Name, by itself, does not prove that the Disputed Domain Name was registered or is being used in bad faith. Nor does the fact (if it had been proven, which it has not) that the Respondent may have known that the Complainant would be unable to register the Disputed Domain Name if it was registered by the Respondent lead to a finding without more that the Respondent registered or is using the Disputed Domain Name in bad faith.
Furthermore, the Respondentís use of PPI as an acronym for Proton Pump Inhibitor appears to be unexceptionable and is a strong contra-indication of a lack of bona fides.
The Complainant has failed to discharge its burden of proving that the Respondent registered or is using the Disputed Domain Name in bad faith and therefore the Panel finds that Paragraph 4(a)(iii) of STOP has not been made out.
The Panel finds that the Complainant has failed to prove any of the requirements of Paragraphs 4(a)(i) to 4(a)(iii) of STOP, and accordingly dismisses the Complaint.
There are two further pending challenges to the Disputed Domain. Pursuant to Paragraph 15(e) of STOP Rules the Panel has determined that subsequent challenges under STOP against the Disputed Domain Name are permitted provided that they are not brought by, or on behalf of, the Complainant.
Philip N. Argy
Dated: July 29, 2002