WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Christianne Schelling
Case No. DBIZ2002-00283
1. The Parties
The Complainant is Johnson & Johnson, with place of business in New Brunswick, New Jersey, United States of America ("USA").
The Respondent is Christianne Schelling, Three Rivers, California, USA.
2. The Domain Name and Registrar
The disputed domain name is <healthywoman.biz>.
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Dulles, Virginia, USA.
3. Procedural History
(a) Complainant initiated this proceeding under the Start-Up Trademark Opposition Policy for .biz ("STOP") by filing a complaint received via e-mail by the WIPO Arbitration and Mediation Center (the "Center") on July 30, 2002, and received in hardcopy on August 2, 2002. Following notice from the Center of filing deficiencies, Complainant transmitted an amended complaint received by the Center on August 13, 2002. The Center verified that the amended complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("Supplemental STOP Rules"). Complainant paid the requisite filing fees.
(b) Following an exchange of e-mail between Complainant and Respondent regarding the outcome of an earlier STOP proceeding, the Center confirmed to Complainant by e-mail of August 12, 2002, that it was allowed to proceed with the challenge because the decision in the prior proceeding left the disputed domain name with Respondent and authorized further IP Claims (See Rodale, Inc. v. Christianne Schelling, WIPO Case No. DBIZ2002-00130).
(c) On August 21, 2002, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent by courier and e-mail, and advised that the deadline for transmission of a response was September 10, 2002.
(c) On September 11, 2002, the Center transmitted by e-mail notification to Respondent of its default in responding to the complaint.
(d) Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on September 23, 2002, the Center appointed the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter and notified the parties of the appointment. The Center advised the Panel that absent exceptional circumstances it would be required to forward its decision to the Center by October 7, 2002.
(e) The Center advised the Panel via e-mail of September 24, 2002, that there are no additional IP Claimants in the queue.
(f) The Panel has received no additional requests or transmittals from the parties, and has not found it necessary to request additional information. These proceedings have been conducted in English.
4. Factual Background
Complainant has registered the word trademark "HEALTHY WOMAN" on the Principal Register of the United States Patent and Trademark Office (USPTO), Reg. No. 2,291,301, dated November 9, 1999, in International Class (IC) 5, covering "pharmaceutical products for menstrual wellness, namely, vitamins". Complainant asserted a date of first use and first use in commerce of May 21, 1999. (Complaint, para. 13 & Annexes 3 & 4). Complainant also holds trademark registrations for the word and device mark "HEALTHY WOMAN" in a number of other countries. Complainant asserts that it maintains thirty-two such active registrations outside the United States, and it has provided one certificate of registration (Taiwan) in support. Complainant asserts that its registrations outside the United States encompass dietary supplements, vitamins and minerals, also in IC 5. (Id., para. 13 & Annex 5)
Complainant is the registrant of the domain names <healthywoman.net>, <healthywoman.be>, <healthy-woman.ca>, <healthywoman.info> and <healthywoman.us>. Complainant maintains an active commercial website at Internet address (URL) http://www.healthywoman.net, providing information concerning its womenís vitamin supplement products. (Id., para. 13 & Annex 7)
Complainant states that its vitamin supplements "are sold in grocery stores, drug stores, and health stores throughout [the United States]".
According to a .BIZ Registry (NeuLevel, Inc.) WHOIS database report furnished by Complainant, Respondent registered the disputed domain name <healthywoman.biz> on March 27, 2002, (id., Annex 1).
There is no evidence on the record of this proceeding of any use by Respondent of the disputed domain name.
Respondent is the registrant of at least 28 domain names in the .com gTLD, including <softpaws.com>, <petvaccines.com>, and <wholesalebeauty.com>. The registration data for a number of Respondentís domain names includes the statement "This Domain is For Sale" beneath Respondentís name. (Id., at para. 13 & Annex 9). An active commercial website at URL "http://www.softpaws.com" advertises a product to prevent cat claw damage in the household. (Id., at para. 13 & Annex 8).
Respondent is a doctor of veterinary medicine (DVM) (id., para. 13 & Respondentís e-mail to Complainant of August 8, 2002, including professional title).
The .BIZ Registration Agreement incorporates the STOP and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, revised November 19, 2001). In registering the disputed domain name with the registrar, Network Solutions, Inc., Respondent accepted the .BIZ Registration Agreement. In doing so, Respondent consented to be bound by the STOP and STOP Rules. The STOP and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which WIPO is one. This Panel is appointed by the Center to decide the complaint under the STOP pursuant to the STOP Rules.
5. Partiesí Contentions
Complainant asserts that is has rights in the trademark "HEALTHY WOMAN" based on its use in commerce in the United States, and as evidenced by its registration at the USPTO and with registration authorities in countries outside the United States (see Factual Background supra).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent has not prepared to use the disputed domain name, that it is not commonly known by the name, and that "[t]he famous nature of Complainantís HEALTHY WOMAN® mark prevents Respondent from being commonly known by or having legitimate interests" in the name. Complainant notes that "To the contrary, Respondent is a veterinarian that operates a Web site and conducts business under the ĎSchelling Veterinary Servicesí or ĎSoft Pawsí name."
Complainant alleges that Respondent registered and/or has used the disputed domain name in bad faith. Complainant states that Respondent has not been authorized to use the disputed domain name, that Respondent had notice of Complainantís mark prior to completing its registration of the name and thus notice of "the likelihood of a contest over the registration of Complainantís mark" and the "potential conflict". Complainant argues that such notice precludes the possibility of registration in good faith "under the facts and circumstances here".
Complainant further alleges that Respondent is preventing Complainant from registering the disputed domain name, and that Respondent has a "history of warehousing domain names that she has passively held for sale."
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
The STOP is a set of rules applying to the resolution of domain name disputes involving an IP Claimant that has been notified by NeuLevel, the Registry Operator of the .biz gTLD, regarding the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) that has been applied by Administrative Panels in determining numerous disputes. However, the STOP differs from the UDRP in certain material respects regarding comparison of the mark and the domain name, the enumerated criteria for establishing rights or legitimate interests, the enumerated elements necessary to demonstrate bad faith and in the types of remedy available. The Panel will make findings under the STOP necessary to render a determination in this dispute.
As a preliminary matter, the Panel notes that this is the second STOP proceeding initiated against Respondent with respect to the disputed domain name. In the first proceeding, Rodale, Inc. v. Christianne Schelling, WIPO Case No. DBIZ2002-00130, the panel determined that the complainant failed to establish rights in a trademark or service mark, and ordered that the disputed domain name would remain registered to Respondent. As in this proceeding, Respondent did not reply to the earlier complaint, and the panel determined that Respondent had not established rights in the disputed domain name. On the basis of these findings, the panel in the earlier proceeding authorized this additional challenge.
In order to establish the right to transfer of a name from a respondent, a complainant under the STOP must demonstrate pursuant to paragraph 4(a):
(i) The disputed domain name is identical to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
The complainant must prove that each of these three elements is present.
The Center transmitted notification of the complaint and the complaint by air courier and e-mail to Respondent at the addresses set forth in its registration of the disputed domain name. The e-mail transmission is shown to have been undertaken successfully, and there is no indication in the file that the courier mailing was not successfully delivered. In addition, Respondent corresponded with Complainant regarding the status of the earlier proceeding regarding the disputed domain name, indicating that Respondent was aware of the initiation of this proceeding. The Panel finds that the Center took the steps prescribed by paragraph 2(a) of the STOP Rules for communicating with Respondent. Paragraph 2(e) of the STOP Rules provides that when communication has been undertaken in accordance with paragraph 2(a), such communication "shall be deemed to have been made". The Panel finds that Respondent had notice of this proceeding within the meaning of the STOP Rules.
Complainant has submitted evidence of its rights in the word trademark "HEALTHY WOMAN", including registration on the Principal Register at the USPTO (see Factual Background, supra). The Panel determines that Complainant has rights in the trademark "HEALTHY WOMAN" and that the disputed domain name <healthywoman.biz> and the mark are identical within the meaning of the STOP.
This sole panelist had occasion to analyze the elements necessary for establishing a famous mark in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 and Monty and Pat Roberts v. J. Bartell, WIPO Case No. D2000-0300. Among the principal criteria for establishing fame are "the degree of inherent or acquired distinctiveness of the mark" and "the duration and extent of use of the mark in connection with the goods or services with which the mark is used".
The words "healthy woman" form a common descriptive phrase in the English language. The USPTO has permitted Complainant to register this phrase in connection with the sale of vitamins for menstrual wellness, which appears to be a descriptive use of the phrase (that is, Complainantís vitamins are intended to promote health in women), though arguably the phrase might be used in a suggestive sense. Assuming that the phrase is descriptive, the USPTO presumably determined that it has become sufficiently distinctive in connection with Complainantís vitamin products to merit registration as a mark. Whether its mark is descriptive or suggestive, Complainant carries a substantial burden to demonstrate that a common descriptive phrase such as "HEALTHY WOMAN" has achieved a sufficient level of recognition among the consuming public in connection with its products to be considered a "famous" mark. Complainant has not carried that burden here.
Complainantís asserted first use in commerce of the mark is relatively recent, dating back only to 1999. Complainant has stated that its products are sold at stores throughout the United States, but has provided no evidence regarding the volume of sales, the extent of advertisement (other than by providing a single web page printout), nor evidence of consumer identification of the mark with the products. Complainant states that its mark is registered in thirty-two other countries, but has provided evidence as to only one such registration, and has provided no further details regarding consumer identification of the mark with Complainantís products outside the United States. The Panel does not accept Complainantís assertion regarding the famous character of its "HEALTHY WOMAN" mark.
Respondent has not replied to the complaint, and has offered no basis upon which the Panel might conclude that it has established rights or legitimate interests in the disputed domain name. Respondent has not established that it owns or is beneficiary of a mark identical to the disputed domain name, that it has made preparations to use (or used) the name for a bona fide offering of goods or services, or that it has been commonly known by the domain name. The Panel will consider the significance of the common descriptive nature of Complainantís mark in its determination regarding the element of bad faith. Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
The STOP includes a non-exhaustive list of circumstances that will demonstrate bad faith registration or use of a disputed domain name:
"(i) Circumstances indicating that [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 [its] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on your web site or location." (para. 4(b), STOP)
Complainant has argued that Respondentís failure to use the disputed domain name is evidence of bad faith. The NeuLevel distribution procedure for .biz domain names effectively precluded use of the name for thirty days following registration (in the presence of IP Claims). Respondent has been subject to two successive challenges under the STOP regarding the name. Under these circumstances, the Panel is unable to draw an adverse inference from Respondentís failure to use the name.
Paragraph 4(b)(iv), STOP, provides that "using" the disputed domain name to mislead Internet users is evidence of bad faith registration or use. Active misleading use of a name would be required to fall within the express terms of this provision. Nevertheless, there are circumstances that will raise a sufficiently high probability and risk associated with misleading use, such as registration of a famous name and additional bad faith factors (e.g., false contact information), that a determination that bad faith registration occurred absent active use will be justified (noting that the factors listed in paragraph 4(b)(iv) are not exhaustive).
In this proceeding, Complainantís mark is a common descriptive phrase that might reasonably be used by Respondent in many ways that will not take unfair advantage of Complainantís trademark rights. Complainant has not presented evidence suggesting that Respondent intends to use the disputed domain name in a misleading way. The Panel does not consider that mere registration of <healthywoman.biz> is sufficient to establish an inference of intent to use the mark in a way that would take unfair advantage of Complainantís rights in its mark.
By operation of the NeuLevel start up procedure for the distribution of .biz domain names, Respondent was notified of Complainantís claim to rights in the "HEALTHY WOMAN" mark prior to completing its registration of the disputed domain name. Complainant has argued that by proceeding with registration following notice of Complainantís claim to rights in its mark, Respondent could not have acted in good faith in the circumstances of this case, referring to Gene Logic Inc v. Cho Kyu Bock, NAF Case No. FA00103042. However, in circumstances in which a common descriptive phrase is claimed as a mark, and in which there are many potential non-misleading uses of the mark in a domain name, the Panel does not draw an inference that mere knowledge of the claimed mark constitutes bad faith. The determination in Gene Logic v. Cho Kyu Bock, involved materially different and distinguishable circumstances (that is, a distinctive well known mark being used in a domain name by a person working in the same specialized field as the holder of the mark). The panel in Gene Logic made clear that determinations regarding inferences from registration with knowledge of an IP Claim are context specific.
There is no direct evidence that Respondent registered the disputed domain name to prevent Complainant from registering it. There is no evidence that Respondent intended to disrupt Complainantís business.
Respondent has not offered to sell the name to Complainant or any other party. Complainant notes that Respondentís registration data for a number of .com gTLD names includes the notation that the domain name is for sale. If Respondent were offering to sell domain names that incorporated the marks of third parties, this might constitute a pattern of conduct evidencing bad faith intent with respect to the disputed domain name. However, Complainant has not suggested that any of the .com domain names registered and offered for sale by Respondent incorporate the marks of third parties, and there is nothing wrongful in merely offering to sell domain names.
Complainant holds trademark rights in a common phrase "HEALTHY WOMAN" that it uses in connection with vitamin supplements. This does not preclude Respondent or third parties from using the phrase "HEALTHY WOMAN" in a way that does not infringe Complainantís rights in its mark. Complainant has not pointed to factors other than registration of the <healthywoman.biz> domain name by Respondent that would reasonably lead the Panel to conclude that Respondent registered the name in bad faith.
The Panel finds that Complainant has not established that Respondent registered or used the disputed domain name in bad faith, and therefore declines to direct the registrar to transfer the name.
Based on its determination that Complainant, Johnson & Johnson, has failed to establish that Respondent, Christianne Schelling, registered or used the disputed domain name <healthywoman.biz> in bad faith within the meaning of paragraph 4(a)(iii) and 4(b) of the STOP, the Panel declines to direct the registrar to transfer the disputed domain name to Complainant.
Frederick M. Abbott
Dated: October 3, 2002