WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson, Korres S.A. v. Georgios Sigalas
Case No. D2010-1602
1. The Parties
Complainants are Johnson & Johnson of New Brunswick, New Jersey, United States of America, and Korres S.A. of Athens, Greece, both represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
Respondent is Georgios Sigalas of Athens, Greece.
2. The Domain Name and Registrar
The disputed domain name <korresshop.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2010. On September 23, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 24, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on November 3, 2010. 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 trademark upon which the Complaint is based is KORRES. According to the documentary evidence and contentions submitted, Complainants own a number of registrations for the KORRES mark in different countries, including the CTM Registration No. 952681 issued on 09/07/04, and the United States Registration No. 2884224 issued on September 14, 2004.
According to the documentary evidence and contentions submitted, Complainant Korres S.A. was founded in 1996 and aims to utilize scientific resources for the creation of beneficial and safe cosmetic products. Complainant Korres offers over 400 natural and certified organic products, featuring a skin & hair care range, a make-up line as well as suncare products and herbal preparations, which are sold at leading department stores around the world and at 26 stand-alone Korres stores. Korres’ products are currently sold in 30 countries, including in Greece.
In 2009, Complainant Korres signed an agreement with Johnson & Johnson Consumer Products Co., a division of Complainant Johnson & Johnson (J&J) to become the exclusive licensee and distributor for Korres products in North America. The J&J family of companies includes an international consumer health company, an international medical devices and diagnostics company, an international biologics company and an international pharmaceuticals company.
According to the documentary evidence and contentions submitted, Complainants, either on their own or through affiliated companies, own and operate two primary websites, “www.korres.com”, which is the main website for the company and products information, and “www.korresusa.com”, which is a dedicated website for customers in the United States.
Pursuant to the documentary evidence, the domain name <korresshop.com> was registered with GoDaddy.com, Inc. on December 21, 2009. As the domain name registration would expire on December 21, 2010, Complainants have secured the renewal of the disputed domain name.
5. Parties’ Contentions
Complainants argue that the disputed domain name is confusingly similar to the KORRES mark because (i) it incorporates Complainants’ distinctive KORRES mark in its entirety, (ii) the generic term “shop” does nothing to distinguish the disputed domain name from Complainants’ registered mark, (iii) the generic top level domain (“gTLD”) indicator “.com” cannot be taken into consideration when judging confusing similarity, and (iv) given the reputation and renown of Complainants’ mark, most Internet users who see the disputed domain name are likely to immediately recognize Complainants’ marks, and assume that the disputed domain name and the website associated with it are owned, controlled or approved by Complainants, creating a probability of confusion.
Complainants further argue that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) no relationship exists between Respondent and Complainants or any of Complainants’ licensees, agents or affiliated companies that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name, (ii) Respondent knew of Complainants’ KORRES mark and wanted to trade on Complainants’ renown to lure consumers to its website, and (iii) even if the sponsored listings at Respondent’s website link to websites selling legitimate Korres merchandise, Respondent’s use of the disputed domain name is still not bona fide because for a reseller to make a bona fide use of a trademarked term in a domain name, Respondent must, inter alia, sell only the trademarked goods or services, and accurately disclose Respondent’s relationship with the trademark owner, but Respondent cannot satisfy this requirement either as the “www.korresshop.com” website links to competitors of Complainants and fails to disclose the lack of any relationship between Complainants and Respondent.
Finally, Complainants contend − that Respondent registered the disputed domain name in bad faith because Respondent has no connection with Complainants or any of their brands, or with any legitimate use of their KORRES mark and argue that where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith” (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Complainants further contend that (i) Respondent’s use of the disputed domain name to deceptively draw traffic to its parking site (containing links to Complainants’ competitors and others) to earn pay-per-click revenue constitutes bad faith use to trade on Complainants’ trademark and goodwill, (ii) Respondent’s mere holding of the disputed domain name is itself bad faith use in view of the renown of the KORRES mark and absence of likely legitimate uses by an unauthorized party like Respondent, (iii) the only reason for Respondent’s use of Complainants’ mark is to intentionally confuse consumers, to trade on Complainants’ rights and reputation, and to drive traffic to its website all for its own commercial benefit, and (iv) the fact that the disputed domain name was offered for sale, combined with the refusal to accept an offer from Complainants to pay Respondent’s transaction costs associated with the disputed domain name, “tends to suggest that eventual sale for profit was probably the true motivation for registration” (DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939).
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainants from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainants. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainants have complied with such requirements.
B. Identical or Confusingly Similar
The domain name <korresshop.com> incorporates the KORRES mark in its entirety. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. In fact, the addition of the term “shop” gives no distinctiveness to the disputed domain name since the term “shop” is used to identify a place where products can be found.
In this type of combination it is clear that the KORRES mark stands out and leads the public to think that the disputed domain is somehow connected to the owner of the registered trademark. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., TELSTRA CORPORATION LIMITED v. BARRY CHENG KWOK CHU, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the <korresshop.com> domain name is confusingly similar to the KORRES mark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in WIPO URDP panel decisions has been that a complainant is required to make out an initial prima facie case, thereby shifting the burden of demonstrating rights or legitimate interests in the domain name to the respondent. If the respondent fails to carry this evidentiary burden, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
The Panel accepts Complainants’ contentions that Respondent has no relationship with Complainants or any of Complainants’ licensees, agents or affiliated companies that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. By defaulting, Respondent failed to rebut such contentions and such facts as asserted by Complainants will be taken as true.
The Panel also concurs with the understanding of the majority view in the WIPO URDP Panel decisions that “a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.3). However, these requirements should be strictly construed. In fact, as stated in other WIPO panel decisions, “[r]espondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods”. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Nikon, Inc. and Nikon Corporation v. Technilab, WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095.
An independent investigation was conducted by the Panel by visiting the website at “www.korresshop.com” (access on November 16, 2010). The Panel notes that the website is being parked by GoDaddy.com, Inc. that the sponsored listings at Respondent’s website link to different products and services totally unrelated to the trademarked goods, and Respondent does not adequately disclose his relationship with the Complainants.
Accordingly, the Panel is convinced by the evidence produced in this case that Respondent has no rights or legitimate interests in the disputed domain name since he is not making a bona fide offering of goods or services.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
(i). Bad Faith Registration
This Panel concurs with previous WIPO UDRP decisions holding that registration of a known trademark as a domain name may be a clear indication of bad faith. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
The formation of the disputed domain name by means of the addition of the term “shop” to the word “korres” indicates that Respondent knew of Complainants’ KORRES mark and in fact wanted to take advantage of the reputation associated therewith. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith.
(ii). Bad Faith Use
Paragraph 4(b)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
The Panel also concurs with the understanding of several other WIPO panels that the use of a domain name to point to a website that offers sponsored links to other websites is an evidence of bad faith, particularly if, as in the instant case, complainants’ trademarks were registered and used before the registration of the disputed domain name. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. As indicated before, the website to which the disputed domain name resolves contains sponsored listings linking to different products and services totally unrelated to the trademarked goods.
According to the documentary evidence and contentions submitted, Complainants sent a cease and desist letter to Respondent on September 20, 2010 requesting that Respondent transfer the disputed domain name to Complainants. Respondent sent an email to Complainants’ counsel on September 22, 2010 refusing to transfer the domain name and indicating that he was negotiating with an unnamed third party to sell and transfer the domain name registration at an undisclosed price. When Complainants’ counsel wrote back offering to pay Respondent for his transaction costs associated with the disputed domain name if he would agree to suspend negotiations with the third party and transfer the disputed domain name to Complainants, Respondent refused to transfer the disputed domain name to Complainants.
While Respondent stated in his last email message to Complainants that “I am sorry but i didn't even now that Korress is a firm. Thank you anyway for informing me but i do not intend to transfer it to you”, the evidence suggests that eventual sale for profit was probably one of the true motivations for Respondent to register and use the disputed domain name. For that determination the Panel takes into consideration (i) the combination of the words “korres” and “shop”, (ii) the fact that there does not seem to be any plausible reason why Respondent would have chosen the disputed domain name; (iii) the fact that Respondent has simply “parked” the disputed domain name, and (iv) the fact that Respondent was willing to sell the disputed domain name but did not agree to sell it to Complainants for his documented out-of-pocket costs directly related to the disputed domain name.
Therefore, the Panel concludes that the information provided by the Complainants, including the contents of Respondent’s website, indicates bad faith in the acquisition and use of the disputed domain name, and notes that Respondent has done nothing to supplant that indication.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <korresshop.com> be transferred to the Complainant Johnson & Johnson.
Manoel J. Pereira dos Santos
Dated: November 16, 2010