WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Rong Hai
Case No. D2011-1673
1. The Parties
The Complainant is Johnson & Johnson of New Brunswick, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Rong Hai of Shanghai, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cleanclear.com> (the “Domain Name”) is registered with 35 Technology Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2011. On October 4, 2011, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the Domain Name. On October 9, 2011, 35 Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 11, 2011, the Respondent sent an email communication to the Center requesting for the Complaint. On October 12, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On October 12, 2011, the Complainant confirmed its request that English be the language of proceeding. On October 12, 2011, the Respondent requested that Chinese be the language of proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on October 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. The Center received email communications from the Respondent on October 14, 2011, October 16, 2011, October 17, 2011, October 19, 2011, and October 24, 2011, respectively. The Response was filed with the Center on October 31, 2011.
The Center further received a Supplemental Filing from the Complainant on November 4, 2011, and a Supplemental Filing from the Respondent on November 9, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on December 1, 2011. 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 Complainant is one of the world’s leading consumer health companies, the world’s largest medical device and diagnostics company, the world’s fourth largest biologics company and the world’s eighth-largest pharmaceutical company. It has more than 250 operating companies in 60 countries around the world. The Complainant is the owner of the trade mark CLEAN & CLEAR which is a well known brand of skin care, acne care product and is sold in the United States and 45 other countries. Sales in the United States for 2010 were USD170 million.
The Complainant owns multiple trade mark registrations for the CLEAN & CLEAR marks around the world including in the United States, the European Union and China. The trade mark registrations include marks which incorporate the CLEAN & CLEAR mark such as CLEAN & CLEAR ADVANTAGE and CLEAN & CLEAR AND UNDER CONTROL. The Complainant owns and operates the website “www.cleanandclear.com” which provides product information for consumers around the world. This website averages around 8,000 unique visitors per day.
The Domain Name was registered on May 26, 2001. At the time of the filing of the Complaint, the Domain Name was not connected to an active website. Internet archives show that the Domain Name had previously been used in connection with a blog with no connection and no commentary on the Complainant’s Clean & Clear products. Since the filing of the Complaint, the Domain Name is connected to a personal blogging site that includes a photo album.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Name should be transferred.
Identical or Confusingly Similar
The Complainant contends that it has established significant trade mark rights in CLEAN & CLEAR which predate the registration of the Domain Name. Use of the mark around the world began since the 1950s.
Ignoring the generic top-level domain “.com” when considering identity and confusing similarity, the Complainant contends that the Domain Name is identical to the Complainant’s CLEAN & CLEAR mark as it incorporates the CLEAN & CLEAR mark in its entirety. The deletion of the ampersand is not material especially in the context of the Internet.
Rights or Legitimate Interests
The Complainant contends that it has never authorized or permitted the Respondent to register the Domain Name. There is no relationship between the Complainant and the Respondent or any of the Complainant’s licensees, agents or affiliated companies that would give rise to any license, permission or authorization for the Respondent to use or register the Domain Name.
Given that the Complainant’s use predates the Respondent’s registration of the Domain Name, the burden is on the Respondent to establish its rights or legitimate interests in the Domain Name. The Respondent is not commonly known by the Domain Name. The only reason that the Respondent could have for registering and using the Domain Name is that the Respondent knew of the CLEAN & CLEAR marks and wanted to trade on the Complainant’s renown to lure customers to its website. A website which trades on the fame of another as is this case cannot constitute a bona fide use.
The fact that the Domain Names was used in a connection with a blog is not an excuse for the Respondent’s behavior as the blog contained no commentary, criticism, parody or other fan related content relating to the CLEAN & CLEAR mark. Further there was no disclaimer regarding the lack of any connection between the Respondent and the Complainant.
Registered and Use in Bad Faith
The Complainant contends that given that the Respondent has never been authorized by the Complainant to use the CLEAN & CLEAR mark, the very fact the Respondent has registered the Domain Name establishes bad faith use and registration. The CLEAN & CLEAR mark enjoys wide recognition. It is therefore inconceivable that the Respondent was unaware of the Complainant’s CLEAN & CLEAR mark when it registered the Domain Name. The ultimate effect of any use of the Domain Name will be to cause confusion with the Complainant and therefore the use and registration of the Domain Name is in bad faith.
The failure of the Respondent to use the Domain Name in connection with an active website demonstrates the Respondent’s bad faith.
The Respondent denies that the Domain Name should be transferred to the Complainant for the following reasons:
Identical or Confusingly Similar
The Respondent does not make any submissions under this head.
Rights or Legitimate Interests
The Respondent contends that he made an agreement with his wife when they fell in love in 2001 that they would name their future son in Chinese, “睿祯” (Ruizhen) and in English, “Clean” and their future daughter in Chinese, “睿辰” (Ruichen) and in English, “Clear”. He says that the current laws in China allow for couples to have two children legally. Hence, the Respondent registered the Domain Name which comprised the English names of his future children. His original intention was to use the Domain Name to connect to a personal website for his future children. For the same reason, the Respondent also registered the email account with the same name cleanclear@[...] later in January 2002.
The Respondent contends that as the legal guardian of his children, he has the right to give his children both English and Chinese names. The English names given to Chinese people do not require formal legal certificates. The Respondent himself used his English name, “Fancy” when he registered the Domain Name. As such, the Respondent, as legal guardian of his children, has rights or legitimate interests in their English names.
Registered and Use in Bad Faith
The Respondent’s case is that he registered the Domain Name for personal use, i.e. to build a personal website of his children. There was no intent on the part of the Respondent to use the Domain Name commercially, to cause confusion or to tarnish the brand. At the time that the Respondent registered the Domain Name in 2001, the Complainant did not use the trade mark CLEAN & CLEAR in China in a manner to indicate that it was a registered trade mark.
The Respondent’s first child was born in May 2011. A copy of a birth certificate evidencing this was submitted. The website connected to the Domain Name was under construction at the time the child was born. Since then, the website is used as a personal photo album, blog and calendar. Since the registration of the Domain Name, the Respondent has never used it in connection with the Complainant’s products or services. All use has been noncommercial use.
During the 10 years since the Respondent registered the Domain Name, the Complainant has never complained nor contacted the Respondent regarding the Domain Name. The Respondent has never considered selling, renting or transferring the Domain Name to anyone.
The Respondent contends that his holding and using the Domain Name does not hinder the Complainant’s use of its own domain name <cleanandclear.com>. The Respondent’s use is only for personal use and not for profit. The Respondent has never put any products, service or advertisements related to the Complainant on the webpages connected to the Domain Name, nor attempted to attract consumers of the Complainant to visit Domain Name nor tried to bring damage to the business of the Complainant.
C. Supplemental Submissions
The Complainant took issue with several points raised in the Response. At the time that the Domain Name was registered, neither of the Respondent’s children had been born. In fact, at this time, only one child “睿辰” (Ruichen) has been born. In order to establish that he has rights or legitimate interests, the Respondent has to prove that he or his children have been commonly known by the Domain Name. Since the Respondent only has one child, it will be impossible for him to ever to prove this. Further, the Respondent needs to provide evidence to prove that Internet users would associate the Domain Name with him rather than the Complainant trade mark owner. In this case, only after the Complaint was filed did the Respondent activate the website connected to the Domain Name. This is insufficient to show that Internet users will associate the Domain Name with the Respondent rather than the trade mark owner.
The two Chinese names, “睿祯” (Ruizhen) and “睿辰” (Ruichen) do not translate to mean “clean” and “clear” in English. The Respondent himself is not commonly known by the Domain Name. No disclaimer is posted at the website connected with the Domain Name. In any event, confusion will exists before it becomes clear to any visitor that the Domain Name has nothing to do with the Complainant. The use made of the Domain Name is not fair use.
The Respondent filed a reply to the Complainant’s supplemental submission. The Respondent has never claimed that “Clean” and “Clear” is the transliteration or translation of the names, “睿祯” (Ruizhen) and “睿辰” (Ruichen). It is common practice for the Chinese to have English names that do not correspond to their Chinese names. For example, the movie star, Jackie Chan’s English name has no connection to his Chinese name Cheng Long. Nor has the Bruce Lee’s English name any connection to his Chinese name, Li Xiaolong.
6. Discussion and Findings
A. Preliminary Issues
(i) Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement in relation to the Domain Name is Chinese.
The Complainant submits in Section IX of the Complaint and in its submission dated October 12, 2011 in response to the Center’s request regarding the language of the proceeding that irrespective of the language of the registration agreement, the language of the proceeding should be English. The Domain Name is in the English language and there is evidence that the Respondent is familiar with the English language, namely, the email from the Respondent sent to the Center on October 11, 2011 is both in English and Chinese.
On the other hand, the Respondent submits in its Response and its various emails to the Center that the language of the proceeding should be in Chinese. The registration agreement is in Chinese, he is born, resides and is a national of China and his mother tongue is Chinese. Being an ordinary individual from China, he does not have the means to employ a translator or lawyer. Whilst he has a basic knowledge of English, he has found it difficult to understand the Complaint, the Policy, the Rules and the various procedures as well as drafting his Response in English. A translation machine is not suitable for translating the type of documents that form part of the proceedings. The Complainant on the other hand is a Fortune 500 company with access to lawyers and professional translators. It also employs for than 7,000 workers in China. As such for fairness and impartiality, the language of the proceeding should be Chinese.
The Panel has considered the submissions of both sides. The Respondent has not only been able to respond fully to a complaint filed in the English language and has sent emails in the English language, he has also on several occasions corrected the inconsistency of the English and Chinese version of the Center’s emails. It appears that the Respondent has no difficulty in understanding the English language, and the Respondent has successfully participated in the proceedings. In the interest of fairness and practicality and having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
(ii) Supplemental Submissions
The Consensus View in the WIPO Overview of WIPO Panel Views on selected UDRP questions, Second edition (“WIPO overview 2.0”) states that as the UDRP rules grant the panel sole discretion to decide whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing.
In this case, the Panel accepts the supplemental filings of both parties as they are relevant to the case.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name was registered and is being used in bad faith.
Failure to prove any one of these factors is fatal to the Complaint.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark CLEAN & CLEAR.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark CLEAN & CLEAR is the dominant portion of the Domain Name. The absence of the ampersand does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic top-level domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview 2.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Panel after considering all the arguments made and evidence submitted on both sides finds that the Respondent has failed to establish that he has rights or legitimate interests in the Domain Name. The Respondent’s account of his reason for choosing the Domain Name is too incredible to believe. The Panel accepts that many Chinese are given English names which are not translations or transliterations of Chinese names. The Panel also accepts that many Chinese opt for non-traditional English names but even so naming one’s children “Clean” and “Clear” is unusual in the extreme. To decide on these two names some 10 years before the birth of any children is again far fetched and difficult to believe. The fact that these names just happen to be the unique combination of a major international brand is too much of a coincidence. Further, no evidence has been submitted to show that this was in fact the intention of the Respondent when he registered the Domain Name. Neither the Respondent nor his child/future child can be said to be commonly known by the Domain Name.
The Respondent has not been able to show that he falls within paragraph 4(c)(iii) either. The reasons for choosing the Domain Name is so fantastical that making a finding that his use is legitimate is impossible.
For the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a conjunctive requirement in that both aspects must be established.
The Panel accepts that the Complainant’s trade mark CLEAN & CLEAR was well known internationally well before the registration of the Domain Name. Whilst the Complainant did not make it clear in the Complaint when the trade mark CLEAN & CLEAR was in fact used and registered as a trade mark in China, the Respondent in his Response submitted evidence to show that at the time of registration of the Domain Name, the mark was in fact used in China. The Respondent’s contention that the Complainant did not indicate that the trade mark was registered at the relevant time, rather than assisting him under this head of the Policy instead show that he (Respondent) was aware of the Complainant’s use of its trade mark (whether or not he believed that mark to be registered or not). The Panel does not accept the Respondent’s explanation as to why he chose the Domain Name, and finds it more probable that the Domain Name was selected by the Respondent with the Complainant in mind. Thus, the Panel concludes on balance that the Respondent deliberately registered the Domain Name in bad faith.
The Consensus View in the WIPO Overview 2.0 states that panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In this case, the Respondent has not yet done anything offensive in relation to the actual use of the Domain Name. In the 10 years he has registered the Domain Name, there have been occasional blogging and since the filing of the Complaint, use of the Domain Name as a site for photographs of his first child and links to more blogging, all of which at present has no connection with the Complainant’s products or trade mark. Notwithstanding the above, given the circumstances of the registration, the fact that there was only sporadic use of the Domain Name before the filing of the Complaint and the rather unbelievable explanation provided by the Respondent in choosing the Domain Name, following the reasoning in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel is of the view that it is reasonable that the Respondent’s intentions are abusive and therefore his use of the Domain Name cannot be considered legitimate.
In light of these particular circumstances, the Panel concludes that the Respondent’s registration and use of the Domain Name in this particular case satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name was registered and is being used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <cleanclear.com> be transferred to the Complainant.
Dated: December 22, 2011