WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Ebubekir Ozdogan
Case No. D2015-1031
1. The Parties
1.1 The Complainant is Johnson & Johnson of New Brunswick, New Jersey, United States of America, represented by Dundar Law Firm, Turkey.
1.2 The Respondent is Ebubekir Ozdogan of Çankaya, Ankara, Turkey.
2. The Domain Names and Registrar
2.1 The disputed domain names <desitin-pisik-kremi.com> and <listerineturkiye.com> (the "Domain Names") are registered with eNom (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 17, 2015, the Registrar transmitted by email to the Center its verification response providing the contact details of the Respondent as registrant of the Domain Names.
3.2 The Center contacted the Registrar on June 18, 2015, regarding the expiration of the Domain Name <desitin-pisik-kremi.com>, which was set to expire on June 21, 2015. The Registrar confirmed that this Domain Name might be deleted if it was not renewed but also informed the Center that the Complainant had the option to renew this Domain Name to prevent deletion. The Center forwarded the Registrar's indications to the Parties.
3.3 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").
3.4 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 June 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2015.
3.5 Later on June 25, 2015 the Respondent sent emails to the Center claiming that the Domain Names did not belong to the Respondent because they had expired and requesting that the Center "do not disturb" him. He also claimed in a further email not to be the owner "of the written two websites". No formal or substantive Response was subsequently filed by the Respondent,
3.6 The Complainant informed the Center by email on August 13, 2015, that it would not proceed with the renewal of the Domain Name <desitin-pisik-kremi.com>. The Center acknowledged receipt of it and informed the Complainant that any further procedural steps, including the termination of the proceeding concerning that Domain Name <desitin-pisik-kremi.com>, would be at the discretion of the Panel.
3.7 The Center appointed Matthew Harris as the sole panelist in this matter on September 3, 2015. 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
4.1 The Complainant is a company based in the United States and is part of the Johnson & Johnson group of companies, whose business was founded in 1886. The group is one of the world's largest consumer health business, with more than 265 operating companies in more than 60 countries products include "Destin", which is used in connection with nappy rash, and "Listerine", which is an oral health care product.
4.2 The Complainant is the owner of numerous registered trade marks that comprise or incorporate the terms "Listerine" or "Desitin". They include:
(i) United States registered trade mark No. 4088794 for the word mark DESITIN filed on October 7 2010 in class 3;
(ii) United States registered trade mark No. 3218074 for the word mark LISTERINE filed on June 5, 2006 in class 3;
(iii) Turkish registered trade mark No. 78196 for the word mark LISTERINE registered on June 12, 1958 in classes 3 and 5; and
(iv) Turkish registered trade mark No. 2010-75814 for the word mark DESITIN registered on February 21, 2012 in class 3.
4.3 The Respondent would appear to be an individual based in Turkey who is the owner of an online pharmacy store that operates from the website "www.botanikecza.com" directed to Turkish customers.
4.4 The Domain Name <desitin-pisik-kremi.com> was registered on June 21, 2014 and the Domain Name <listerineturkiye.com> was registered on April 7, 2014. Subsequent to registration, the Domain Names appear to have been used for websites in Turkish promoting the Complainant's DESITIN and LISTERINE products.
4.5 On April 10, 2015, the Complainant's legal representatives sent letters to the Respondent, inter alia, requiring the Respondent to transfer the Domain Names to the Complainant and complaining about the use of the Complainant's "copyrighted images" on the websites operating from the Domain Names.
4.6 Subsequent to that letter, the Domain Names were instead used to redirect Internet users to pages on the Respondent's "www.botanikecza.com" website. Those pages also appear to have promoted the Complainant's products, but also had links to pages promoting other products.
4.7 The Domain Name <listerineturkiye.com> is still being used for this purpose as at the date of this Decision. However, the Domain Name <desitin-pisik-kremi.com> does not resolve to an active website, presumably because that Domain Name expired prior to the formal commencement of these proceedings.
5. The Status of the Domain Name <desitin-pisik-kremi.com>
5.1 It is convenient first to address the fact that one of the Domain Names, <desitin-pisik-kremi.com>, expired before the proceedings was formally commenced and that neither party has sought to renew it.
5.2 The fact that a domain name has expired, does not necessarily mean that the domain name will be deleted or that UDRP proceedings cannot be brought in respect of that domain name. The domain name will usually first enter a redemption period during which the registrant can retrieve the domain name. Only after that redemption period has come to an end will it be liable for deletion and become available for registration by the public at large. Therefore, UDRP proceedings can be validly commenced whilst the domain name is still in the redemption period. The issues here were previously examined by the Panel in Grundfos A/S v. Bridge Port Enterprises Limited WIPO Case No. D2008‑1263.
5.3 However, in the case of the Domain Name <desitin-pisik-kremi.com>, the redemption period has expired without renewal with the registration status "PendingDeletion". It is the Panel's understanding that if these proceedings are terminated the Domain Name will finally proceed to deletion and neither Party will be able to intervene to stop this from happening. This also appears to be the Complainant's understanding and the Complainant has not taken steps to prevent this from occurring despite being notified of the potential consequences. Given this, the Panel sees no reason why the proceedings should not be terminated so far as this particular Domain Name is concerned, in accordance with paragraph 17(b) of the Rules.
5.4 Accordingly, the rest of this Decision is confined to considering the position of the Domain Name <listerineturkiye.com> under the Policy, and references to "the Domain Name" should be understood accordingly.
6. Parties' Contentions
6.1 The Complainant contends that the Domain Name comprises its trade mark LISTERINE and the word "Turkiye" which is the Turkish word for "Turkey". It claims that the addition of the geographical descriptor "Turkiye" does not prevent a finding of confusing similarity.
6.2 The Complainant contends that the Respondent is not a distributor of, or affiliated with, the Complainant and that the Domain Name was registered without the Complainant's authorisation. It characterises the Respondent's registrations activities as "for use as an unauthorized commercial website providing information about the respective products and providing links to the Respondent's other website "www.botanikecza.com", where the Respondent is offering [the Complainant's] products for sale".
6.3 The Complainant also contends that the Respondent's websites attempt to convey the impression of affiliation with, or sponsorship, by the Complainant, when this is not the case. In this respect, it claims that the Respondent has used on webpages appearing from the Domain Name images in which the Complainant holds the copyright.
6.4 The Complainant also maintains that the Respondent clearly knew of the Complainant and its products when he registered the Domain Name given the fame of those marks. Further, it claims that by using the Domain Name:
"the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location"
6.5 The Complainant also contends that the Respondent's use of its copyright protected images also shows bad faith on the part of the Respondent.
6.6 The Respondent did not file a formal Response to the Complaint. Various emails were sent to the Center by the Respondent in connection with the Complaint, the contents of which are set out in the "Procedural History" section of this decision.
7. Discussion and Findings
7.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.
7.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and are being used in bad faith (paragraph 4(a)(iii)).
7.3 The Panel will address each of these requirements in turn.
A. Identical or Confusingly Similar
7.4 The Panel accepts that the only sensible reading of the Domain Name is as the terms "Listerine" and "turkiye" in combination with the generic Top-Level Domain ".com". The Complainant clearly is the owner of a number of word marks for LISTERINE and the addition of term which is the Turkish word for "Turkey" does not prevent the Domain Name being confusingly similar with those marks for the purposes of the Policy. The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.5 There seems to be no dispute that the Respondent has used the Domain Name to promote the sale of genuine LISTERINE products, even if he or his business is an unauthorised distributor of those products.
7.6 When and in what circumstances a reseller or distributor may have a right or legitimate interest in a domain name that incorporates the mark of the products being sold is addressed in section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") as follows:
"Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]"
7.7 Arguably, it is for a Respondent to show that the Oki Data principles apply (see for example, Owens Corning v. NA, WIPO Case No. D2007-1143). However and in any event, the Panel does not accept that these principles apply in this case. Essentially, the Complainant contends that the Domain Name (as well as <desitin-pisik-kremi.com>) has been used to misrepresent that the Respondent is affiliated or associated with the Complainant when he is not (as opposed to, as the Oki Data principles require, accurately and prominently making it clear that his business is merely an unconnected distributor of the Complainant's products). The Panel accepts the Complainant's credible and clear claim, in the absence of any claim or evidence on the part of the Respondent to the contrary. There is also the undisputed claim of the Complainant that the Respondent has used the Complainant's images and photographs without the Complainant's permission. Although not determinative of itself, it is consistent with the Complainant's claim that the Respondent is trying to misrepresent its relationship with the Complainant.
7.8 Further, there is the fact that at least recently the Domain Name has been used to redirect Internet users to the Respondent's "www.botanikecza.com" website, which promotes not just the Complainant's LISTERINE products but also other products. This is contrary to the Oki Data requirement that a domain name only be used to sell or promote the trade marked products.
7.9 Last but by no means least, even were the Respondent to satisfy the Oki Data requirements, the Complainant considers this to be a case of impersonation by means of the Domain Name alone. In the relevant section of the WIPO Overview 2.0 quoted above this is expressed as a situation where a respondent has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>). However, in the opinion of the Panel, the Complainant's contention expresses the position referenced in the WIPO Overview 2.0 too narrowly.
7.10 The issue was explored by this Panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, a case involving the domain name <unofficialblackberry.com> and one of the cases cited by the WIPO Overview 2.0 in this respect. In that decision the Panel stated (starting at paragraph 6.18) as follows:
"This Panel believes that in a case where the domain name used by a distributor is essentially identical to a trade mark (or a domain name that incorporates a trade mark without some distinguishing feature) then it is strongly arguable that there are no rights or legitimate interests (and there is also bad faith) even if the Oki Data requirements might be satisfied."
"There is a clear analogy here with the position in "criticism" site cases. Recently there are a number of cases under the Policy that have held that there can be no rights or legitimate interests in the use of a domain name that comprises another's trade mark even if the registrant intends to use the domain name for the purposes of a noncommercial site that is critical of the trade mark owner (see, for example this Panel's decision in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and the cases referred to therein). The rationale for this approach is that the intentional adoption of a domain name that is essentially identical to or does not distinguish itself from another's trade mark will involve an impermissible impersonation of the trade mark owner."
"It is fair to say that this is approach in criticism cases is not universally accepted and this is an area where there is still an ongoing debate amongst panelists. But if this is the right approach in criticism cases (and the Panel still believes that it is), then it is difficult to see why a commercial use by a legitimate reseller of goods of a domain name that is identical to the trade mark for the goods should be treated differently."
"However, it is not necessary to consider this issue further because in the present case the Domain Name does not comprise the Complainant's trade mark alone. It also contains additional elements and one of those additional elements is the word "unofficial". It is a term that distinguishes and is intended to distinguish the Respondent from the Complainant (see also in this respect Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206). As a consequence this case cannot be simply dealt with on the basis that the Domain Name and the Domain Name alone involves an impersonation of the Complainant. It does not. It is necessary to look at the use actually made of the Domain Name and the nature of the website that operates from it to see whether the registration and use is abusive."
7.11 Therefore, the Panel considers impermissible impersonation is not just limited to cases where the Domain Name takes the form "<trademark.tld>". It may also occur where there is a domain name that incorporates a trade mark with some descriptive feature". In this case, the addition of the Turkish word for "Turkey" is such a descriptive feature. Indeed, the most natural reading of the Domain Name is that it relates to the trade mark owner's own activities in that particular territory.
7.12 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
7.13 Given the Panel's findings so far as rights or legitimate interests is concerned this issue of bad faith registration and use can be dealt with relatively rapidly.
7.14 There can be no doubt that the Respondent registered the Domain Name with knowledge of the Complainant's LISTERNE mark. This is obvious not just because of the distinctiveness and reputation of that mark, but because the subsequent use made of the Domain Name by the Respondent shows that it was with that mark in mind that the Domain Name was acquired.
7.15 The way that the Domain Name has been used also falls within the scope of paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) gives as an example of circumstances indication bad faith use:
"you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
7.16 First, the Domain Name alone by unfairly impersonating the Complainant involves an intentional attempt to attract, for commercial gain, Internet users to the Complainant's websites by creating a likelihood of confusion with the Complainant's mark. That is sufficient. Second, for reasons that have already been described, the Panel accepts that once Internet users reach those websites, they have sought to misrepresent the Respondent's relationship with the Complainant.
7.17 Further and in any event, again for reasons that have already been given, the Domain Name has been used to promote the products of third parties, which of itself is bad faith use (see once again Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227).
7.18 The Panel accepts that it was with these uses in mind that the Domain Name was registered and therefore that the Domain Name has been both registered and used in bad faith.
7.19 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
8.1 For the foregoing reasons, the Panel determines that the proceedings in respect of the Domain Name <desitin-pisik-kremi.com> are terminated.
8.2 The Panel further determines that the Domain Name <listerineturkiye.com> be transferred to the Complainant.
Mathew S. Harris
Date: September 17, 2015