WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Weibin Xu
Case No. D2016-0063
1. The Parties
The Complainant is Johnson & Johnson of New Brunswick, New Jersey, United States of America ("U.S."), represented by Fross Zelnick Lehrman & Zissu, PC, U.S.
The Respondent is Weibin Xu of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <aveeno-china.com> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 19, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 19, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on February 24, 2016. 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 states it is one of the largest and most well known companies in the world. The Johnson & Johson family of companies includes the world's premier consumer health company, the world's largest and most diverse medical devices and diagnostics company, the world's 4th largest biologics company and the world's 8th largest pharmaceuticals company. The Complainant has more than 250 operating companies in 60 countries around the world.
The Complainant owns the AVEENO and AVEENO ACTIVE NATURALS trade marks. The Complainant owns registrations for these trade marks in the U.S. and other jurisdictions around the world including in China. Its AVEENO product line dates back more than 50 years, with annual sales in the U.S. of more than USD 500 million. The Complainant asserts that its AVEENO marks have become famous and are uniquely identified with the Complainant's products, through extensive use and advertising over many years.
The Complainant (or through affiliated companies) owns and operates the website at "www.aveeno.com". Its website averages almost 200,000 unique visitors per month.
The Respondent registered the disputed domain name on November 13, 2015.
5. Parties' Contentions
1. The disputed domain name is confusingly similar to the Complainant's registered trade mark AVEENO. The disputed domain name incorporates the Complainant's distinctive AVEENO trade mark in its entirety. The addition of the geographic term "-china" does nothing to distinguish the disputed domain name from the Complainant's AVEENO trade mark. In fact, it adds to the likelihood of confusion. The generic Top-Level Domain ("gTLD") ".com" suffix cannot be taken into consideration when judging confusing similarity with the disputed domain name.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant never authorized or permitted the Respondent to register the disputed domain name incorporating the Complainant's AVEENO trade mark, and there is no relationship between the Complainant and the Respondent. The Respondent registered the disputed domain name on November 13, 2015, long after the Complainant's AVEENO trade marks were registered in the U.S., China and elsewhere.
The website at the disputed domain name was, as recently as December 11, 2015, used by the Respondent to attract Internet users and to sell diverted, grey market versions of the Complainant's AVEENO products. The Respondent's website was later found to be inactive. The Respondent also used copyright-protected images at its website. This cannot be considered a fair use of the Complainant's AVEENO trade mark. The Respondent's website was contrived to look like a legitimate website providing information on the Complainant's AVEENO products. However, it was not a bona fide offering or use but an exploitation of the Complainant's trade mark and business. Even if the items sold by the Respondent were genuine, the use of the disputed domain name was not bona fide as the Respondent failed to disclose on its website the lack of any relationship with the Complainant. On the contrary, the Respondent claimed to be an official AVEENO website and several of the Complainant's advertisements for its AVEENO products were copied and reproduced on its website.
The Respondent is not commonly known by the disputed domain name. The only reason that the Respondent registered the disputed domain name must have been because it knew of the Complainant's AVEENO trade marks and wanted to trade on the Complainant's renown, to lure consumers to its website which was previously dedicated to the sale of diverted or grey market AVEENO products.
3. The disputed domain name has been registered and is being used in bad faith and this is supported by the earlier-mentioned circumstances. The Respondent furthermore earned revenue directly by drawing consumers to its website by its unauthorized use of the Complainant's AVEENO trade mark in the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complaint was filed in English but the language of the Registration Agreement is Chinese. The Complainant requested that English be adopted as the language of the proceeding for these reasons: the language of the disputed domain name is in English and portions of the Respondent's website were in English, and these show that the Respondent is adept in English or another western language.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding." Paragraph 10(c) of the Rules stipulates that "[t]he Panel shall ensure that the administrative proceeding takes place with due expedition."
The Panel is tasked with ensuring that the administrative proceeding takes place with due expedition. The Panel determines in this case that it would be appropriate for English to be the language of the proceeding, having regard to the circumstances. The Respondent did not respond to the Complaint nor to the communications received from the Center. These communications from the Center have all been sent in the Chinese and English languages. The Respondent could have expressed its objections, if any, to the Complaint having been filed in English. There is therefore no indication that the Respondent would be prejudiced if English were to be adopted as the language of the proceedings. On the other hand, the delay which would be brought about by requiring the Complaint and evidence to be translated into Chinese would impede the aim of an expeditious resolution of the dispute.
Accordingly, the Panel determines that English is to be the language of this proceeding according to paragraph 11(a) of the Rules.
B. Identical or Confusingly Similar
The Complainant has established it has trade mark rights in AVEENO. The AVEENO trade mark has been incorporated in its entirety within the disputed domain name and is clearly identifiable therein. The addition of the hyphen and the word "China" does not serve to remove the confusing similarity with the Complainant's AVEENO trade mark. The addition of the hyphen and the word "China" in fact adds to the confusion with the Complainant's AVEENO mark as it creates the impression that the disputed domain name relates to the Complainant's AVEENO trade mark in China. It is a well-established principle that the addition of generic, descriptive or geographical words to a trade mark in a domain name is "insufficient to prevent threshold Internet user confusion". See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been established.
C. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is evidently familiar with the Complainant's AVEENO and AVEENO product line. It has not received any licence or authorization from the Complainant to use its AVEENO trade mark or to register the disputed domain name which incorporates its trade mark. The Complainant asserts that the Respondent has used, without the Complainant's consent, copyright-protected images on its website. This has not been disproved by the Respondent. An Internet user looking for the Complainant is likely to be confused into thinking that the Respondent's webpage is associated with or belongs to the Complainant (as there was no disclaimer on the website at the disputed domain name) and is targeted to the Chinese market. There is no evidence that the Respondent has been commonly known by the disputed domain name.
The Panel therefore finds that the Respondent is not 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" (paragraph 4(c)(iii) of the Policy).
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which the Respondent, in default, has not rebutted.
In the premises, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
The Panel also finds from the circumstances that the disputed domain name was registered and used in bad faith. The circumstances of this case fall within the scenario described in paragraph 4(b)(iv) of the Policy:
"(iv) by using the domain name, 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."
Internet users looking at the disputed domain name and the appearance of the Respondent's website would have been easily misled into thinking that it is associated with, belongs to, or is endorsed by the Complainant. The "look and feel" of the Respondent's website was made to create the impression that it is the Complainant's website. Further, the Respondent's homepage included a statement in Chinese which translates to signify to Internet users that it is the "official website". The appearance of bad faith registration and use on the part of the Respondent has not been refuted by the Respondent. The Respondent has not taken any steps to show that it has not intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's AVEENO mark or the Complainant's copyright-protected images it has copied from the Complainant's website.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <aveeno-china.com>, be transferred to the Complainant.
Date: March 7, 2016