WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Daniel Wistbacka
Case No. D2017-0709
1. The Parties
The Complainant is Johnson & Johnson of New Brunswick, New Jersey, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Daniel Wistbacka of Stockholm, Sweden.
2. The Domain Name and Registrar
The disputed domain name <janssenmedicalcloud.com> is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2017, 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
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 of the Complaint, and the proceedings commenced on April 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2017.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on May 10, 2017. 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 that it is one of the largest and most well-known companies in the world. The Johnson & Johnson 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 wholly owns the company Janssen Pharmaceuticals, Inc. as well as its related companies involved in health care services (hereafter “Janssen”).
Janssen operates and is currently in the process of updating a medical information and services portal for medical profession that it refers to as Janssen Medical Cloud.
The Complainant is the owner of several trademark registrations including the word “janssen” throughout the world, including trademarks for JANSSEN, JANSSENMED and JANSSEN MEDICAL CLOUD. The Complainant owns in particular the following trademark registrations in class 44:
- JANSSEN MEDICAL CLOUD, European Union trademark No. 015034465, filed on January 25, 2016 and registered on June 14, 2016;
- JANSSEN MEDICAL CLOUD, Swiss trademark No. 686782, filed on January 25, 2016 and registered on April 19, 2016.
The Complainant (itself or through affiliated companies) owns and operates a website at “www.janssen.com”.
The Respondent is an individual based in Sweden. The disputed domain name <janssenmedicalcloud.com> was registered on May 24, 2016. It does not resolve to any active website.
By a letter of February 6, 2017, the Complainant informed the Respondent through its counsel, that it considered the disputed domain name as illegitimate and constitutive of infringement of its rights. It therefore requested the Respondent to transfer the disputed domain name. The Respondent did not reply to this letter.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The Complainant owns several trademark registrations for/or including “janssen”, in particular for JANSSEN MEDICAL CLOUD.
The disputed domain name incorporates identically and without alteration the Complainant’s JANSSEN MEDICAL CLOUD trademark, making it confusingly similar with the latter.
The Respondent has no legitimate interest in the disputed domain name. The disputed domain name was registered after the filing of the Complainant’s trademarks and the use of the JANSSEN trademarks predates the registration of the disputed domain name so that the Respondent was aware of the Complainant’s rights when registering the disputed domain name. There is no relationship between the Complainant and the Respondent and the Complainant never authorized the Respondent in any manner whatsoever.
The disputed domain name is not used and the Respondent did not reply to the Complainant’s letter requesting the transfer of the disputed domain name, which also shows bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar 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 domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark JANSSEN MEDICAL CLOUD.
The disputed domain name <janssenmedicalcloud.com> reproduces the Complainant’s trademark in its entirety, with no alteration and no adjunction other than the extension “.com”, which should be ignored for the purposes of assessing the confusing similarity. The Panel accordingly finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (according to paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).
In this particular case, the Complainant makes the following undisputed allegations:
- There is no relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name.
- The Respondent does not appear to have used the disputed domain name in connection with an active website at any time since its creation.
- There is no evidence of bona fide use by the Respondent of the disputed domain name, no evidence that the Respondent has been commonly known by the disputed domain name nor evidence of legitimate use.
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.
Finally, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given that Janssen is not a dictionary word, that the disputed domain name is strictly identical to the trademark JANSSEN MEDICAL CLOUD, and that the disputed domain name was registered after the Complainant’s Swiss trademark was registered and a few months after the Complainant filed a trademark application for this mark in the European Union, the Panel accepts that the Respondent probably knew of the Complainant’s trademark when it registered the disputed domain name. In such circumstances, the integral reproduction of the JANSSEN MEDICAL CLOUD trademark within the disputed domain name can hardly be the result of a coincidence, and shows in the Panel’s view that the Respondent was aware of the Complainant’s rights and activities.
Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
The Respondent has not made any active use of the disputed domain name, which does not resolve to a website.
From the inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (paragraph 3.3 of the WIPO Jurisprudential Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case, the mark JANSSEN MEDICAL CLOUD is highly distinctive. The Respondent failed to reply to the Complainant’s letter requesting the transfer of the disputed domain name, and the Respondent also failed to submit a Response to the Complaint, with the result that the Respondent did not provide any evidence or indication of any actual or contemplated good-faith use of the disputed domain name. Given the exact identity between the trademark JANSSEN MEDICAL CLOUD and the disputed domain name, and the absence of any relationship between the Respondent and the Complainant, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain name. On the other hand, the Respondent did not seek to conceal its identity.
In a well-reasoned decision concerning the passive holding of the domain names <aventisdirect.net> and <aventisdirect.org>, the panel made a finding of bad faith use even though the respondent had not taken steps to conceal its identity (Aventis and Aventis Pharma SA. v. Bug Software/Paulo Andrade, WIPO Case No. D2004-0878):
“It is less clear whether it can be established that the disputed domain names were also used in bad faith. The panel agrees with the prevailing opinion of numerous WIPO panels- that in some circumstances so-called ‘passive holding’ of a domain name can be treated as using it in bad faith. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which was also cited by the Complainants. In this respect it is necessary to note that not every kind of passive holding may be found to be ‘use in bad faith’ of the domain name. Otherwise, the necessity to prove that a domain name was actually used would be illusory.
The most obvious examples of passive holding which fall within “bad faith use” of a domain name are cited in Paragraph 4(b)(i-iii) of the Policy. However, circumstances of the present case are apparently different. In Telstra it was stated that it is not possible to determine in abstract what circumstances of passive holding other than those identified in the Policy can constitute bad faith use, and in considering whether the passive holding of a domain name following its bad faith registration satisfies the requirements of Paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. In opinion of this Panel a failure to determine in abstract what circumstances of passive holding constitutes ‘bad faith use’ does involve a risk that a decision in this matter may seem arbitrary. However, the Panel must take into account that the opinion of the learned Panelist in Telstra was followed by numerous subsequent panelists and that the need for consistency plays a significant role in domain name dispute ‘jurisprudence’.”
In the Telstra case, the learned panel named five circumstances of the case that persuaded it to conclude that the respondent’s passive holding of a domain name could be regarded as “bad faith use” of it. These elements were as follows:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
The circumstances of the present case are in some aspects similar to those in the Telstra case but there are also differences. In particular in the present case it has not been established that the Respondent took any steps to conceal its true identity or provided false contact details. However, it seems that not all the five elements mentioned above are of the same significance. In particular it seems that the fifth element (i.e., impossibility to conceive of any plausible active use) is actually a conclusion which was made on the base of the preceding four elements and that this fifth element plays a decisive role in determining whether any particular passive holding can be regarded as a “bad faith” use of a domain name in dispute.
In the present case like in the above cited case, the Panel cannot conceive of any plausible use of the disputed domain name that would be legitimate, absent an authorization from the Complainant. As the disputed domain name is strictly identical to the Complainant’s distinctive mark, consumers would certainly mistakenly assume that an active website connected to the disputed domain name is operated or endorsed by the Complainant, when such is not the case.
The Panel accordingly reaches the conclusion that the passive holding of the disputed domain name amounts to use in bad faith given the circumstances of the case.
For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.
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 <janssenmedicalcloud.com> be transferred to the Complainant.
Anne-Virginie La Spada-Gaide
Date: May 24, 2017