WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Tung Nguyen
Case No. D2017-1635
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 Tung Nguyen of Ho Chi Minh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <neutrogenavn.com> is registered with Rebel.com Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 21, 2017. On August 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy Rules for Uniform Domain Name Dispute Resolution Policy 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 September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 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 is the owner of the NEUTROGENA trademark, used since 1951 in connection with soap and skin products. It is the owner, amongst several others, of the following trademark registrations (Exhibits I, J and K to the Complaint):
- United States Trademark Registration No. 72643656 for the word mark NEUTROGENA, registered on October 29, 2002, and successively renewed, covering products in class 3; and
- Vietnamese Trademark Registration No. 40009163 for the word mark NEUTROGENA, registered on September 16, 1993, and successively renewed, covering products and services in classes 5 and 35.
The disputed domain name <neutrogenavn.com> was registered on February 15, 2017. Currently it is used to redirect Internet users to a website under the domain name <netroskincare.com>, described as "Neutrogena Vietnam" in which Neutrogena products are offered for sale.
5. Parties' Contentions
The Complainant asserts to have acquired in 1994 Neutrogena Corporation for more than USD 924 million (Exhibit H to the Complaint) which had been using the NEUTROGENA trademark in connection with soap and skin products for decades. Today, according to the Complainant, a wide variety of Neutrogena products, including soaps, moisturizers, acne treatments, sunscreens, shampoos, conditioners, makeup and cosmetics is available in several countries around the world, as well as online, with the "www.neutrogena.com" website receiving over 2.1 million page views per month. In view of the Complainant's extensive use and registration of the NEUTROGENA Trademark around the world since 1951, the Complainant claims that the NEUTROGENA trademark has become exclusively associated with the Complainant and its skin care products.
According to the Complainant, the disputed domain is confusingly similar to the Complainant's NEUTROGENA trademark as it incorporates the aforesaid trademark in its entirety.
Moreover, the Complainant's claims that the Respondent registered the disputed domain name on February 15, 2017, and is using it to offer for sale what it claims to be genuine Neutrogena products in Viet Nam. Furthermore, the Complainant states that no disclaimer in made at the Respondent's website explaining the lack of any relationship or endorsement by the Complainant for the website.
Also according to the Complainant, the Respondent is using several social media accounts depicting the "Neutrogena VN" name, including Facebook, Google+ and Instagram, being it relevant to mention that the "About" section of the Google+ account claims that all products offered for sale at the "www.neutrogenavn.com" website are shipped directly from Costco stores in the United States every week (Exhibit O to the Complaint), which is not true since the Complainant states that several of the items being offered at the website associated with the disputed domain name are products that the Complainant does not sell to or through Costco stores or at "www.costco.com".
The Complainant further states that it has never sold its Neutrogena products to the Respondent directly, nor has the Respondent ever been designated an authorized retailer of the original products, nor is the Respondent authorized to use the Complainant's NEUTROGENA trademarks or copyright images for any purpose.
Lastly, a search conducted by the Complainant shows that the Respondent is the owner of 28 other domain name registrations, many of which incorporate well-known trademarks of other cosmetics and skin-care companies such as <saigonmac.com>, <ceravevietnam.com> and <sonmac.com> (Exhibit U to the Complaint).
In view of the aforementioned statements the Complainant asserts that the disputed domain name is confusingly similar to its well-known trademark, being the suffix "VN" merely descriptive since it denotes the common two-letter abbreviation for Viet Nam.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name;
ii. there is no relationship between the Parties, not having the Respondent been a licensee, agent or affiliate of the Complainant, not having it received any permission or authorization to register the disputed domain name;
iii. the Respondent has not been commonly known by the disputed domain name;
iv. the disputed domain name, created in a way to redirect Internet users to a website that resembles the original website depicting prominently the NEUTROGENA trademark and images of the Complainant's products is being used to offer diverted or grey market Neutrogena products;
vi. the Respondent did not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus conveying the false impression that the Respondent is an authorized reseller of the Complainant's products, and
vii. the Respondent's use of the disputed domain name traded on the fame of the NEUTROGENA trademark, which cannot constitute a bona fide offering of goods or services.
In what it relates to the bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent's knowledge of the Complainant's NEUTROGENA trademark is evident given the reproduction of its logotype and products on the website that resolves from the disputed domain name, creating the false impression that it is an official website, moreover exploiting the goodwill and fame of the Complainant's trademark and improperly deceiving Internet users into acquiring diverted or grey market products.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established its rights in the NEUTROGENA trademark.
The addition of the suffix "vn" which commonly refers to "Viet Nam" does not serve to avoid a finding of confusing similarity with the Complainant's trademark, which is clearly recognizable in the disputed domain name.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that may indicate a respondent's rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired 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.
In that sense, the Complainant indeed states that there is no relationship between the Parties, not having the Respondent been a licensee, agent or affiliate of the Complainant, not having it received any permission or authorization to register the disputed domain name.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the absence of a right or legitimate interest.
The Respondent has been using the disputed domain name in connection with a webpage that resembles the Complainant's website and which depicts prominently the NEUTROGENA trademark and images of the Complainant's products. Previous UDRP panels have recognized that, under certain conditions, the use of a domain name that reflects a trademark for the resale of the trademark holder's goods can give rise to rights or legitimate interests. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. These conditions include, inter alia, that the website under the domain name "[is used to sell] only the trademarked goods" and that it "accurately and prominently disclose[s] the registrant's relationship with the trademark holder." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.8.
The website under the disputed domain name has no such disclaimer, and in fact the Respondent through its social media profile "NeutrogenaVN" states that all products, offered for sale at the website to which the disputed domain name <neutrogenavn.com> resolves to, are shipped directly from Costco stores in the United States every week (Exhibit O to the Complaint), which might give Internet users the assurance that the product are original, which cannot be ascertained.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a 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 a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant's products and trademark logotype on the website relating to the disputed domain name.
The Respondent's use of the disputed domain name not only clearly indicates full knowledge of the Complainant's trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Lastly, the Respondent appears to have engaged in a pattern of bad faith conduct as it is the owner of 28 other domain name registrations, many of which incorporate trademarks of other cosmetics and skin-care companies such as <saigonmac.com>, <ceravevietnam.com> and <sonmac.com> (Exhibit U to the Complaint).
For the reasons above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 <neutrogenavn.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: October 20, 2017