WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Domain Protection Services, Inc., c/o Whois Agent / Danielle Baskin, Danielle Baskin
Case No. D2021-0947
1. The Parties
Complainant is Johnson & Johnson, United States of America (“United States” or “U.S.”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Domain Protection Services, Inc., c/o Whois Agent, United States / Danielle Baskin, Danielle Baskin, United States, represented by Rosen, Wolfe & Hwang, Attorneys, United States.
2. The Domain Name and Registrar
The disputed domain name <brandedbandaids.com> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2021. On March 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 1, 2021.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Response was filed with the Center on May 6, 2021. On May 12, 2021, Complainant filed Complainant’s Supplemental Submission in Support of Its Complaint.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 18, 2021. 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
Complainant is one of the largest and most well known companies in the world. Complainant’s family of companies includes a consumer health company, one of the world’s largest and most diverse medical devices and diagnostics company, the world’s fourth-largest biologics company, and the world’s eighth-largest pharmaceuticals company. Complainant has more than 260 operating companies in 60 countries around the world, employing approximately 134,000 people.
Complainant’s basis for asserting the Complaint is its use, registration, and ownership of the BAND-AID trademarks. The mark was first used in 1921 to identify adhesive bandages. Since then, the mark has been used in connection with Complainant’s brand of first aid products and related goods and services. Complainant owns longstanding federal registrations for its BAND-AID marks, including U.S. Registration Nos. 194123, 2471737, 4182885, and 4864241. Complainant has also secured registrations for the BAND-AID marks in jurisdictions around the world. Complainant, either on its own or through affiliated companies, operates the website “www.band-aid.com”. This is the main website for BAND-AID brand product information for consumers around the world, although information on Complainant’s BAND-AID brand products can also be found at Complainant’s corporate website, “www.jnj.com”. Complainant’s “www.band-aid.com” website averages over 60,000 unique visitors per month, or several million unique visitors per year. Through its Janssen Pharmaceuticals division, Complainant successfully developed a Covid-19 vaccine.
Respondent registered the Domain Name on January 19, 2021. Respondent is an artist in the United States whose practice frequently targets for claimed parody the Internet, capitalism, online businesses, and the broader culture of the technology industry – a remit that finds her making artistic use of websites, domain names, and social media. Respondent’s art has been featured by national outlets.
The Domain Name is being used in connection with a website, which states, among other things:
“Brand-Aid™ is a program that connects corporations with government agencies to subsidize the COVID-19 vaccination rollout costs. We manufacture custom logos and ads on adhesive bandages that will be shared with audiences at injection sites worldwide. Brands can target by their Brand-Aid™ campaign by rollout phase and location. The cost per bandage is variable depending on campaign size. Your funds for Brand-Aid™ will go towards logistics for distributing the vaccine.
These bandages look great on social media! Though a vaccine recipient might wear your ad for only a few hours for protection, the ad will last longer in a photo. One vaccine is potentially thousands of impressions.”
Though the current website contains several disclaimers, these did not exist at the time Respondent’s website and the Domain Name first came to Complainant’s attention. Complainant first wrote to Respondent expressing concerns about the use and registration of the Domain Name on January 22, 2021. At that time, the website associated with the Domain Name was different from the current version of the site. The original version of the site lacked a prominent disclaimer and displayed the “BRAND-AID®” in the same color and font used by Complainant for genuine BAND-AID brand products.
In Respondent’s reply to Complainant’s January 22, 2021 letter, Respondent claimed that the site was intended to be a parody about the capitalization of public health care:
“My website is an artistic parody about the capitalization of public health care and is not in the business of selling adhesive bandages or selling ad space. As an art piece, this website is extremely unlikely to be confused or associated with the brand BAND-AID®. I have never received a message from anyone who believed this project to be associated with BAND-AID®.
In the unlikely event that there may be any risk of confusion, I had already addressed the concern with a disclaimer at the bottom of the site that says: ‘We are not affiliated with BAND-AID®.’“
In a tweet on January 19, 2021, Respondent acknowledged that there was some confusion caused, through her tweets and/or in connection with the Domain Name and linked website:
Complainant’s counsel wrote to Respondent on February 5, 2021, explaining why the minimal changes made to the website were insufficient and repeating Complainant’s request that Respondent terminate the site and transfer the Domain Name to Complainant. Respondent replied on February 10, 2021, to confirm that Respondent had made additional changes to the site, most notably changing the color and font of “BRAND-AID” and making the disclaimer more prominent in its placement, with the following text:
“This website is not a real service and is an artistic parody. This website is not affiliated with BAND-AID® Brand Bandages, Johnson & Johnson, or any of its affiliated companies.”
5. Parties’ Contentions
(i) Identical of confusingly similar
Complainant states that its BAND-AID marks are among the most famous trademarks ever coined, and that these marks and the related products are among the most valuable corporate assets owned by Complainant, with significant annual sales, promotion, and advertising. Through Complainant’s use and registration of the BAND-AID marks around the world since 1921, the marks have come to be exclusively associated with Complainant and its first-aid products. Moreover, through Complainant’s extensive use and advertising, and due to an excellent reputation for quality, the BAND-AID mark has become a famous mark that is uniquely identified with Complainant’s products.
Furthermore, Complainant contends the Domain Name is confusingly similar to its BAND-AID mark, as the Domain Name incorporates the mark in its entirety, merely adding the word “branded” and the “.com” generic top-level domain (“gTLD”). As numerous UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. Similarly, Complainant asserts that the addition of the non-distinctive term “branded” does not distinguish the Domain Name from Complainant’s BAND-AID marks. The Domain Name incorporates Complainant’s BAND-AID mark, merely deleting the hyphen between “band” and “aid”. Complainant states that UDRP panels have previously found domain names that similarly removed the hyphen from a registered trademark are still confusingly similar to the mark. This leaves only the “.com” gTLD to distinguish the Domain Name from the BAND-AID marks; however, this gTLD indicator is not taken into consideration when judging confusing similarity.
Complainant submits that given the reputation and renown of Complainant’s BAND-AID marks, most Internet users who see the Domain Name are likely to immediately recognize Complainant’s marks, and assume that the Domain Name and any website associated with it is owned, controlled or approved by Complainant. In addition, consumers and other third parties who search the Internet for promotional bandages printed with their own corporate logo may be directed to the website, creating a probability of confusion, particularly because of Respondent’s implication that the storefront is an authorized retail site for “Branded BAND-AID” products, products that simply do not exist.
(ii) Rights or legitimate interests
Complainant contends that Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. Respondent registered the Domain Name on January 18, 2021, long after Complainant had established rights in its BAND-AID marks through extensive use around the world over more than 100 years. Therefore, the burden shifts to Respondent to establish its rights or legitimate interest in the Domain Name.
Complainant states that at no time did it ever authorize or permit Respondent’s registration of the Domain Name incorporating Complainant’s BAND-AID marks, and there is no relationship between Respondent and Complainant or any of Complainant’s licensees, agents, or affiliated companies that would give rise to any license, permission, or authorization by which Respondent could own or use the Domain Name, which incorporates and is confusingly similar to the BAND-AID marks. Respondent is not commonly known by the Domain Name, as shown by the registration information and the fact that Respondent is only using the Domain Name in connection with a website at which Respondent promotes a fake company that purports to produce branded BAND-AID brand bandages. Complainant claims that since the BAND-AID marks are so well-known and Respondent has no rights in them, the only reason Respondent could have for registering and using the Domain Name is that she knew of the BAND-AID marks and wanted to trade on Complainant’s renown to lure consumers to a website that originally appeared to be dedicated to the sale of branded BAND-AID bandages.
Complainant contends that Respondent’s use of the Domain Name should not be seen as a fair use of the BAND-AID marks. The BAND-AID mark has not become generic nor should Respondent’s website be considered a protected parody. The Domain Name itself, at the time Complainant first objected, did not make clear that any website associated with the Domain Name was intended to be a parody. Use of a domain name identical to a mark for a criticism site directed against the mark owner lures Internet users seeking the mark owner to the criticism site by false pretenses. Intentionally misleading identity to attract, not the criticism, is what makes this illegitimate. Further, Complainant asserts that Respondent is incorrect in her assertions that the website is a parody. As noted, the Domain Name itself gives no indication that the website is a parody, critique, or otherwise comments on the BAND-AID marks. The website, as it appeared at the time Complainant first wrote to Respondent, similarly failed to make clear that it was meant to be a parody.
Complainant states the website at the Domain Name is also being used to promote Respondent and her numerous other businesses. The website contains a link to Respondent’s Twitter account. Respondent’s Twitter account includes information in the profile about other businesses: “Co-creator of @dialup. Painter. Makes cool masks at http://maskalike.com.” The website at “www.maskalike.com” includes links to Respondent’s other websites, at which Respondent’s commercial ventures are mentioned. Given the associations with these other sites, Complainant claims the website at the Domain Name is not purely noncommercial. Therefore, Respondent cannot demonstrate any legitimate basis for its selection and continued use of the Domain Name or the name “Brand-Aid”.
Complainant submits that if, in addition to using a third party’s marks without modification, the parodist intentionally imitates the look and feel of the mark owner’s site and provides text apparently related to Complainant’s programs and content, as Respondent did here, the diverted Internet user’s confusion extends beyond an initial glance. Absent a prominent disclaimer, someone diverted to the parody site may not know for some time that he has reached the wrong address and is reviewing unauthorized or inaccurate information. One of the reasons given by UDRP panels that deem criticism sites legitimate is the unlikelihood of confusion or the correction of any initial confusion immediately after reaching the criticism site. However, that rationale is considerably undercut by conduct such as Respondent’s here. To a certain extent, it is undercut in any attempt at parody, as an element of parody is to imitate the genuine article.
Respondent’s website, at the time Complainant first wrote to Respondent, lacked a prominent disclaimer while incorporating references to Complainant’s vaccine development, using images of Complainant’s BAND-AID brand bandages, and incorporated an infringing version of the BAND-AID mark in the font and color typically used by Complainant. As such, visitors to Respondent’s website would undoubtedly believe that the website at the Domain Name had been created to allow companies to purchase branded versions of Complainant’s BAND-AID brand bandages.
Complainant contends that Respondent has also made clear her intent was not to parody Complainant or the BAND-AID marks, but rather her intended commentary is on the “the capitalization of public health.” However, in order to constitute parody, the website must poke fun at the goods or services associated with Complainants’ marks: use of another’s trademark to poke fun at something unrelated to Complainant’s mark is not parody. As such, Respondent’s use of the BAND-AID marks in the Domain Name and at the website cannot possibly be considered a fair use.
Complainant argues that even if for the sake of argument Respondent’s use of the Domain Name might be proven to be parody under United States trademark law – to be clear a point it does not accept, it is not legitimate under paragraph 4(a)(ii) of the Policy. Such issues are matters for the national courts, which can make determinations based upon a fully developed record and legal briefing. Similarly, Respondent’s misguided belief that the BAND-AID marks have become generic is an insufficient defense for her registration and use of the Domain Name. The BAND-AID marks remain registered for bandages and a number of other first aid products, both in the United States and in jurisdictions around the world. The registrations are proof of Complainant’s rights and this proceeding is not the appropriate forum for Respondent to challenge the validity and enforceability of Complainant’s BAND-AID trademark registrations.
Furthermore, although Respondent argues her site is noncommercial, the language in the “contact us’ section solicits interested parties to submit their contact information by stating “Would you like to enroll in the BRAND-AID® program? Or looking to partner as a vendor?” As such, Respondent appears to be attempting to capitalize on the website appearing at the Domain Name. Furthermore, the site includes a direct link to Respondent’s Twitter account, where she promotes her other businesses, including DialUp and “www.maskalike.com”. The website at the Domain Name uses the BAND-AID marks to misleadingly give consumers the impression that Respondent’s website was authorized by Complainant. This too renders Respondent’s use illegitimate.
(iii) Registered and used in bad faith
Complainant states that Respondent registered the Domain Name on January 19, 2021, long after Complainant’s BAND-AID marks were registered in the United States and elsewhere around the world. The Domain Name incorporates Complainant’s registered BAND-AID marks and is confusingly similar to the marks. Complainant submits that Respondent’s use of the BAND-AID mark in the Domain Name shows both Respondent’s familiarity with the mark and Respondent’s recognition of the renown of the mark. Given Respondent has no connection with Complainant and has never been authorized by Complainant to use or register the Domain Name, the fact that Respondent registered the Domain Name establishes opportunistic bad faith registration and use. Given the fame of Complainant’s marks, no matter how Respondent uses the Domain Name, consumers are likely to believe that the Domain Name is related to or associated with Complainant. Because the ultimate effect of any use of the Domain Name will be to cause confusion with Complainant, the use and registration of the Domain Name must be considered to be in bad faith.
By virtue of Respondent’s use of the BAND-AID marks in the Domain Name and at the website to which it redirects to sell “branded” BAND-AID bandages, Respondent has created the likelihood that the public will be confused into believing, falsely, that the Domain Name and the associated website have a connection with Complainant. As a result, Respondent’s registration and use of the Domain Name violates the Policy.
Complainant states that Respondent earned revenue directly by drawing consumers to her site by the unauthorized use of Complainant’s BAND-AID marks in its Domain Name and otherwise profiting from the consumer confusion that is the inevitable result of Respondent’s misappropriation of the BAND-AID marks.
The facts set forth above make clear that Respondent is exploiting the goodwill and fame of Complainant’s marks in bad faith to improperly deceive Internet users and benefit Respondent financially. These activities demonstrate bad faith registration and use of the Domain Name in violation of the Policy, as set forth in paragraphs 4(b)(i) and 4(b)(ii). Given the widespread reputation of the BAND-AID mark, the public is likely to be confused into thinking that the Domain Name has a connection with Complainant. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves. In other words, Respondent through use of a confusingly similar Domain Name and webpage contents has created a likelihood of confusion with the BAND-AID mark.
(i) Identical or confusingly similar
Respondent states that she registered the Domain Name in good faith in pursuit of her legitimate interests, namely, the production of an artistic parody, and accordingly Complainant cannot establish conditions 4(a)(ii) and (iii) as required by the Policy. Solely for the purpose of this case, Respondent states that she will not contest the validity of Complainant’s marks and that there exists some degree of similarity between the Domain Name and Complainant’s marks. Respondent acknowledges the Domain Name and related website incorporate Complainant’s BAND-AID mark, as successful parodies to some extent must. Respondent reserves the right to contest these points in any other dispute or forum.
(ii) Rights or legitimate interests
Respondent claims that she has a right to use the Domain Name to parody Complainant’s marks, and that UDRP panels recognize parody as a legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy. In this case, Respondent’s critical parody is both genuine and noncommercial, and the Complaint does not demonstrate otherwise as is required by the Policy.
Respondent states she has only ever used the Domain Name for the purpose of artistic parody. Ironically, for a project subject to a trademark dispute, the website pokes fun at the hyper-commercialization of healthcare services and products at the peak of a global pandemic by positing the absurdity of juxtaposing flashy, consumer-oriented trademarks and brands with something as serious as vaccination. Respondent asserts that although the direct parodization of Complainant and the BAND-AID mark is subtle, it is perhaps the most striking commentary that the piece makes: Complainant is itself a crucial player in a global vaccination campaign where the competing vaccines are popularly referred to by their corporate brand names. Respondent’s claims her work immediately calls to mind Complainant’s alleged hyper-commercial and brand-oriented participation in a serious, lifesaving campaign. Complainant sells both the vaccine and the bandage that follows the vaccine, branding both experiences with registered marks. Respondent suggests that it would not be too unrealistic to imagine the next step being selling advertising space on the bandages themselves. Respondent argues the instant proceedings suggest that her parody did not miss its mark.
Respondent states further that she has a long history of parodic and satirical artistic projects, including websites purporting to advertise facially fictitious projects. Thus, she submits the parody is genuine. Complainants’ assertions regarding Respondent’s website and motivation are inconsistent with the facts and the exhibits submitted. While Complainant asserts that the website “gave no indication that it was anything other than a legitimate branding opportunity,” the website as captured in Complainant’s exhibit expressly states that the website is ‘not a real service’ and further that it is not affiliated with BAND-AID®.’” Similarly, while Complainant asserts that Respondent admitted “that her intent was not to parody Complainant or the BAND-AID Marks” the cited exhibit only reveals that Respondent called her work “an artistic parody about the capitalization of public health care” a claim fully consistent with a parody of Complainant’s business and marks.
Respondent states she has never used the Domain Name or website for commercial purposes, and has attached a sworn statement attesting to this. At no time has the website ever sold any goods, recommended goods for sale, displayed advertising, or received any revenue whatsoever. Respondent claims that Complainant’s arguments in support of the contention that the website at the Domain Name “is not purely non-commercial” are unavailing. Complainant points to the existence of a link on the website to Respondent’s Twitter profile, which itself links to one of Respondent’s businesses, which then links to Respondent’s personal webpage, which in turn links to Respondent’s other businesses – as well as Respondent’s art projects, speaking engagements, and media appearances. This linkage between the website and Respondent’s unrelated commercial ventures is too attenuated. Moreover, accepting Complainant’s argument leads to an absurdity: Respondent’s self-identification as an artist, satirist, and parodist in fact serves to clarify the website’s parodic intent, while hiding that identity would both increase potential confusion and potentially lead to an adverse inference before this Panel, as is the case where domain privacy services are used without other means of self-identification.
(iii) Registered and used in bad faith
Respondent contends that a good faith attempt at noncommercial parody may disprove that a domain name was registered in bad faith, even if the parody attempt itself falls short of providing a legitimate interest or right in the domain name. While a given use may or may not meet the standards for the parody defense, it may still be a sufficiently plausible, good-faith motive to outweigh Complainant’s inference of bad faith within the meaning of the Policy. Because Respondent’s motive for the registration and use of the Domain Name has always been for the exclusive purpose of noncommercial parody, the Complaint should fail for lack of bad faith under paragraph 4(a)(iii) of the Policy.
Here, Complainant makes no showing that Respondent’s registration was pretextual, commercial, or anything but what Respondent has always claimed: a good faith artistic parody. Respondent has not demonstrated any interest in selling or transferring the Domain Name and Complainant does not suggest otherwise. Further, Respondent has no regular practice of acquiring domain names resembling registered marks for sale, and Complainant does not suggest otherwise.
Complainant’s arguments and citations in support of a finding that Respondent acted in bad faith are not suited for or grounded in parody cases. Complainant argues, “no matter how Respondent uses the Domain Name […] the use and registration of the Domain Name must be in bad faith” because of a summary conclusion that “any use” of the Domain Name will necessarily cause confusion. If this were true, no parodic domain name incorporating a registered mark would ever be permissible – despite UDRP panel decisions and United States case law plainly to the contrary. None of the cited panel decisions for the above proposition concerned parody domain names, which must necessarily convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.
Respondent asserts that at least one of the Complainant’s arguments – that “Respondent earned revenue directly by drawing in consumers to its site by its unauthorized use of the Complainant’s BAND-AID Marks” – is completely without factual reference, and is belied by the fact that the website sold no goods, provided no services, and served no advertising. The website has absolutely no revenue or plan to seek revenue, despite Complainant’s bare assertion to the contrary. In fact, the Complaint and its exhibits repeatedly demonstrate Respondent’s good faith. For instance, Complainant highlights a tweet Respondent published on January 19, 2021. In that tweet, Respondent wrote, “I locked my [Twitter] account because BRAND-AID® was being shared as a real thing. While it seemed like an obvious Capitalism joke to me (especially with the ® and the Chili’s logo), if this concept had the possibility of negative associations with the vaccine, then it’s a very bad idea.” Complainant commented that, “[d]espite her claim that she had ‘locked’ the account, the website at the Domain Name remained active, as it is to this day.” This statement misunderstands and misrepresents Respondent’s meaning: the account referred to as being “locked” was not the Domain Name or the website; it was Respondent’s Twitter account. Locking the Twitter account was intended to prevent the sharing and resharing of tweets concerning the website that Respondent worried were being used in a confusion-causing way. Put another way: when the website was misunderstood in a way outside the purpose of Respondent’s parody, Respondent took action to publicly communicate her parodic intent via her Twitter account, and via the website itself, which Complainant notes Respondent repeatedly modified to further reduce the risk of confusion. These actions are the essence of good faith.
Respondent concludes that it is Complainant’s burden to prove that each of the elements of paragraph 4(a) of the policy are met – rightly so, particularly given the free expression concerns inherently involved in artistic parody. Respondent states she has done everything possible, at every stage, to indicate her good faith commitment to her parodic project and to reduce the possibility of confusion, everything short of acceding to Complainant’s demands that she abandon her parody altogether. Finally, Respondent indicates that if her future use of the Domain Name casts doubt on Respondent’s current account of intentions in registering the Domain Name, then Complainant may pursue a refiled Complaint. However, Respondent submits that Complainant has not met its burden in the Complaint provided.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated that it has well-established rights in its well-known BAND-AID trademarks, both through registration and widespread use over many years in the United States and around the world. Respondent has conceded that, for purposes of this case, she will not contest the validity of Complainant’s marks or that there exists some degree of similarity between the Domain Name and Complainant’s marks, although Respondent has reserved the right to contest these assertions in any other dispute or forum. The Panel notes for completeness that even if Respondent had actually contested the validity of Complainant’s marks, such claim would fall flat given the widespread registration and use of the marks around the world to this day.
The Panel finds that the Domain Names incorporates the BAND-AID mark in its entirety, while omitting the hyphen and placing the term “branded” before the mark and the letter “s” immediately after the mark. Numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521 (including generic term with a famous mark aggravates rather than diminishes likelihood of confusion). Further, the omission of the hyphen in the Domain Name does not diminish the confusing similarity between that Domain Name and Complainant’s BAND-AID mark. See Chernow Communications, Inc. v. Kimball, WIPO Case No. D2000-0119 (finding that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark); The Coca-Cola Company v. Andrew Corr, WIPO Case No. D2012-0368 (removal of hyphen from COCA-COLA).
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “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.”
Here, the Panel determines that Complainant has made out a prima facie case. Respondent registered the Domain Name many years after Complainant had established rights in its well-known BAND-AID marks through extensive use around the world; there is no relationship between Complainant and Respondent; Complainant has not authorized or licensed Respondent’s use of Complainant’s mark in the Domain Name; and Respondent is not commonly known by the Domain Name. Moreover, Complainant has argued that Respondent cannot rely on a trademark parody defense.
Respondent, conversely, has responded that the Domain Name (and linked website) have been used for the purpose of artistic parody, thus making a noncommercial or fair use of the Domain Name in accordance with the example set forth in paragraph 4(c)(iii) of the Policy, and thereby demonstrating a right or legitimate interest for purposes of paragraph 4(a)(ii) of the Policy.
The Panel recognizes that genuine and noncommercial parody may support a claim to a legitimate interest in a domain name under the Policy, paragraph 4(c)(iii). See e.g., Bayer AG v. FlokiNET Ltd Whois Protection, FlokiNET Ltd., WIPO Case No. D2020-2907 (“Genuine and noncommercial criticism (including parody) can support a claim to a legitimate interest under paragraph 4(c)(iii) of the Policy.”); CFA Properties, Inc. v. Domains By Proxy, LLC and John Selvig, WIPO Case No. D2012-1618 (“previous UDRP panels have held that the concept of parody as a defense applies in UDRP decisions”); The California Milk Processor Board v. Ryan Archer, WIPO Case No. D2011-1812. However, whether or not Respondent has succeeded in striking the delicate balance that is required when using a third party’s trademark for purposes of parody is another matter.
Both Complainant and Respondent are located in the United States. As observed in The California Milk Processor Board supra:
“Trademark law in the United States, where both parties are located, recognizes a fair-use parody defense where the allegedly infringing mark cleverly invokes a trademark but in a manner that consumers are unlikely to believe originated with the trademark owner.”
Citing Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007); see also People for Ethical Treatment of Animals v. Doughney, 263 F. 3d 359, 366 (4th Cir. 2001) (domain names used for parody must “convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody”); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group., 886 F.2d 490 (2d Cir. 1989) (“A parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and is instead a parody.”).
The Panel agrees with the statement in A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900: “In the context of domain names, the domain name itself, without reference to the content of the web site, must convey both of these separate messages.” See also Cyveillance, Inc. v. Mr. Kumar Patel, WIPO Case No. D2006-0346 (“While use of the mark of another in a domain name that parodies the owner of the mark is not inappropriate per se, it is usual, or at least desirable, that such domain names connote parody or criticism and do not simply use the mark without qualification.”).
Here, the Panel considers that the phrase chosen by Respondent in the Domain Name – “brandedbandaids” – does not itself convey parody of Complainant, its trademarks, and related products. Moreover, and while the Panel tends not to find Respondent’s arguments on this point terribly persuasive, it is also at least debatable whether the website linked to the Domain Name targets Complainant and its BAND-AID marks, or rather is intended as a more general parody of “the capitalization of public health,” as initially claimed by Respondent. See e.g., A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. supra (“In order to constitute parody, the web site must poke fun at the goods or services associated with Complainants’ marks: use of another’s trademark to poke fun at something unrelated to Complainant’s mark is not parody.”) Of course, the Panel also recognizes that Respondent has free speech interests protected as a constitutional right in the United States; however, under the law individuals do not enjoy absolute freedom of expression especially with respect to terms protected as trademarks. See Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693.
As Complainant indicated in its Complaint, whether Respondent’s use of the Domain Name is a lawful parody under United States law is a matter for the national courts, which can make determinations based upon a fully developed record and legal briefing. See e.g., Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and unionsquarepartnership.org Private Registrant, WIPO Case No. D2008-1234.
While given the Panel’s conclusions below on the third element of the Complaint, it is not strictly necessary to parse further the trademark parody defense in this proceeding, insofar as the Panel considers that the phrase chosen by Respondent in the Domain Name – “brandedbandaids” – does not itself convey parody, the Panel would find for Complainant on this second element.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, there is no doubt that Respondent, when registering the Domain Name, was aware of Complainant and its BAND-AID brand. The question is whether, despite that awareness, and in view of Respondent’s asserted artistic parody intention for registering the Domain Name, the registration and use amounts to bad faith.
Complainant has contended that Respondent’s registration of the Domain Name without authorization reflects opportunistic bad faith and was intended to exploit the goodwill and fame of Complainant’s marks in bad faith to improperly deceive Internet users and benefit Respondent financially. Complainant has pointed out that when Respondent initially launched her website, the disclaimer was not prominently placed and Respondent used an allegedly infringing version of the BAND-AID mark in the font and color typically used by Complainant. Further, Complainant argued that the ultimate effect of use of the Domain Name will be to cause confusion with Complainant, and thus the registration and use of the Domain Name must be considered to be in bad faith. Complainant has sought to emphasize that Respondent’s use should not be considered “purely noncommercial” because an Internet user, by using the link to Respondent’s Twitter account and then clicking through to her personal website, could be introduced to commercial ventures offered by Respondent.
In the face of these contentions, Respondent has argued that while a given use may or may not meet the standards for the parody defense, it may still be a sufficiently plausible, good-faith motive to overcome Complainant’s proposed inference of bad faith within the meaning of the Policy. Given the facts and circumstances of this case, the Panel agrees with Respondent on this point. See The California Milk Processor Board supra (“This may or may not meet the standards for the parody defense under United States trademark law, but it is a sufficiently plausible, good-faith motive to outweigh the Complainant’s inference of bad faith within the meaning of the Policy.”). Respondent has provided evidence to demonstrate that she is, in fact, an artist who engages in parody of the Internet, capitalism, online businesses and the technology industry more generally, while using websites, domain names and social media. Respondent has not demonstrated any interest in selling or transferring the Domain Name, nor is there evidence that she has previously made a practice of acquiring domain names resembling trademarks for sale. Respondent has claimed that the website linked to the Domain Name has no revenue or plan to seek revenue, and has submitted a sworn affidavit to this effect:
“I registered and used the <brandedbandaids.com> website solely for the purpose of artistic parody. At no time have I ever sought commercial benefit from either the <brandedbandaids.com> website or from the registration of the <brandedbandaids.com> domain name.”
The evidence in this case supports Respondent’s assertion concerning noncommercial use. As for the link on the Domain Name’s website to Respondent’s Twitter account, which in turn might be used to link to Respondent’s personal website that reflects one or more commercial ventures, the Panel finds that this path is too attenuated such that it would by itself disqualify the Domain Name from noncommercial use. Further, since being contacted by Complainant’s counsel, Respondent has taken steps – through a disclaimer on the website and changing the font and color of text on the site – to respond to Complainant’s demands concerning the content of the website. This point is important because UDRP panels tend to assess relevant facts concerning use of a domain name with a view to the circumstances prevailing at the time of the filing of the complaint, and Respondent made the relevant changes before the Complaint was filed. See WIPO Overview 3.0, section 2.11. Ultimately, and acknowledging that the Policy criteria are non-exclusive, looking at paragraph 4(b)(iv) in particular, the Panel finds that owing to the credibility of the sworn assertion as to the noncommercial nature of the Domain Name and attendant website, the Domain Name was not registered and used in bad faith.
Finally, the Panel emphasizes that the decision in this case is limited to the criteria under the Policy, and the Panel makes no findings concerning the parties’ rights under applicable national law – which may in any event be better suited for determination by a court.
Complainant has failed its burden to demonstrate that the Domain Name was registered in bad faith.1
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: June 28, 2021
1 The Panel notes that while there might in fact be a risk of confusion caused by the Domain Name, the Panel considers that this is ultimately dispelled by a careful reader.