WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Domain Administrator, PrivacyGuardian.org / Steve Strievel, AVE.inc
Case No. D2017-1608
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, P.C., United States.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Steve Strievel, AVE.inc of Tucson, Arizona, United States, represented by Donald&Lee Law Firm, LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <avebaby.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2017. On August 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 the Complainant on August 23, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 23, 2017.
The Center verified that the Complaint together with the amended 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 August 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2017. The Response was filed with the Center on September 12, 2017. On September 13, 2017, the Complainant submitted a supplemental filing in reply of the Response.
The Center appointed Ellen B Shankman as the sole panelist in this matter on September 20, 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.
On September 26, the Panel issued a Panel Order to request the Respondent to submit a reply, if any, to the Complainant’s supplemental filing by October 1, 2017. The Respondent did not submit a reply.
4. Factual Background
The date of the Domain Name registration was confirmed by the Registrar to be November 19, 2015.
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with an error message, and the website currently appears to be inactive. Since the Respondent did not deny or contradict the evidence supplied by the Complainant the use and appearance of the website when it was apparently active, the screen shots of the previous website are taken from the Complaint and are generally accepted as true in the circumstances of this case.
The Complainant provided evidence of multiple registrations of its trademarks AVEENO, the AVEENO Logo and AVEENO BABY, including inter alia, United States Trademark Reg. No. 2052166 (AVEENO), registered on April 15, 1997, and United States Trademark Reg. No. 3102734 (AVEENO logo), registered on June 13, 2006, and United States Trademark Reg. No. 2926652 (AVEENO BABY), registered on February 15, 2005.
5. Parties’ Contentions
The Complainant is Johnson & Johnson (“Johnson & Johnson” or “J&J”), one of the largest and most well-known companies in the world. The J&J 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 fourth- largest biologics company and the world’s eighth-largest pharmaceuticals company. The Complainant’s basis for asserting this complaint is its use, registration and ownership of the AVEENO and AVEENO BABY trademarks (the “AVEENO Marks). The Complaint asserts that its AVEENO product line dates back more than half a century and is among the most popular brands in its category, with annual United States sales in excess of USD 500 million. Through extensive use and advertising over many years, the AVEENO Marks have become famous trademarks that are uniquely identified with the Complainant’s products and represent an enormous and valuable goodwill. The Complainant, either on its own or through affiliated companies, owns and operates the website “www.aveeno.com”. “www.aveeno.com” is the main website for AVEENO product information for consumers around the world, though information on the Complainant’s AVEENO products can also be found at the Complainant’s dedicated Chinese website: “www.aveeno.com.cn”.
The Complaint further asserts that its current spokesperson for the AVEENO brand of products is the internationally famous actress, Jennifer Aniston, who has been associated with the brand and its global advertising since 2013. The Complaint asserts that the Respondent improperly uses the AVEENO brands and photos of Ms. Aniston without authorization and in Chinese translation. Indeed, though only visible from Chinese IP addresses, the website at the Domain Name is a Chinese-language copycat version of the Complainant’s official AVEENO website. The Respondent’s website incorporates several of the Complainant’s copyrighted images that the Respondent appears to have copied from the Complainant’s website, its advertisements and its social media accounts, merely translating the product names and descriptions into Chinese.
The Complainant has never sold its AVEENO products to the Respondent directly nor has the Respondent ever been designated an authorized retailer for genuine AVEENO products. Furthermore, the Respondent has never been authorized to use the Complainant’s AVEENO Marks or its copyrighted images for any purpose. The use of the AVEENO Marks and the Complainant’s copyrighted images at the website previously associated with the Domain Name cannot be considered a fair use of the AVEENO marks or the Complainant’s copyrighted images. The Complainant argues that the Respondent does not satisfy any requirements for nor is the Respondent making a bona fide use of the Domain Name, but instead registered and is using the Domain Name to mislead Internet users to believe that the Domain Name and its owner are somehow related to, endorsed by, or otherwise affiliated with the Complainant and that the Respondent has been authorized to sell the Complainant’s products in China.
The Complaint alleges that the Respondent further tried to mislead consumers as to the legitimacy of its website and the products being sold at the site by listing the Complainant’s contact details in the WhoIs records for the Domain Name. The Complainant sent a letter to the Registrar, which at the time was GoDaddy, concerning the unauthorized activities at the “www.avebaby.com” website on March 29, 2017. GoDaddy terminated the website at the Domain Name on April 12, 2017. Shortly thereafter, on or around April 20, 2017, the Respondent transferred the Domain Name to the current Registrar and put the existing privacy protections in place. This transfer demonstrates that the Respondent was aware of the Complainant’s objections to the Domain Name registration and to the manner in which it was being used, but actively took steps to continue the infringing activity.
The Complaint argues that the Domain Name is confusingly similar to the Complainant’s AVEENO marks, as the Domain Name incorporates the Complainant’s distinctive AVEENO BABY trademark, merely omitting three letters, “E””N” and “O,” from the middle of the mark, merely adding the “.com” generic Top-Level Domain (“gTLD”), and that the omission of three letters from the Domain Name does not distinguish the Domain Name from the Complainant’s registered marks.
By virtue of the use of images of the Complainant’s legitimate AVEENO products at the website, the public will likely be confused into believing, falsely, that the Domain Name and the website associated therewith have a connection with the Complainant, and that the Respondent is exploiting the goodwill and fame of the Complainant’s marks in bad faith in order to improperly deceive Internet users and benefit the Respondent financially. These activities demonstrate bad faith registration and use of the Domain Name in violation of the Policy.
Finally, the Complaint alleges that the Respondent failed to make its contact information available in the WhoIs records for the Domain Name, instead registering through a proxy service. Upon information and belief, the Respondent purposefully concealed its true identity to make it difficult for any interested third-party to locate the Respondent for purposes of lawfully pursuing the Domain Name. Failure to provide any such information is clear evidence of the Respondent’s bad faith registration of the Domain Name.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks AVEENO, the AVEENO logo and AVEENO BABY, in respect of a broad range of cosmetics and creams. The Domain Name is confusingly similar to the trademarks owned by the Complainant. The absence of three letters in the Domain Name does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That the Respondent originally registered the Domain Name under a proxy to hide its identity, then also transferred the Domain Name with the intention of continuing the use in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
To summarize the Complainant’s supplemental filing, to the above arguments the Complainant added that the Respondent fails to explain why the Domain Name was used in connection with a website that blatantly attempted to mimic the Complainant’s own website for AVEENO products including use of photos of Jennifer Aniston, the exclusive, global spokesperson for AVEENO brand products or the AVEENO logo. When viewed together, the Domain Name and the website appearing at “www.avebaby.com” make it clear that the Respondent intended to register a Domain Name that is confusingly similar to the Complainant’s trademarks.
The Complainant disputes the Respondent’s statements regarding the significance of “ave”, and that no reasonable explanation for the “ave” being short for ‘avenue’ as related to the actual use was provided. The Complainant also disputes the Respondent’s claim that it has rights and/or legitimate interest in use of the Domain Name and denies the Respondent’s assertions that because it sells a number of different products that constitutes a legitimate interest, and specifically argues that the Respondent, by not distinguishing itself from the Complainant in using the Complainant’s mark, underscores that the Domain Name was registered and is being used in bad faith.
The Respondent alleges that the first element is not met. The Respondent asserts that “[T]he main body of Domain name ‘avebaby.com’ is ave, baby is universal word. [A]ve is not identical to ‘aveeno’ while domain name avebaby.com is not confusely similar to aveeno.com.” and that “Complainant tried to distort the meaning of ‘ave’ to ‘aveeno’. Actually ave is not only abbreviation of aveeno, it can also be ‘Avemco’ see www.ave.com, ‘Sunrise Avenue’, see www.sunriseave.com”.
The Respondent further argues that the Complainant’s trademark AVEENO and the Domain Name are not confusingly similar by “sight, sound and meaning”, and that “[A]cronyms, by their nature, may stand for more than one combination of words.” “Considering that ‘baby’ is a descriptive word, not distinctive, the degree of resemblance of the domain name and the Complainant’s trademark is very low. Regarding well-known trademark, a domain name should incorporate the entire trademark, but ‘avebaby’ does not…Regarding of ‘avebaby.com”, Complainant’s entire trademarks ‘aveeno’ is not incorporated”, and therefore the Domain Name is not confusingly similar to Complainant’s trademarks.
The Response also argues that the Respondent is using the Domain Name in connection with a bona fide offering of goods and services, as part of an online store which offers a larger range of products.
To summarize the Response: The Respondent argues that the first element is not met because the Domain Name does not include the full trademark. Further that ‘ave’ could mean different short terms for different things. The Respondent also argues that its use of the Domain Name is in connection with a bona fide offer of goods.
The Respondent, although offered the chance to do so, did not file any additional response to the Complainant’s supplemental filing.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for AVEENO, the AVEENO logo and AVEENO BABY.
The Panel notes that this case provided a close challenge under this first element of the test. That having been said, the Panel may look to the circumstances of the case as a whole in order to determine whether the first element of the test under the Policy is met.
The Panel agrees with the Complainant that “the context in which the domain names are being used may be helpful to assess confusing similarity (see Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441)” SeeSchering-Plough Corp.v. Dan Meyers, WIPO Case No. D2008-1641; see also Bayer Healthcare LLC v. Admin, Domain, WIPO Case No. D2016-2342 (“Respondent used the disputed domain name specifically to direct Internet users to a webpage referring to Complainant’s full trademark, suggesting that Respondent relied on Internet user confusion to direct Internet users to its website. The evidence of intent to confuse on the part of Respondent reinforces the conclusion that the disputed domain name is confusingly similar to Complainant’s trademark.”).
In reviewing the totality of the circumstances, the Panel finds the Complainant’s version more compelling that the Respondent’s on the choice of the combination of “ave” and “baby”, and the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks. Further, the Panel finds that the omission of letters from a registered mark can still result in a confusingly similar domain name registration, and in this case that the deletion of 3 letters does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademarks. This finding is consistent with a number of other panel decisions including Blue Cross and Blue Shield Association v. Digi Real Estate Foundation/Domain Admin/NA NA, WIPO Case No. D2007-0022 and Verizon Trademark Services, LLC v. Paulo c/o Paulo kann, WIPO Case No. D2010-0989 (finding <vznwireless.com> confusingly similar to the VERIZON WIRELESS trademark, despite the omission of 4 letters). See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “the incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <avebaby.com> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, that the Respondent lacks rights or legitimate interests in the Domain Name.
Further the Panel is not persuaded by the Respondent’s argument that the Domain Name is being used for a bona fide commercial offering (and which also informs the third element of the Policy discussed further below). This, together with the proxy registration, persuades the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The fact that the Domain Name currently does not resolve to an active website does not prevent a finding of bad faith.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the evidence of the use of the Complainant’s trademark and images by the Respondent on its website (prior to the now ‘error’ message and non-resolution of the website), the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademarks and uses it for the purpose of misleading and diverting Internet traffic.
The Panel also accepts the arguments by the Complainant that the Respondent originally registered the mark under a proxy registration then transferred it to another registrar when challenged for the purpose of making it more difficult to locate the Respondent for purposes of lawfully pursuing the Domain Name. See Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (hiding identity is evidence of bad faith); Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613 (finding bad faith where “Respondent has purposefully used false information in registering the Domain Name to conceal Respondent’s identity and to make it difficult to locate Respondent for purposes of lawfully pursuing the Domain Name. Respondent has taken deliberate steps to conceal their true identity.”).
Given the evidence of the Complainant’s prior rights in the trademarks, the timing of the Respondent’s registration and the use of the Domain Name with apparent full knowledge of the Complainant’s marks and products, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <avebaby.com> be transferred to the Complainant.
Ellen B Shankman
Date: October 3, 2017