Decisión del Panel Administrativo nº D2012-0010 of WIPO Arbitration and Mediation Center, April 05, 2012 (case Johnson & Johnson v. Chad Wright, WebQuest.com, Inc.)
| Resolution Date | April 05, 2012 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Generic Domains |
Complainant is Johnson & Johnson of New Brunswick, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, USA.
Respondent is Chad Wright, WebQuest.com, Inc., of Modesto, California, USA, represented by Lewis & Lin, LLC, USA.
The disputed domain name [tucks.com] is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2012. On January 5, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 5, 2012, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 11, 2012. Center verified that the Complaint together with the amendment to the Complaint/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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced January 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response February 2, 2012. The Response was filed with the Center February 1, 2012.
On February 7, 2012, Complainant filed with the Center a Motion to Suspend Proceedings for 30 days to permit the opportunity for settlement discussions between the parties. On February 8, 2012, the Center notified suspension of the proceedings through March 9, 2012.
On March 2, 2012, Complainant submitted a request to reinstitute proceedings, representing that settlement discussion had been unsuccessful. Complainant’s request also included supplemental filings essentially consisting of citations to cases finding bad faith under Policy paragraph 4(b)(ii) and a group of five prior UDRP cases finding against Respondent and in favor of transfer. Respondent on March 2, 2012 objected to Complainant’s supplemental filing on the basis it was untimely, but added to its objection a list of six prior UDRP cases decided in Respondent’s favor. The Center reinstated proceedings on March 5, 2012.
The Center appointed Jeffrey D. Steinhardt, William R. Towns and Diane Cabell as panelists in this matter on March 26, 2012. The Panel finds that it was properly constituted. Each member of 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.
Complainant owns numerous registrations in the USA and internationally that include the trademark TUCKS, including, for example United States Trademark Registration No. 887,379 in International Class 5, with a first use in commerce of October 19, 1965. Complainant also owns domain names that include the TUCKS trademark, including [tucks.info], [tucks.biz] and [tucksbrand.com].
The disputed domain name was registered May 13, 2002. Beginning in 2002, and in 2004 and 2005, the website to which the disputed domain name routed displayed the statement that the site was under development along with a general directory page with content unrelated to the term “tucks” or the TUCKS trademark.[1] In September 2007, and through later months in 2007, the website displayed a number of commercial link references to the word “tucks” in the context of cosmetic surgery. In early February 2008, while keeping these references, more links were added referring to “Tuck” as a proper name.
Complainant alleges that it’s “TUCKS product line dates back almost half a century and is among the most popular brands in its category, with annual US sales in excess of $ 20 million. Through extensive use and advertising over many years, the TUCKS Mark has become famous and is uniquely identified with Complainants products.” Complainant contends that Respondent is using the TUCKS mark to attract users to Respondent’s “parking” website to generate “pay-per-click” revenue. Complainant avers that Respondent’s website links to websites of third parties that advertise products and goods in direct competition with Complainant’s hemorrhoid-related products marketed under the TUCKS mark.
Complaint’s legal allegations under the Policy include:
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That the disputed domain name is confusingly similar to Complainant’s TUCKS mark. In another allegation, Complainant contends that the disputed domain name wholly incorporates and is identical to Complainant’s marks.
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That Respondent has no rights or legitimate interests since Respondent enjoys no license, permission or authorization to use the disputed domain name, Respondent is not commonly known by the disputed domain name, and that “the only reason that Respondent could have for registering and using the Domain Name is that Respondent knew of the TUCKS Mark and wanted to trade on Complainant’s renown to lure consumers to its website.” The Complaint continues, stating upon information and belief that “Respondent’s only use of the Domain Name is in connection with the conduct described above, i.e., 1) first to redirect users to Respondent’s e-commerce website where he sold products in direct competition with Complainant and then 2) in association with what is essentially a non-functional holding website posted by the Registrar. Neither of these uses demonstrates a bona fide offering of goods or services nor a legitimate interest in the Domain Name.”
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That Respondent’s bad faith is demonstrated by its improper commercial exploitation of the TUCKS marks to make gain through consumer confusion and by linking to websites that directly compete with Complainant. Complainant also alleges that “[t]hese 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).”
On the basis of these allegations, Complainant seeks transfer of the disputed domain name.
B. Respondent Respondent concedes that the disputed domain name is identical to a trademark in which Complainant has rights. Respondent alleges, however, that it was unaware of the existence of the TUCKS mark when registering, and that it registered the disputed domain name as a part of its business, which invests and trades...
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