ADMINISTRATIVE PANEL DECISION
Rodale, Inc. v. Johnson & Johnson
Case No. DBIZ2002-00154
1. The Parties
The Complainant is Rodale, Inc., a corporation organized in the Commonwealth of Pennsylvania, United States of America (USA), with place of business in Emmaus, Pennsylvania, USA.
The Respondent is Johnson & Johnson, with address in New Brunswick, New Jersey, USA.
2. The Domain Name and Registrar
The disputed domain name is .
The registrar of the disputed domain name is Virtual Internet, PLC, with business address in London, United Kingdom.
3. Procedural History
(a) Complainant initiated this proceeding under the Start-Up Trademark Opposition Policy for .BIZ (“STOP Policy”) by filing a complaint received via e-mail by the WIPO Arbitration and Mediation Center (“the Center”) on April 27, 2002, and received in hardcopy on April 30, 2002. The Center verified that the complaint complied with the Rules for Start-Up Trademark Opposition Policy (“the STOP Rules”) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (“WIPO Supplemental STOP Rules”). Complainant paid the requisite filing fees.
(b) On May 14, 2002, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent by courier and e-mail, and advised that the deadline for transmission of a response was June 3, 2002.
(c) On June 6, 2002, the Center transmitted by telefax and e-mail notification to Respondent of its default in responding to the complaint.
(c) Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on June 17, 2002, the Center appointed the undersigned sole panelist as the Administrative Panel in this matter and notified the parties of the appointment. The Center advised the Panel that absent exceptional circumstances it would be required to forward its decision to the Center by July 1, 2002.
(d) The Panel has received no additional requests or transmittals from the parties, and has not found it necessary to request additional information. These proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of registrations for the word trademark “PREVENTION” on the Principal Register of the United States Patent and Trademark Office (“USPTO”), Reg. No. 694,267, dated march 8, 1960, in International Class 16 (covering “Magazine”); Reg. No. 1,470,533, dated December 29, 1987, in ICs 9, 16, 24 and 25 (covering “Tape measures”, “Notepads, recipe cards and files”, “Towels”, “Aprons, headbands, hats, visors and shirts”); Reg. No. 1,914,946, dated August 29, 1995, in ICs 18 and 28 (covering “Umbrellas” and “Golf balls”), and; Reg. No. 2,550,507, dated March 19, 2002, in ICs 9 and 25 (covering “pre-recorded audio and video cassettes and CDs in the field of health, fitness, diet, exercise and healthy lifestyles”, and “shirts, hats running suits, sweatsuits, visors, pants, shorts and rainwear”). (Complaint, para. 13 & Annexes 3-6)
Complainant has registered the domain names (registered on September 9, 1996) and (registered on July 30, 2001) (id., Annexes 7-8). Complainant maintains an active commercial Internet website at <www.prevention.com> where it posts an on-line version of its “PREVENTION” magazine. Complainant earns revenue by selling advertising space at its <www.prevention.com> website. (Id., para. 13)
Complainant among its other business activities publishes “PREVENTION” magazine that has been in continuous publication since 1950. “PREVENTION” magazine is primarily directed to health and fitness related subject matter. Complainant uses its “PREVENTION” mark on a variety of goods and services, and intends to use its “PREVENTION” mark on a variety of collateral goods and services.
According to a .BIZ Registry (NeuLevel, Inc.) WHOIS database report furnished by Complainant, Respondent registered the disputed domain name on March 27, 2002 (id., Annex 1).
The .BIZ Registration Agreement incorporates the STOP Policy and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, revised November 19, 2001). In registering the disputed domain name with the registrar, Virtual Internet, PLC, Respondent accepted the .BIZ Registration Agreement. In doing so, Respondent consented to be bound by the STOP Policy and STOP Rules. The STOP Policy and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which WIPO is one. This Panel is appointed by the Center to decide the complaint under the STOP Policy pursuant to the STOP Rules.
5. Parties Contentions
Complainant states that it is the holder of various trademark and service mark applications and registrations for the term “PREVENTION”. Complainant states that it is the holder of several word trademark registrations for the word mark “PREVENTION” at the USPTO. See Factual Background supra.
Complainant alleges that the disputed domain name is identical and/or confusingly similar to its “PREVENTION” mark and its registered domain names and .
Complainant alleges that it uses the “PREVENTION” mark in commerce in the United States and on the Internet. Complainant argues that its “PREVENTION” mark is famous in connection with its magazine.
Complainant states in its own words:
“(10) Respondent registered the domain name in bad faith. Since Complainant publishes its PREVENTION magazine on-line, Complainant and Respondent are direct competitors in the goods and services, information and advice offered at their respective sites. On information and belief, Respondents use of Complainants mark is intended to and does confuse the relevant purchasing public into believing that Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with Respondents registered web site at . As Respondent well knows, Respondent is not part of or affiliated with Complainant and its PREVENTION goods and services. There is no legitimate reason for Respondent to register or use Complainants mark in its domain name, and no explanation for doing so.
(11) On information and belief, Respondent chose the domain name with full knowledge of Complainants rights therein. Respondent was on constructive notice of Complainants trademark rights in and registrations for PREVENTION by virtue of Section 22 of The Lanham Act, 15 U.S.C. §1072. On information and belief, Respondent was also on actual notice of Complainants highly successful and popular PREVENTION magazine, web site and television advertising campaigns at the time it registered prevention.biz by virtue of the success and popularity of Complainants PREVENTION magazine and mark. On information and belief, the acts herein alleged have been committed with the intent and purpose of creating a likelihood of confusion and appropriating and trading upon Complainants considerable goodwill and reputation.
(12) By the acts herein alleged, Respondent has infringed upon Complainants registered trademark and service mark PREVENTION. Respondent has thereby caused and will cause Complainant serious and irreparable damage. Respondent will continue and expand its damaging acts unless Respondents infringing domain name is transferred to Complainant.” (Complaint, para. 13)
Respondent did not reply to Complainants complaint.
6. Discussion and Findings
The STOP Policy is a set of rules applying to the resolution of domain name disputes involving IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz generic top level domain (gTLD), regarding the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP Policy is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) that has been applied by Administrative Panels in determining numerous disputes. However, the STOP Policy differs from the UDRP in certain material respects regarding comparison of the mark and the domain name, the enumerated criteria for establishing rights or legitimate interests, the enumerated elements necessary to demonstrate bad faith and in the types of remedy available. The Panel will make findings under the STOP Policy necessary to render a determination in this dispute.
In order to establish the right to transfer of a name from a respondent, a complainant under the STOP Policy must demonstrate pursuant to paragraph 4(a):
(i) The disputed domain name is identical 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 disputed domain name has been registered or is being used in bad faith.
The complainant must prove that each of these three elements is present.
The Center transmitted notification of the complaint and the complaint by air courier and e-mail to Respondent at the addresses set forth in its registration of the disputed domain name. The e-mail transmission is shown to have been undertaken successfully, and there is no indication in the file that the courier mailing was not successfully delivered. The Panel finds that the Center took the steps prescribed by paragraph 2(a) of the STOP Rules for communicating with Respondent. Paragraph 2(e) of the STOP Rules provides that when communication has been undertaken in accordance with paragraph 2(a), such communication “shall be deemed to have been made”. The Panel finds that Respondent had notice of this proceeding within the meaning of the STOP Rules.
Complainant has submitted substantial evidence of its rights in the word trademark “PREVENTION”, including registration on the Principal Register at the USPTO (see Factual Background, supra). The Panel determines that Complainant has rights in the trademark “PREVENTION” and that the disputed domain name and the “PREVENTION” mark are identical within the meaning of the STOP Policy.
This sole panelist had occasion to analyze the elements necessary for establishing a famous mark in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 and Monty Roberts v. J. Bartell, WIPO Case No. D2000-0300. Among the principal criteria for establishing fame are “the degree of inherent or acquired distinctiveness of the mark” and “the duration and extent of use of the mark in connection with the goods or services with which the mark is used”.
Complainant has indicated that its “PREVENTION” mark is famous in connection with its magazine that has been in continuous publication since 1950. Beyond this assertion, Complainant has merely stated that its mark is famous.
The term “PREVENTION” is a common descriptive word in the English language used to refer to acts taken to avoid some occurrence or consequence. Complainant uses the term in this descriptive sense in connection with its magazine, referring to measures that a person may take to avoid health-related difficulties, as in “an ounce of prevention is worth a pound of cure”. As used by Complainant in connection with its magazine, the word “PREVENTION” has become sufficiently distinct to be associated with Complainants product. However, as a common descriptive term, Complainant bears a substantial burden in proving “PREVENTION” has become “famous” in connection with its product.
Complainant might be able to sustain that burden, but it has not done so here. It has not submitted evidence regarding the level of circulation of its magazine, the amount of its advertising expenditure in connection with its magazine, or public association of the mark with its magazine. Although in some cases marks might be so widely advertised and known that their famous character is beyond doubt, as a general rule the mere assertion of fame does not suffice to prove it.
The STOP Policy listing of elements that will establish rights or legitimate interests in a disputed domain name, though not exhaustive, is different than the listing of the UDRP. Paragraph 4(c) of the STOP Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [respondents] rights or legitimate interests for purposes of paragraph 4(a)(ii)”:
i Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii Before any notice to respondent of the dispute, its 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
iii Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights.
Paragraph 4(c) of the STOP Policy does not enumerate the legitimate noncommercial or fair use element of paragraph 4(c)(iii) of the UDRP. On the other hand, the STOP Policy adds an element that the respondent may demonstrate that it owns a trade or service mark that is identical to the domain name.
Respondent has not replied to the complaint, and has offered no basis upon which the Panel might conclude that it has established rights or legitimate interests in the disputed domain name. Respondent has not established that it owns or is beneficiary of a mark identical to the disputed domain name, that it has made preparations to use the name for a bona fide offering of goods or services, or that it has been commonly known by the domain name.
The Panel is aware by its own knowledge that Respondent is a major multinational corporation with substantial interests in health related products, including pharmaceuticals. However, the Panels knowledge of Respondents line of business does not establish that Respondent has rights or legitimate interests in the disputed domain name since the Panel cannot simply infer that Respondent is preparing to make a legitimate use of Complainants mark in connection with a bona fide offering of goods or services.
The Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name.
The STOP Policy includes a non-exhaustive list of circumstances that will demonstrate bad faith registration or use of a disputed domain name:
“(i) Circumstances indicating that [respondent has] registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on your web site or location.” (para. 4(b), STOP Policy)
There is no evidence that Respondent registered the disputed domain name in order to sell it to Complainant or its competitor. There is no direct evidence that Respondent registered the name to prevent Complainant from registering it, or that it set out to disrupt Complainants business. Complainant does not allege any of the foregoing potential elements of bad faith.
Complainant alleges, however, and the Panel accepts that in the circumstances of this proceeding Respondent registered the disputed domain name to intentionally attract Internet users to its own website or other on-line location by creating a likelihood of confusion with Complainants “PREVENTION” mark regarding Complainants sponsorship of or affiliation with Respondents website. Complainant uses the “PREVENTION” mark not only in connection with a successful magazine in the field of health, but notably makes use of the mark in connection with an active commercial website . Respondent is as a multinational corporate enterprise with substantial interests in the health field, and would benefit commercially if Internet users seeking Complainants on-line location were diverted to it. Respondents use of “PREVENTION” as a domain name to identify a web location would be likely to confuse Internet users seeking Complainants on-line magazine. Such Internet users might readily conclude that Complainant had been authorized by Respondent to use its mark, or for that matter had acquired Respondent, or its magazine and rights to use its mark.
Respondent knew of Complainants mark when it registered the disputed domain name. Complainants mark was long-registered and used, and as an enterprise with interests in the same field as Complainant, Respondent would be aware of its magazine and mark. Moreover, under the procedure of the start-up system for allocation of .biz domain names, Respondent was notified of Complainants asserted rights in its mark prior to completing its registration of the disputed domain name.
Respondent has offered no alternate explanation for its registration of the disputed domain name. It certainly has the resources to provide such an explanation.
The Panel finds that Respondent registered the disputed domain name in bad faith.
Complainant has met the burden of proving that Respondent has registered a domain name identical to a trademark in which Complainant has rights, that Respondent has not established rights or legitimate interests in that domain name, and that Respondent registered the disputed domain name in bad faith, all within the meaning of paragraph 4(a) of the Stop Policy. The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
The Panel determines that Complainant, Rodale, Inc., has met the burden of proving that Respondent, Johnson & Johnson, has registered the disputed domain name, , identical to a trademark in which Complainant has rights, that Respondent has not established rights or legitimate interests in that domain name, and that Respondent registered the disputed domain name in bad faith, all within the meaning of paragraph 4(a) of the Stop Policy. The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
Frederick M. Abbott Sole Panelist
Dated: June 30, 2002