WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Johnson & Johnson v. Ba Pham Thi Lan Phuong

Case No. D2017-1526

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 Ba Pham Thi Lan Phuong of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <neutrogenachinhhang.com> is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2017. On August 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 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. On August 10, 2017, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant requested English be the language of the proceeding on the same day. The Respondent did not reply by the specified due date. In response to a request of amendment by the Center, the Complainant filed an amended Complaint in English on August 10, 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 in English and Vietnamese of the Complaint, and the proceedings commenced on August 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 8, 2017.

The Center appointed Mario Soerensen Garcia 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.

4. Factual Background

The Complainant is Johnson & Johnson, a corporation existing under the laws of the State of New Jersey, United States. Johnson & Johnson is one of the largest and well-known companies in the world, including 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. It has more than 250 operating companies in 60 countries around the world, employing approximately 114,000 people.

In 1994 the Complainant acquired the company Neutrogena Corp. and today it sells a wide variety of Neutrogena products, such as soaps, moisturizers, acne treatments, sunscreens, shampoo, conditioners, makeup and cosmetics.

The Complainant owns several trademark registrations in multiple jurisdictions for the trademark NEUTROGENA, including the United States trademark registrations No. 5,096,878, of December 6, 2016, No. 2,452,209, of May 15, 2001 and No. 2,643,656 of October 29, 2002 and the Vietnamese registration No. 40009163, of September 16, 1993.

The Complainant is also the owner of the domain name <neutrogena.com> since 1996.

The disputed domain name was registered on February 27, 2015 and the website claims to provide genuine Neutrogena products in Viet Nam.

5. Parties' Contentions

A. Complainant

The Complainant argues that the Respondent registered the disputed domain name on February 27, 2015 long after the Complainant's trademarks were registered in the United States and Viet Nam — without any authorization, seeking to capitalize on the fame of the Complainant's NEUTROGENA mark.

The Respondent's domain name combines the famous mark NEUTROGENA in its entirety with the Vietnamese term "chinhhang", that means "genuine" in English. Also, the Respondent's website reproduces the Complainant's copyrighted images that appear on the Complainant's official website, with no disclaimer that explains the lack of relationship with the Complainant.

According to the Complainant, the disputed domain name is likely to cause confusion among the Complainant's customers and the consuming public, since it is confusingly similar to the Complainant's famous NEUTROGENA marks. In addition to that, by mentioning that the products offered for sale are genuine, the Respondent has created a false impression that there is authorization to sell the Complainant's products through its website, which is not true.

The Complainant alleges that this is a form of parasitic exploitation of the Complainant's name and business, that the Respondent is not authorized to register and use the disputed domain name and that there is no relationship between the Complainant and the Respondent.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The language of the Registration Agreement for the disputed domain name is Vietnamese.

The Complainant requested that English be the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) Portions of the website at the disputed domain name are in English, including nearly all of the products offered for sale at the website, which suggests a high possibility that the Respondent has sufficient knowledge of English;

b) The Respondent, having received notice of the proceeding in both Vietnamese and English, did not submit any comment regarding the language of the proceeding and did not file a response;

c) To require the Complainant to translate the Complaint and supporting evidence into Vietnamese would cause a significant delay in the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for the decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.

6.2. Substantive Elements of the Policy

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of the trademark registration for NEUTROGENA in the United States, Viet Nam and several others countries.

The Complainant's trademarks predate the disputed domain name.

The disputed domain name comprises the Complainant's trademark NEUTROGENA in its entirety. The addition of the Vietnamese term "chinhhang" ("genuine" in English), does not avoid confusing similarity between the disputed domain name and the Complainant's trademark. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).

The Panel finds that paragraph 4(a)(i) of the Policy has been established by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant's trademark or to register domain names containing the trademark NEUTROGENA.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is enough evidence showing that the Respondent developed its website to resemble the Complainant's official Neutrogena website and, therefore, enhance confusion among consumers.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant's trademark, does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark NEUTROGENA is registered by the Complainant in several jurisdictions, including the United States and Viet Nam and has been used since a long time.

The disputed domain name reproduces the Complainant's trademark in its entirety and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant's NEUTROGENA trademark is distinctive and widely known. Thus, a domain name that comprises such a well-known mark is suggestive of the registrant's bad faith.

In addition to the above, the Complainant showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainant, by claiming to provide "genuine" Neutrogena products in Viet Nam, by copying images from the Complainant's official website, and also by not including a disclaimer that explains the lack of relationship with the Complainant.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant's trademarks by misleading Internet users to believe that its website belongs to or is authorized by the Complainant.

This Panel finds that the Respondent's attempt of taking undue advantage of the trademark NEUTROGENA as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the conditions of paragraph 4(a)(iii) of the Policy have been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

7. Decision

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, <neutrogenachinhhang.com>, be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: September 29, 2017