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 Lucky Lakk of Pathumthani, Thailand.
The disputed domain name <aveenothailand.com> is registered with OnlineNic, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2018. On January 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2018, 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.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2018.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 9, 2018. 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.
The Complainant is one of the larger and better-known companies in the world. The Johnson and Johnson family of companies (“J&J family”) includes a premier consumer health company, a large and diverse medical device and diagnostics company, a large biologics company and a large pharmaceuticals company. The J&J family has more than 250 operating companies in 60 countries around the world, employing approximately 114,000 people.
The Complainant’s line of skin care products sold under the AVEENO trademark dates back more than half a century. It is among the more popular brands in its category, with annual United States sales in excess of USD 500 million. The Complainant owns United States federal registrations for its AVEENO trademark, dating from at least as early as 1997. The Complainant also owns registrations for its AVEENO trademark in jurisdictions around the world, including in Thailand.
The disputed domain name was registered on October 9, 2016. The Complainant has provided a screenshot showing that it resolved to a website inviting visitors to “Enter to Website”. Once Internet users clicked on the words “Enter to Website” they were redirected to a storefront at “www.lazada.co.th” (“lazada website”). The Complainant has provided another screenshot showing that the lazada website contained words in the Thai language that in English means “Supplier’s Products: Best Price in Thailand, Thailand.” The screenshot also shows that the store at the lazada website sold a number of AVEENO-branded products in addition to food, shoes and other products not made or sold by the Complainant. Currently the disputed domain name resolves directly to a website at “www.lazada.co.th” with the word “Aveenoshop” in the top left-hand corner of the home page. It displays a range of items for sale, few or none of which are branded with the AVEENO trademark.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s AVEENO trademark because: (i) it incorporates it in its entirety, merely adding the geographic term, “thailand” which does nothing to distinguish the disputed domain name from the Complainant’s registered trademark as it is a non-distinctive word which adds to, rather than diminishes, the likelihood of confusion; (ii) most Internet users who see the disputed domain name are likely to recognize the Complainant’s trademarks and assume that it, and any website associated with it, is owned, controlled or approved by the Complainant; (iii) consumers who search the Internet for legitimate retailers of the Complainant’s goods in Thailand may be directed to the website resolving from the disputed domain name and its corresponding storefront at the lazada website, creating a probability of confusion as the Respondent implies that it is an authorized retail site for genuine AVEENO products in Thailand; and (iv) the remaining “.com” suffix in the disputed domain name cannot be taken into consideration when judging confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) it was registered long after the Complainant had established rights in its AVEENO trademark through extensive use around the world over the past 60 years; (ii) no relationship exists between the Respondent and the Complainant or any of the Complainant’s licensees, agents or affiliated companies that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name; (iii) the Respondent is not commonly known by the disputed domain name; (iv) the only reason that the Respondent could have for registering and using the disputed domain name is that the Respondent knew of the Complainant’s well-known AVEENO trademark, and wanted to trade on the Complainant’s renown to lure consumers to its website previously dedicated to the sale of diverted or grey market AVEENO products; (v) the website resolving from the disputed domain name does not disclose the lack of any relationship between the Complainant and the Respondent, and it sells a number of items other than those sold under the Complainant’s AVEENO trademark; (vi) the website resolving from the disputed domain name uses the AVEENO trademark and photographs of the Complainant’s products to misleadingly give consumers the impression that the Respondent’s website was authorized by the Complainant; and (vii) the Respondent’s website resolving from the disputed domain name unquestionably trades on the fame of the AVEENO trademark and, as such, cannot constitute a bona fide use.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith because: (i) the Respondent is improperly commercially exploiting the disputed domain name and the AVEENO trademark for its own gain; (ii) by using what appear to be the Complainant’s own images of its AVEENO products in the listings at the lazada website, the Respondent has created the likelihood that the public will be confused into believing, falsely, that the disputed domain name and the website resolving from it have a connection with the Complainant; and (iii) the Respondent earned revenue by drawing consumers to its site by its unauthorized use of the Complainant’s AVEENO trademark in the disputed domain name, and otherwise profiting from the consumer confusion that is the inevitable result of the Respondent’s misappropriation of the AVEENO trademark.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name incorporates the whole of the Complainant’s registered trademark AVEENO, and adds the word “thailand”. The distinctive component of the disputed domain name is the Complainant’s trademark. The addition of the geographic term “thailand” does not lessen the confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its AVEENO trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website offering for sale a range of products, some of which purport to be produced by the Complainant whilst others are unrelated to the Complainant’s business. The lack of any relationship between the Complainant and the operator of this website is not noted at the website. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered many years after the Complainant first registered its AVEENO trademark. The evidence on the record provided by the Complainant with respect to the use of its AVEENO trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <aveenothailand.com> be transferred to the Complainant.
Andrew F. Christie
Date: March 23, 2018
Stay updated! Get new cases and decisions by daily email.