The Complainant is Johnson & Johnson, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Phillipp Bosch, Germany
The disputed domain name <tylenol1st.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2020. On August 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2020, 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 July 18, 2020.
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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on September 18, 2020. 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 a well-known pharmaceutical and health products company based in United States, with operations around the globe through over 260 companies in 60 countries, employing approximately 134,000 people. The Complainant produces an antipyretic and analgesic over-the-counter medicine commercialized under the trademark TYLENOL, first introduced in the market in 1955 and globally sold since 1959, which active component is acetaminophen. The Complainant owns and operates a website containing information about its TYLENOL products under the domain name <tylenol.com> (registered on March 6, 1996), and further includes information about these products in the Complainant’s corporate website (“www.jnj.com”).
The Complainant holds a large portfolio of registered trademark rights in the mark TYLENOL in many jurisdictions, including:
Swiss Registration No. P-408928 TYLENOL, word, registered on February 28, 1994, in class 5;
United States Registration No. 890,360 TYLENOL, word, registered on May 5, 1970, in class 5;
United States Registration No. 1,621,973 TYLENOL, word, registered on November 13, 1990, in class 5; and
United States Registration No. 2,660,253 TYLENOL, word, registered on December 10, 2002, in class 5; (collectively the “TYLENOL mark”).
The disputed domain name was registered on April 29, 2020, and it is redirected to the website “www.intrameds.com”, in the English language, allegedly offering for sale generic drugs of various origins, including analgesics, antipyretics, as well as other categories of pharmaceuticals (anti-acids, antibiotics, anti-allergic and asthma, anti-depressant, anti-hair loss, etc.). This website includes in the left side of its heading, before the text content of the site, the words “INTRA MEDS” and a logo containing a cross, all in light blue color. The “about us” section of this website indicates, “Intra Meds is a well-established pharmacy service that deals primarily with generic medicines produced by quality-assured manufacturers from developing countries. This helps to minimize the self-cost without any impact on the efficiency or quality of the medicines”, this section further promotes the benefits of reducing pharmacy-shopping costs, and includes a general disclaimer related to all trademarks included in the website indicating “We are not in any way associated with copyright owners of any brand names. All trademarks belong to their respective owners. We are not affiliated with any such copyright holders”. The section related to “pain relievers” of this website includes an alleged “generic TYLENOL” product including the image of a tablet, as well as information about the product, specifically indicating that it is manufactured by “any on stock available manufacturer” and its active ingredient is acetaminophen.
Key contentions of the Complaint may be summarized as follows:
Through extensive use and advertising over many years (since 1955), the TYLENOL mark have become famous, being uniquely identified with the Complainant’s products and representing an enormous valuable goodwill. The Complainant’s website “www.tylenol.com”averages almost several hundred thousand visitors per month, or several million visitors per year.
The disputed domain name is confusingly similar to the TYLENOL mark, as incorporates this trademark in its entirety, merely adding “1st”, which does not avoid the confusing similarity, and the generic Top-Level Domain (“gTLD”) “.com”, which cannot be taken into consideration when judging confusing similarity.
The Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, the Complainant has no relationship with the Respondent, not having authorized the registration of the disputed domain name, and has never sold any TYLENOL products directly to the Respondent. The disputed domain name is used to redirect to the website “www.intermeds.com”, where unbranded, counterfeited, diverted or grey market TYLENOL products are sold, and, even if the products were genuine, this website does not comply with the requirements determined in the Oki Data Americas., Inc. v. ASD, Inc., WIPO Case No. D2001-0903, as its fails to disclose the lack of relationship with the Complainant and sells products of diverse origin. This use trades on the fame of the Complainant’s mark and misleadingly give consumers the impression that the Respondent’s website was authorized by the Complainant. Furthermore, the active drug component in genuine TYLENOL products is acetaminophen, so any “generic” version of the Complainant’s products would be generic acetaminophen, being impossible to offer “generic Tylenol” for sale, regardless of the source of the products.
The disputed domain name was registered and is being used in bad faith. Since the TYLENOL mark is well-known and the Respondent has no rights therein, the only reason the Respondent could have for registering and using the disputed domain name is to trade on the Complainant’s renown to lure consumers to its website, creating and profiting from consumers’ confusion. The Respondent is exploiting the goodwill and fame of the TYLENOL mark in bad faith in order to improperly deceive Internet users and benefit from their confusion financially, which constitutes bad faith under the Policy.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
The Complainant indisputably has rights in the registered TYLENOL mark. The disputed domain name incorporates this mark in its entirety followed by the term “1st”, which does not avoid confusing similarity with this trademark. The Complainant’s TYLENOL mark is clearly recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP 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 Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
It is to be noted that resellers or distributors, using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus have a right or legitimate interest in such domain name, if the following cumulative requirements are meet:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The analysis of these requirements is commonly known as the “Oki Data test” (referring to Oki Data Americas, Inc. v. ASD, Inc., supra). See section 2.8, WIPO Overview 3.0.
The documents provided by the Complainant shows that the disputed domain name redirects to a website, which commercializes not genuine TYLENOL products (manufactured by the Complainant) but alleged generic TYLENOL products. Further, this website commercializes not only alleged “generic TYLENOL” products, but also many other alleged pharmaceutical products of different origin for various purposes, being the “generic TYLENOL” products included within one of its numerous sections (the one related to “pain relievers”). This section indicates that the so-called “generic TYLENOL” products are manufactured by “any on stock available manufacturer”, and further indicates that their active ingredient acetaminophen. The Panel notes that the same section (related to “pain relievers”) includes other various alleged generic analgesic products without indicating their specific manufacturer (manufactured by “any on stock available manufacturer”), as well as various alleged “brand products” manufactured by Pharmaceutical laboratories unrelated to and competing with the Complainant. In addition, the Panel notes that the “about us” section includes at the end of its text a general disclaimer for all trademarks mentioned in the website (“We are not in any way associated with copyright owners of any brand names. All trademarks belong to their respective owners. We are not affiliated with any such copyright holders”). The Panel considers that this disclaimer does not prominently disclose the lack of relationship with the Complainant and its TYLENOL mark, in particular, as it does not mention specifically the Complainant and its trademark. Further, this disclaimer may go unnoticed, as it is not prominently included in the website and/or in the same section related to the alleged “generic TYLENOL” products, but at the bottom of the “about us” section. The Panel notes that the redirection of the disputed domain name to the website “www.intermeds.com” is made directly to its concrete section related to the alleged “generic TYLENOL”. Therefore, any Internet user accessing to the disputed domain name will access to the section related to the “generic TYLENOL” directly without being alerted of the lack of relationship with the Complainant and its mark, as the website only contains a general disclaimer in its “about us” section. Therefore, the Panel concludes that none of the requirements of the OKI Data test is met.
Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding term “1st”, which also may point to the Complainant and its notorious trademark, as an indication of one of its official sources or distributors. Therefore, the Panel considers that there is a risk of implied affiliation.
It is further remarkable the Respondent has not replied to the Complaint not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all the circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s TYLENOL mark in its entirety adding a term (“1st”), creating a likelihood of confusion or implied affiliation and the impression that the disputed domain name refers to one of the Complainant’s official stores or distributors and to the Complainant’s genuine products, suggesting sponsorship or endorsement by the Complainant;
(ii) the Complainant’s trademarks are notorious in its sector and the Complainant operates internationally including Germany, where the Respondent is located according to the Registrar verification;
(iii) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;
(iv) the disputed domain name redirects to a website which commercializes alleged “generic TYLENOL” products, as well as many other pharmaceuticals of different origin competing with the Complainant and its products; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
It is further to be noted that the disclaimer contained in the website linked to the disputed domain name is not prominently displayed on the site and/or the section related to the alleged “generic TYLENOL” products, but at the bottom of its “about us” section, and does not mention the Complainant and its TYLENOL mark. Therefore, the Panel considers that this disclaimer cannot cure the Respondent’s bad faith under the overall circumstances of this case. On the contrary, such disclaimer may be considered as an admission by the Respondent of knowing about the Complainant’s trademark and the potential confusion of Internet users. See section 3.7, WIPO Overview 3.0.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant’s TYLENOL mark with the intention of obtaining a free ride on their established reputation, seeking to mislead and attract Internet users to a commercial website selling alleged generic pharmaceutical products of various origins competing with the Complainant, which constitutes bad faith.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 disputed domain name <tylenol1st.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: September 28, 2020
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