The Complainant is Johnson & Johnson of New Brunswick, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is troy ho of Guangzhou, Guangdong, China, self-represented.
The disputed domain name <aveenocn.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 17, 2015. On November 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2015, 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 proceeding commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. The Response was filed with the Center on December 10, 2015.
On December 11, 2015, an unsolicited Supplemental Submission was received from the Complainant.
The Center appointed Douglas Clark as the sole panelist in this matter on December 16, 2015. 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 an American pharmaceutical and health products company with operations around the world. The Complainant is the registered proprietor of the trademarks AVEENO and AVEENO ACTIVE NATURALS in numerous countries including China.
The Respondent is an individual based in China. The disputed domain name <aveenocn.com> was registered on March 6, 2015. It resolved for a time to a page providing information on, and apparently selling, diverted and grey market Aveeno products.
The Complainant argues that the disputed domain name <aveenocn.com> is made entirely up of the registered trademark AVEENO and the geographic description "cn" to which generic Top-Level Domain ("gTLD") ".com" has been added. It is therefore confusingly similar to the Complainant's registered trademarks AVEENO and AVEENO ACTIVE NATURALS.
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for AVEENO. The website at the disputed domain name is being used to promote and sell diverted or grey market Aveeno products and claims to be an "official website" and uses text translated from the Complainant's official Engish website. Under the generally accepted principles set out in the decision in Oki Data Americas, Inc. v. ADS, Inc., WIPO Case No. D2001-0903 a re-seller must accurately disclose its relationship with the trademark owner. The Respondent has not disclosed its relationship but instead seeks to give the impression it is an official website.
The Complainant submits that the Respondent registered the disputed domain name incorporating the registered trademark AVEENO deliberately to attract business to its website and as such the registration and use was in bad faith.
The Complainant also filed a Supplemental Submission on the basis that the Response raised issues that could not have been reasonably anticipated at the time of filing the Complaint. As set out below, the Respondent claimed to be a fan site and to have only re-directed the disputed domain name to the website "www.aveeno-china.com" for a brief period of time. The Panel agrees that these arguments could not have been reasonably anticipated and has considered the Supplemental Submission. The key points from the submission are: 1) that a fan site must be clearly distinguishable from the official website of a trademark owner and be noncommercial and 2) the domain name <aveeno-china.com> is not related to the Complainant.
The Respondent in its Response relied on two main contentions. First, that the disputed domain name <aveenocn.com> had been registered for use as a fan site to provide information to those not familiar with Aveeno products. Second, that the disputed domain name had not been used. It had, however, been briefly forwarded to "it's official website 'www.aveeno-china.com'". It is not clear whether the reference to "official website" is to the official website of the Complainant or the Respondent.
The disputed domain name <aveenocn.com> is made up of the registered trademark AVEENO, the geographic designation "cn" and the gTLD ".com". The disputed domain name is confusingly similar to the registered trademark AVEENO.
The Panel notes that the Respondent does not challenge this in its Response, stating, instead, that the disputed domain name was registered as a fan site.
The first part of paragraph 4(a) of the Policy is therefore satisfied.
The Respondent claims that the disputed domain name was registered with the intent to be used as a fan site and that the disputed domain name was mistakenly forwarded for a short period of time to the domain name <aveeno-china.com>.
The evidence does not support the Respondent's contentions. The Complainant's evidence includes printouts taken directly from the website "www.aveenocn.com" which advertise the Complainant's products. The website was not being forwarded. It was not a fan site. The printout included links setting out "payment methods" indicating that products could be purchased. In addition, the domain name <aveeno-china.com> is registered by a third party and is not related to the Complainant.
Further, the Respondent has not also satisfied the criteria in the Oki Data case. The website under the disputed domain name claimed to be an official website and did not disclose that the Respondent was not related to the Complainant. (See also paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
Accordingly, the Panel is satisfied that the Respondent has not established any rights or legitimate interests in the disputed domain name.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <aveenocn.com> was registered in bad faith and is being used in bad faith.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The website under the disputed domain name was clearly being used to advertise and promote the sale of products and claimed to be an official website of the Complainant. This was a clear claim to be affiliated to the Complainant.
The third part of paragraph 4(a) of the Policy is therefore satisfied.
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 <aveenocn.com> be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: December 30, 2015