The Complainant is Johnson & Johnson Corporation of New Brunswick, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondent is, collectively, Gidget's Active Organics, care of Network Solutions of Drums, Pennsylvania, United States of America, and Janet Rossi of Colorado Springs, Colorado, United States of America.
The disputed domain name <activenaturalskincare.com> (“the Domain Name”) is registered with Network Solutions, LLC (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2011. On January 5, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 5, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 10, 2011, 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 amendment to the Complaint on January 10, 2011.
The Respondent communicated with the Center by email on January 10, 2011 and January 11, 2011, which the Center acknowledged, confirming that a Complaint had been filed against the Respondent, which the Center was in the process of reviewing. The Center advised the Respondent that the due date for a Response would be twenty days from the date of formal notification. The Center further advised that if no further communications or formal Response were received by the due date for Response, the Center would forward the Respondent’s emails to the Panel, once appointed, for consideration in lieu of a Response.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Respondent did not submit a formal response by the due date. Accordingly, the Center notified the Respondent’s default on February 2, 2011.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 11, 2011. 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, a New Jersey corporation with 114,000 employees in 60 countries, produces and sells a line of skin care products branded as ACTIVE NATURALS or AVEENO ACTIVE NATURALS. This product line represents annual sales throughout the United States in excess of USD 500 million. It is undisputed that this is one of the most popular skin care brands in the United States, and that the mark is well known and long established through advertising and retail sales including placement in major retail chains such as Walmart, Costco, Target, Walgreens, RiteAid, and CVS, as well as specialty stores, and through online advertising and sales by those chains and also at <amazon.com>, <drugstore.com>, <ulta.com> (a beauty products website) and the Complainant’s own relevant product-line website at “www.aveeno.com”.
The Complainant holds multiple ACTIVE NATURALS trademarks in several countries, including the following registered with the United States Patent and Trademark Office:
MARK | REGISTRATION NUMBER | REGISTRATION DATE |
|
ACTIVE NATURALS (standard character mark) |
3,032,656 |
December 20, 2005 |
|
ACTIVE NATURALS (words and design) |
3,071,438 |
March 21, 2006 |
|
AVEENO ACTIVE NATURALS (stylized letters) |
3,329,980 |
November 6, 2007 |
The Domain Name was registered on December 1, 2008. As of October 9, 2010, the Registrar’s WhoIs database listed the name of the registrant as Cleopatra’s Day Spa of Fort Collins, Colorado. The registration was later changed to the name of the Registrar’s domain privacy service. On receiving notice of this dispute, the Registrar updated the WhoIs data to show the Respondent Gidget’s Active Organics as the registrant, with the address “care of” the Registrar at its own postal address in Drums, Pennsylvania.
The Domain Name resolves to a website apparently under construction, which displays the following sentence: “Ludovica Active Natural Skincare is available!” This is followed by contact information for “Janet” at an email address with the domain name <frii.com> (which is associated with a Colorado web hosting and Internet services company) and the statement that “[o]ur wonderful skincare line is growing and expanding.” The page also includes the message, “This site will be more functional in about a month.”
On January 10, 2011, Janet Rossi of Fort Collins, Colorado corresponded with the Center after receiving notice of the Complaint. Ms. Rossi identified herself as the owner of the Respondent Gidget’s Active Organics and of the Domain Name, and she furnished preferred contact details. In further communications with the Center, Ms. Rossi objected to the Complainant’s characterization of her initial email as containing “admissions”. She offered no substantive reply to the Complaint, however, and no Response was submitted in this proceeding.
Cleopatra’s Day Spa, which was first listed as the registrant of the Domain Name, has a corresponding domain name but no active website. Visitors to <cleopatrasdayspa.com> are redirected to a currently inactive website associated with the domain name <fortcollinsdayspa.com>. The WhoIs database for <fortcollinsdayspa.com> shows the same registrant as for the Domain Name, Gidget’s Active Organics, with Janet Rossi named as the administrative contact. An archived page from the website associated with <fortcollinsdayspa.com> in June 2008, found through the Internet Archive’s Wayback Machine, advertised skin care treatments available at Cleopatra’s Day Spa in Fort Collins, Colorado. The website named several skin care products, such as Eminence Organic Skincare, that compete with those of the Complainant.
Gidget’s Active Organics, Cleopatra’s Day Spa, and Fort Collins Day Spa are not listed in the online database of business names, trademarks, and trade names registered with the Colorado Secretary of State. They appear to be either alter egos for Ms. Rossi or unregistered business entities of which she is or was an owner. As Ms. Rossi claimed in correspondence with the Center to be the owner of the Respondent Gidget’s Active Organics, the Panel will refer to Ms. Rossi and Gidget’s Active Organics collectively as “the Respondent”.
The Complainant contends that the Domain Name is confusingly similar to its registered ACTIVE NATURALS and AVEENO ACTIVE NATURALS trademarks, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent registered and used the Domain Name in bad faith, in an attempt to mislead Internet users familiar with the Complainant’s marks and sell them competing skin care products and related services.
The Respondent did not reply to the Complainant’s substantive contentions.
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar 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 domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant has demonstrated rights in the registered ACTIVE NATURALS standard-character trademark. Because of this, it is unnecessary to determine whether the Complainant has standing under paragraph 4(a)(1) of the Policy by virtue of its registered design marks in which the words “Active Naturals” are featured.
The Domain Name includes the Complainant’s ACTIVE NATURALS mark, sharing its last letter with the first letter of the additional word “skincare” (or alternatively the two words “skin care”). The additional generic words do not diminish the likelihood of confusion with the Complainant’s mark, particularly since the Complainant’s mark is associated precisely with skin care products. Accordingly, the Panel finds confusing similarity between the Domain Name and the Complainant’s mark within the meaning of the Policy, paragraph 4(a)(i).
It is undisputed that the Complainant has not authorized the Respondent to use the ACTIVE NATURALS marks in the Domain Name. The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could nevertheless demonstrate rights or legitimate interests in a domain name, including:
“(i) before any notice to you of the dispute, your 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.“
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Complainant has done so here, by establishing that its registered ACTIVE NATURALS mark is well known and that the confusingly similar Domain Name is used to advertise competing products.
There is no Response in the current proceeding, and no attempt to rebut the Complainant’s prima facie case. The record does not indicate that the Respondent has been known by a name corresponding to the Domain Name, nor that it has acquired trademark rights in a corresponding name. The Respondent advertises a product with a name that is similar to the Complainant’s mark, “Ludovica Active Natural Skincare”. There is nothing in the record that establishes whether this is the Respondent’s own product and, if so, when the Respondent began to use this name or make demonstrable preparations to use it for a skin care product. There is also no evidence in the record that the Respondent is a reseller with rights to use a portion of that product name as a domain name.
The Panel finds no persuasive evidence, on this record, that the Respondent has rights or legitimate interests in the Domain Name. The Panel concludes that the second element of the Complaint has been established.
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, on which the Complainant relies:
“(iv) 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.”
This example seems to fit the circumstances of the current proceeding. As discussed in the “Factual Background” section above, from the available record it appears that the Respondent, Ms. Rossi, has for some years offered day spa services in Fort Collins, Colorado under several different business or trade names, including the one currently listed as the registrant of the Domain Name, in which she has used and sold skin care products. It is implausible that she was unaware of the Complainant’s heavily advertised, widely available products sold under the registered ACTIVE NATURALS mark, and Ms. Rossi did not deny such knowledge in her communications with the Center. She has sold competing products in her business, and the website associated with the Domain Name advertises a competing line of skin care products. It is a fair inference that a primary motivation for selecting the Domain Name, which does not correspond to any of the several names used for Ms. Rossi’s day spa business, was an effort to exploit the reputation of the Complainant’s well-known mark for products in the same field. Ms. Rossi communicated with the Center but never denied such knowledge or intent and never offered a Response with an alternative, legitimate explanation for registering and using a Domain Name similar to a well established mark for skin care products.
On this record, the Panel concludes that the third element of the Complaint has been established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <activenaturalskincare.com> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: February 14, 2011