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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McNeil Consumer Brands Inc v. Mirweb Solutions
Case No D2000-0612
1. The Parties
The Complainant is McNeil Consumer Brands Inc ("McNeil") a New Jersey corporation and wholly owned subsidiary of Johnson & Johnson with its principal place of business at 1001 Route 202, Raritan, New Jersey 08869, USA. The Respondent is Mirweb Solutions whose address given on the Network Solutions WHOIS database is www.mirwebsolutions.com, Montreal, Quebec H2J 2Y2, Canada.
According to the WHOIS database, the domain name "mirwebsolutions.com" is registered by Bestshell.com Domains. The address for this entity is given as bestshell.com, 297 1er Rang, Acton Vale, Quebec, JOH 1A0, Canada. "firstname.lastname@example.org" is listed as the administrative, technical, billing and zone contact for this domain name as well. A copy of a WHOIS database search for "mirwebsolutions.com" conducted on June 15, 2000 is attached as Annex B to the Complaint.
2. The Domain Name and Registrar
The domain name the subject of the dispute is "tylenol.org" which is registered with Network Solutions Inc located at 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural history
The complaint was filed on 15 June 2000 by e-mail and on 19 June 2000 in hardcopy in accordance with the Rules, payment of the requisite fee was made. The Panel agrees with the Center’s assessment that the Complainant has complied with the formal requirements under the Rules and that the complaint was properly notified in accordance with the Rules. Acknowledgement of receipt of the complaint was given on 21 June 2000. A copy of the complaint was emailed to the Respondent at "www.mirwebsolutions.com" on 15 June 2000.
On 23 June 2000 the complaint was emailed to the Respondent at email address email@example.com with a response received on the same day. firstname.lastname@example.org is the email address given as the administrative contact for the Respondent at Network Solutions. A copy was also sent by courier to the address given for the administrative contact Bestshell.com at 297, 1er Rang, Acton Vale, Quebec JOH1A0, Canada. A faxed version sent to the Respondent on fax number 1450 546 1378 was unsuccessfully transmitted.
No response to the complaint was received by the Respondent. Accordingly notification of the response default was sent by email to the Respondent at email@example.com on 18 July. The Panel was subsequently appointed on 21 July consisting of a single member, Mr Clive Duncan Thorne.
Having reviewed the documents relating to service of the complaint upon the Respondent the Panel is satisfied that the complaint was properly notified in accordance with paragraph 2 (a) of the Rules.
4. Factual Background
The Complainant is represented by Messrs Patterson Belknap Webb & Tyler LLP of 1133 Avenue of the Americas, New York, 10036-6710. The Complainant is the owner of five US Federal Trade Mark registrations in respect of the mark TYLENOL as follows:
(a) Reg No 890,360 – TYLENOL for analgesic, antipyretic preparations; registered May 5, 1970; renewed in 1990.
(b) Reg No 1,252,705 – TYLENOL CODEINE 3 & Capsule Design for a narcotic analgesic medication; registered October 4, 1983;
(c) Reg No 1,621,973 – TYLENOL for use in connection with allergy, sinus and cold medication; registered November 13, 1990;
(d) Reg No 1,777,613 – TYLENOL PM for use in connection with analgesic sleeping aids; registered June 22, 1993; and with incontestable status.
(e) Reg No 1,852,189 – TYLENOL FLU for use in connection with pharmaceutical preparation, namely, flue, cold, and cough medication; registered September 7, 1994.
The Panel has also seen copies of the certificates of registration annexed to the Complaint as Annex D. The Panel is prepared to accept that these registrations are valid and subsisting.
The Complainant, through its licensee McNeil – PPC engages in the business of manufacturing and selling OTC pharmaceutical, health and personal care products including a well known line of OTC analgesics sold under the brand name TYLENOL. The Complainant through its licensee Ortho-McNeil engages in the business of manufacturing and selling prescription medications including a combination prescription medication sold under the name TYLENOL with codeine.
At paragraph 15 of the Complaint the Complainant points out that TYLENOL was coined as the brand name for an actaminophen product. It has no meaning in any language apart from serving as a brand signifier for the Complainants Tylenol products. The name Tylenol is arbitrary, fanciful and distinctive in the analgesic category. The Complainant also asserts that Tylenol is one of the best known and best selling OTC analgesics in the United States, being sold in virtually every food, drug, mass merchandise and convenience store in the country. As a result of these advertising and marketing efforts and the success of the products the trade mark Tylenol has acquired enormous fame, good will and nearly universal recognition among consumers and members of the medical community. The Complainant asserts that the mark is one of the best known trade marks in the health care field as well as one of the best known trade marks in the United States. In the absence of evidence to the contrary the panel is prepared to accept this evidence.
5. Parties contentions
The Complainant contends as follows
(i) That the domain name "tylenol.org" is identical or confusingly similar to the Complainant’s trade mark "TYLENOL"
(ii) That the Respondent has no rights or legitimate interest in respect of the domain name "tylenol.org"
(iii) That the "tylenol.org" domain name has been registered and is being used in bad faith within the meaning of paragraph 4(b) of the UDNDR Policy.
The Respondent having failed to file a Response there are no contentions submitted by the Respondent to be considered.
6. Discussion and Findings
(i) That the domain name "tylenol.org" is identical or confusingly similar to the Complainant'’ trade mark "TYLENOL".
The Panel is prepared to accept that the domain name "tylenol.org" is registered by the Respondent is identical or confusingly similar to the Complainant’s trade mark TYLENOL. For this purpose the Panel takes the view that nothing turns on the fact that the Respondent’s domain name includes the top level domain name ".org".
(ii) The Respondent has no rights or legitimate interest in respect of the "tylenol.org" domain name
The Panel takes the view that in the absence of submissions or evidence from the Respondent that the onus is upon the Complainant to prove that the Respondent has no rights or legitimate interest in the "tylenol.org" domain name. The Panel accepts that the Complainant and its licensees have rights in the trade mark "TYLENOL" and that they have not given the Respondent a licence or other consent to use the mark. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use the mark. There is no apparent connection between the domain name "tylenol.org", the name of the Respondent "mirwebsolutions" nor with the domain name "bestshell.com". There is no evidence that the Respondent has made any commercial use of the domain name by which it might establish that it has rights or legitimate interest in the domain name. There is no evidence of any commercial website which is attached to or which is accessed by the domain name "tylenol.org".
Given this position the Panel accepts that the Respondent has no rights or legitimate interest in respect of the domain name "tylenol.org".
(iii) The Respondent’s registration has been registered and is being used in bad faith.
Under paragraph 4(a) of the Policy this third element has to be proved by the Complainant in addition to the previous two contentions.
Paragraph 4(b) sets out certain circumstances which if found by the Panel to be present are mandatory evidence of the registration and use of a domain name in bad faith.
In support of this contention the Complainant makes the following submissions:-
(a) That it is "unquestionable" that the Respondent registered the domain name "tylenol.org" in bad faith. In support of this submission the Complainant argues that the Respondent would have been clearly aware of the Complainant’s marks when it registered the domain name. In particular the Complainant relies upon the "enormous fame" of the TYLENOL mark in support of this submission. The Panel is sympathetic to this argument but is not prepared to accept it. No evidence is given in the Complaint as to the existence of rights, either trade mark rights or trading good will in Canada where the Respondent is apparently based. The Complainant’s evidence is directed to United States trade marks and the Complainant’s trading reputation in the United States rather than in Canada.
(b) The Complainant also submits that the "passive holding" of a domain registration can amount to use in bad faith, taking into consideration the overall context of the Respondent’s behaviour. The Complainant argues that actual affirmative use is not required. The Complainant relies upon earlier decision of the Panel in Telstra Corp Limited –v- Nuclear Marshmallows WIPO D2000-0003 as support for the view that a passive holding of a domain name registration can in certain circumstances constitute bad faith. In that case a Panel accepted that because the Respondent did not conduct any "legitimate" commercial or "non commercial" business activity in Australia and that the Respondent had taken "deliberate steps to ensure that his true identity cannot be determined and communication with it cannot be made" and given the Complainant’s numerous trade mark registrations for "Telstra" it was not possible to conceive plausible circumstances in which the Respondent could legitimately use the domain name. It was therefore prepared to accept that the domain name had been registered in bad faith.
The Panel is prepared to follow the analogy of the Telstra case and to accept the Complainant’s submissions as follows:-
(a) That the Complainant’s mark TYLENOL is a coined arbitrary term that has no meaning apart from in relation the Complainant’s products.
(b) The Respondent has held the domain name "tylenol.org" passively thereby preventing the Complainant from reflecting its trade mark TYLENOL in a corresponding domain name
(c) The Respondent has provided incomplete contact information in its domain name registration and has on the face of it taken steps to conceal its true identity by "vesting" the ownership of the "tylenol.org" domain name in a series of internet entities.
(d) The Respondent has failed to put the domain name to any legitimate non commercial or fair use.
In the absence of submissions from the Respondent the Panel is prepared to accept that there is no counter evidence of any legitimate non commercial or fair use and that accordingly the registration of the domain name "tylenol.org" was in bad faith.
It remains for the Complainant to prove that the use of the domain name was also in bad faith. It appears to the Panel that in circumstances when a Respondent has been found to register a domain name in bad faith and that no subsequent active use takes place that the passive use of the mark must also be in bad faith.
The Panel therefore concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the policy.
In accordance with paragraph 4(i) of the Policy the Panel requires, as is requested by the Complainant, that the domain name "tylenol.org" be transferred to the Complainant. This decision is made in accordance with paragraph 15 of the Rules.
CLIVE DUNCAN THORNE
Dated: 3 August, 2000