The Tylenol Company v. Kathy Lewis

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Tylenol Company v. Kathy Lewis

Case No. D2002-0432

1. The Parties

The Complainant is The Tylenol Company ("Tylenol"), a corporation organized and existing under the laws of the State of New Jersey, having its principle place of business in West Somerville, New Jersey, United States of America.

The Respondent is Kathy Lewis, an individual with an address in Chandler, Arizona, United States of America.

2. The Domain Name and Registrar

The domain name at issue is: <tylenol-with-codeine.com>, registered with Tucows, Inc., Toronto, Ontario, Canada ("Tucows").

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on May 4, 2002, in electronic form. The Center received the hard copy of the Complaint on May 6, 2002. The Center acknowledged receipt of the Complaint on May 10, 2002.

On May 13, 2002, a Request for Registrar Verification was transmitted to Tucows. Tucows responded on May 13, 2002, confirming the registration details and its receipt of a copy of the Complaint from Complainant by certified mail.

A Formal Requirements Compliance Checklist was initiated by the Center on May 22, 2002 and completed May 22, 2002. The Center determined that that the Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 ("the Supplemental Rules"). The Panelist has independently reviewed the Requirements and finds that the Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.

The Complainant paid the required fees for a single-member Panel on time and in the required amount.

No formal deficiencies having been noted, on May 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondents (with copies to the Complainant, Tucows and ICANN), setting a deadline of June 11, 2002, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by email to the email addresses indicated in the Complaint and specified in Whois confirmations received from Tucows and by post/courier to the indicated postal addresses. Having reviewed the communications records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."

On June 12, 2002, having received no formal Response from the designated Respondent, the Center transmitted to the parties a Notification of Respondent Default.

On June 25, 2002, the Center invited Richard Allan Horning to serve as the

Sole Panelist in Case No. D2002-0432 and transmitted

to him a Statement of Acceptance and Request for Declaration of Impartiality

and Independence. Richard Allan Horning’s Statement of Acceptance

and Declaration of Impartiality and Independence was received on June 25, 2002.

On June 28, 2002, the Center transmitted to the parties a Notification of Appointment

of Administrative Panel and projected decision date, in which Richard Allan

Horning was formally appointed as the Sole Panelist. The projected decision

date was July 12, 2002.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and the Supplemental Rules.

4. Factual Background

Complainant is a wholly owned subsidiary of Johnson & Johnson Corporation and is the owner of the following United States trademark Registrations:

(a) Reg. No. 890,360, for the mark TYLENOL, for analgesic, antipyretic preparations,

registered May 5, 1970, and renewed in 1990, in International Class 5.

(b) Reg. No. 1,252,705, for the mark TYLENOL CODEINE 3 & Capsule Design,

for a narcotic analgesic medication, registered October 4, 1983, in

International Class 5.

(c) Reg. No. 1,621,973, for the Mark TYLENOL, for use in connection with allergy,

sinus and cold medication, registered November 13, 1990, in International

Class 5.

(d) Reg. No. 1,777,613, for the mark TYLENOL PM, for use in connection with

analgesic sleeping aids, registered June 22, 1993, in International

Class 5.

(e) Reg. No. 1,852,189, for the mark TYLENOL FLU, for use in connection with

pharmaceutical preparation, namely, flu, cold, and cough medication, registered

September 6, 1994, in International Class 5. (Complaint, Annex

B, and Supplemental Filing dated July 2, 2002, in response to Procedural

Order No. 1)

Respondent Kathy Lewis registered the domain name <tylenol-with-codeine.com> on January 7, 2002 (Complaint, Annex A).

At the time of the submission of the dispute to the Panelist, the domain name <tylenol-with-codeine.com> resolved to a website entitled "Welcome to the web site of www.tylenol-with-codeine.com", a place holder for a web site to be developed.

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant have met their burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and,

2) that the Respondent has no legitimate interests in respect of the domain

name; and,

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain name at issue is either identical or confusingly

similar to the registered trademarks of Complainant. Hewlett-Packard Company

v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc.

v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0002000093679; Marriott

International, Inc. v. John Marriot, NAF Case No. FA0002000094737; Identigene,

Inc. v. Genetest Laboratories, WIPO Case

No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing &

Logistics Corp., NAF Case No. FA0003000094219; AT&T Corp. v. CME

Inc., WIPO Case No. D2001-1060; Microsoft

Corporation v. Global Net 2000, Inc., WIPO

Case No. D2000-0554; America Online, Inc. v. East Coast Exotics,

WIPO Case No. D2001-0661; EFG Bank

European Financial Group SA v. Jacob Foundation, WIPO

Case No. D2000-0036; The Chancellor, Masters and Scholars of the University

of Oxford v. DR Seagle t/a Mr. Oxford University, WIPO

Case No. D2001-0746; The Chancellor, Masters and Scholars of the University

of Oxford v. CQ, WIPO Case No. D2001-0920.

Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company's name or mark. In Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) the Ninth Circuit stated that "A customer who is unsure about a company's domain name will often guess that the domain name is also the company's name….[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." That expectation would be frustrated were Respondents permitted to take advantage of their cybersquatting.

Complainant has alleged and Respondents have failed to deny that they have

no legitimate interest in respect of the domain name at issue. Alcoholics

Anonymous World Services, Inc. v. Raymond, WIPO

Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S.,

WIPO Case No. D2000-0011. Respondents

are not commonly known by the domain name at issue, and have not acquired trademark

or service mark rights in the domain name. The Panelist finds that Respondents

have no rights or legitimate interest in the domain name.

The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of that Complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your website 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 website or location

or of a product or service on your website or location.

Tylenol is widely advertised and known in the United States, if not internationally.

Under these circumstances it must be presumed that Respondent was aware of the

mark when she registered the "tylenol-with-codeine.com" domain. "[I]t is not

possible to conceive of a plausible circumstance in which the Respondent could

legitimately use the domain name," and "[i]t is also not possible to conceive

of a plausible situation in which the Respondent would have been unaware of

this fact at the time of registration." Telstra Corp. Ltd. v. Nuclear Marshmallows,

WIPO Case No. D2000-0003; see also Deutsche

Lufthansa A.G. v. Jin Wang Huh, WIPO Case

No. D2001-1226; Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Distribution

Purchasing & Logistics Corp., WIPO

Case No. D2000-0464.

Respondent's failure to provide correct or operative addresses to Tucows, in

connection with her registration of the <tylenol-with-codeine.com> domain

name, creates an inference of Respondent's bad faith registration which has

not been rebutted. Deutsche Lufthansa A.G. v. Jin Wang Huh, WIPO

Case No. D2001-1226; Telstra Corp. Ltd. v. Nuclear Marshmallows,

WIPO Case No. D2000-0003.

Prior Panel decisions support the proposition that Respondent's passive holding

of the domain name registration can amount to "use" in bad faith; actual affirmative

use of the domain name is not required. Policy Paragraph 4(b)(i)-(iii); Telstra

Corp. Ltd. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003; see also Deutsche Lufthansa A.G. v. Jin Wang Huh,

WIPO Case No. D2001-1226; McNeil Consumer

Brands, Inc. v. MirWeb Solutions, WIPO

Case No. D2000-0612. Respondent has registered and is holding a domain name

corresponding almost exactly to a coined, arbitrary term that has no meaning

apart from Complainant's products. Registration and passive holding of a domain

name corresponding to a famous, arbitrary trademark that has no meaning apart

from identifying the complainant's product is evidence of bad faith use of the

domain name. Pharmacia & Upjohn Co. v. Moreonline, WIPO

Case No. D2000-0134; August Storck KG v. Tony Mohamed, WIPO

Case No. D2000-0196.

In the Pharmacia case, the Panelist found that the respondent's

registration and passive holding of <rogaine.net>, which corresponded

to the complainant's arbitrary and highly famous trademark for Rogaine hair

loss treatment, was necessarily in bad faith because the term "Rogaine" did

not have any meaning in any language apart from its use as the complainant's

trademark. Similarly, the Panelist in the <tylenol.org> case, McNeil

Consumer Brands, Inc. v. MirWeb Solutions, WIPO

Case No. D2000-612, held that the fact that the Tylenol mark is a "coined

arbitrary term that has no meaning apart from in relation to Complainant's products"

supported a finding that the respondent was using the domain name in bad faith.

As the Panelist in the <tylenol.org> case determined, "[i]t 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."

This Panelist reaches the same conclusion.

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondents' domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <tylenol-with-codeine.com> be transferred to the Complainant.

Richard Allan Horning

Sole Panelist

Dated: July 10, 2002

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