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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Johnson & Johnson -v- Oxyvita Ltd [2004] DRS 1419 (5 February 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1419.html Cite as: [2004] DRS 1419 |
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Nominet UK Dispute Resolution Service
DRS 1419
Johnson & Johnson –v- Oxyvita Limited
Decision of Independent Expert
1. Parties:
Complainant: Johnson & Johnson
Country: USA
Respondent: Oxyvita Limited
Country: GB
2. Domain Names:
ky-jelly.co.uk;
e-ky-jelly.co.uk;
ky-jelly-online.co.uk;
ky-jellyandcondoms.co.uk;
ky-jellyandthings.co.uk;
ky-jellynthings.co.uk;
ky-jellyuk.co.uk;
johnson-and-johnson.co.uk
3. Procedural Background:
The Complaint was lodged with Nominet on 24th November 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 27th November 2003 and informed the Respondent that it had 15 days within which to lodge a Response.
No response was received from the Respondent.
Accordingly the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
None
5. The Facts:
Complainant:
The Domain Names in issue are ky-jelly.co.uk; e-ky-jelly.co.uk; ky-jelly-online.co.uk; ky-jellyandcondoms.co.uk; ky-jellyandthings.co.uk; ky-jellynthings.co.uk; ky-jellyuk.co.uk; johnson-and-johnson.co.uk.
(a) The Complainant is the legal proprietor of rights in the trade marks K-Y, K-Y (stylised), K-Y JELLY, K-Y LIQUID, JOHNSON & JOHNSON, JOHNSON & JOHNSON (stylised) and JOHNSON AND JOHNSON. In particular, the Complainant owns the following marks: UK Trade Mark Registration No. 620619 K-Y (stylised) covering “lubricants in jelly form for surgical instruments”; UK Trade Mark Registration No. 2251501 K-Y covering “lubricants” and “vaginal lubricants”; Community Trade Mark Registration No. 2607885 K-Y LIQUID covering “lubricants for personal use”; Community Trade Mark Registration No. 2609568 K-Y (stylised) covering “lubricants for personal use”; and Community Trade Mark Registration No. 2610442 K-Y LIQUID (stylised) covering “lubricants for personal use”. together with numerous registrations consisting of or containing the elements JOHNSON & JOHNSON or JOHNSON & JOHNSON (stylised). It will be seen that the Complainant’s registered rights in the JOHNSON & JOHNSON marks date from 1951, and that it has registrations in relation to a broad range of goods and services including (but not limited to) medical devices, consumer health and beauty care products, pharmaceutical preparations and “lubricating jelly for personal use” (see in particular UK trade mark registration no. 1511845). (a) The Complainant also asserts the following common law rights in the trade marks K-Y JELLY, KY JELLY, JOHNSON & JOHNSON and JOHNSON & JOHNSON (stylised) through extensive use. (i) K-Y JELLY / KY JELLY The Complainant has used the trade mark K-Y JELLY in (inter alia) the United Kingdom in relation to lubricants for medical and personal use for over thirty years. The Complainant currently spends approximately £200,000 per year in advertising their goods in the UK. These advertisements appear in mass-market publications such as women’s magazines nation-wide. The Complainant’s K-Y JELLY products are well known, and had a combined UK market share of over 84% (the relevant market being lubricating jelly) for the 52 week period prior to 14 July 2002. (ii) Johnson & Johnson / Johnson and Johnson Johnson & Johnson was founded in 1886 in New Brunswick, New Jersey, USA. The first European Affiliate Company (Johnson & Johnson Ltd) was incorporated in the United Kingdom in 1924, and there are now at least 80 Johnson & Johnson Affiliate Companies in Europe and at least 6 in the UK. The Complainant’s Affiliate Companies are wholly owned subsidiaries of Johnson & Johnson.
Products sold by Johnson & Johnson affiliate companies in Europe bear the “housemark” JOHNSON & JOHNSON (stylised), either alone or as a part as a composite brand such as “Ethicon” “a JOHNSON & JOHNSON Company”. In such cases, use of the trade mark indicates to end users that the product is being sold by an Affiliate Company of the Johnson & Johnson group of companies, and that those products are of a high quality which is controlled by the Complainant. As a consequence of the long-standing and substantial use of the trade marks K-Y and K-Y JELLY and JOHNSON & JOHNSON, and the active promotion of goods thereunder, the Complainant has acquired a substantial goodwill in the aforesaid trade marks in the United Kingdom. It is submitted that the use of domain names that so closely resemble the Complainant’s earlier trade mark rights (see further below) will undoubtedly result in confusion on the part of the public. It is also submitted that visitors to the Respondent’s websites will assume a business or other connection between the disputed domain names and the Complainant, as proprietor of the earlier trade mark registrations mentioned above and the substantial common law rights in the K-Y, K-Y JELLY and JOHNSON & JOHNSON trade marks. This is particularly the case bearing in mind the fact that the Complainant is active in many fields.
It is asserted that the disputed domain names are abusive registrations under paragraph 3(i)(c) of the Nominet DRS Policy (“the Policy”), because there are circumstances indicating that the Respondent has registered the disputed domain names primarily for the purpose of unfairly disrupting the business of the Complainant. It is also claimed that the Respondent’s use of the disputed domain names will confuse people or businesses into believing that the domain names are registered to, operated by, or otherwise connected with the Complainant, and that the disputed domain names are therefore abusive registrations within the meaning of paragraph 3(ii) of the Policy. Further, it is submitted that the disputed domain names are abusive registrations under paragraph 3(iii) of the Policy, because the Respondent is engaged in a pattern of making abusive registrations. In this regard, the Respondent has without justification registered eight domain names incorporating two of the Complainant’s trade marks (c) The Respondent is not an Affiliate or licensee of the Complainant, nor is it authorised by the Complainant to use the names K-Y JELLY, KY Jelly, “Johnson & Johnson” or “Johnson and Johnson” in the course of trade. The printouts of the home pages and other webpages of the ky-jelly.co.uk, e-ky-jelly.co.uk, ky-jelly-online.co.uk, ky-jellyuk.co.uk, ky-jellyandcondoms.co.uk, ky-jellyandthings.co.uk, ky-jellynthings and johnson-and-johnson.co.uk websites disclose that the Respondent claims that “KY Jelly and Condoms” is an “authorised European and Middle Eastern distributor”. The Complainant has no business or other connection with the Respondent. Notwithstanding, the Respondent is suggesting it has a connection with the business of the Complainant which will mislead the public into assuming that the Complainant is authorising the sale of goods by the Respondent, and that the goods sold are under the control of the Complainant. The operation of the Respondent’s websites will therefore disrupt and harm the business of the Complainant, in that sales by the Complainant’s properly authorised distributors will be adversely affected. (d) The first sentence of the first paragraph of the text currently featured on the home page of the ky-jellynthings.co.uk website reads: “A firm favourite for many years KY Jelly by Johnson & Johnson is the number one lubricant available today”. Accordingly, the Respondent is aware of the Complainant’s rights in the name K-Y JELLY and it is submitted that it could have no legitimate reason for registering domain names which are known to be closely similar to the name of the Complainant’s product, company name and registered trade marks, other than to take unfair advantage of these rights. (e) It is also seen from the said websites that the Respondent is offering other goods for sale on its websites under the “KY Jelly” and “johnson-and-johnson” trade marks, namely, Durex and Mates condoms, “adult” toys and sex aids, pheromone sprays, oxygen canisters, liquid oxygen, spring water, bath salts, herbal preparations and a “drug free pain relief system”. The Complainant contends that the Respondent is using the disputed domain names in a way that is likely to confuse people or businesses into believing that the domain names are registered to, operated or authorised by or otherwise connected with the Complainant. Consequently, there is a likelihood that users of the Respondent’s websites will assume that the other products offered for sale on those websites (and in respect of which the Complainant has no quality or other control) are manufactured, authorised by or otherwise connected with the Complainant. Clearly, this has the potential to damage the Complainant’s business and goodwill in their trade marks, and thereby disrupt the business of the Complainant. This is of particular concern as regards the herbal preparations, “drug free pain relief system”, pheromone sprays and oxygen canisters, which goods could conceivably cause harm to the consumer. The fact that the Complainant is active in the fields of pharmaceuticals, medical devices and healthcare products increases the likelihood that the public will associate the goods sold via the Respondent’s websites with the Complainant, when in fact there is no such trade connection. The Complainant does not, however, retail “adult toys” and sex aids, and does not wish to be associated with such goods. Such association would, it is submitted, damage the Complainant’s reputation as a manufacturer of high quality pharmaceutical, professional medical and general consumer products.
6. The Parties’ Contentions:
Complainant:
The substance of the Complaint reads as follows: -
It is asserted that the disputed domain names are abusive registrations under paragraph 3(i)(c) of the Nominet DRS Policy (“the Policy”), because there are circumstances indicating that the Respondent has registered the disputed domain names primarily for the purpose of unfairly disrupting the business of the Complainant. It is also claimed that the Respondent’s use of the disputed domain names will confuse people or businesses into believing that the domain names are registered to, operated by, or otherwise connected with the Complainant, and that the disputed domain names are therefore abusive registrations within the meaning of paragraph 3(ii) of the Policy. Further, it is submitted that the disputed domain names are abusive registrations under paragraph 3(iii) of the Policy, because the Respondent is engaged in a pattern of making abusive registrations. In this regard, the Respondent has without justification registered eight domain names incorporating two of the Complainant’s trade marks.
It is submitted that the Complainant has rights in respect of names and marks which are identical or similar to the disputed domain names, and that the domain names, in the hands of the Respondent, are abusive registrations.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
In this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in each of the names K-Y JELLY, KY JELLY, JOHNSON & JOHNSON and JOHNSON & JOHNSON (stylised) through extensive use. Each Domain name comprises one of the said names either on its own or combined with the words “andcondoms”, “andthings” and “online” or some version thereof combined with the suffix <.co.uk>. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.
The addition of additional words to a trademarked phrase in a situation in which the mark is not a common word in the English language cannot affect this analysis.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark, which is identical to each Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-
“a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraphs i and ii, which read as follows:
i “Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;”
ii “Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”
The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question.
Each domain name resolves to a site which offers (on some occasions in conjunction with other products of the Complainant - which the Respondent was not specifically authorised to sell -, but generally not) adult goods and services, of a type which is not offered by the Complainant and is likely to detract from the reputation of the Complainant.
Accordingly, the Expert finds that each Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights.
8. Decision:
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that each Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Names, ky-jelly.co.uk; e-ky-jelly.co.uk; ky-jelly-online.co.uk; ky-jellyandcondoms .co.uk; ky-jellyandthings.co.uk; ky-jellynthings.co.uk; ky-jellyuk.co.uk; johnson-and-johnson.co.uk, each be transferred to the Complainant.
David Flint
Date: 5 February 2004