Johnson & Johnson v Ricardo Sotelo

WIPO Case No. D2023-0657

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Johnson & Johnson v. Ricardo Sotelo

Case No. D2023-0657

1. The Parties

The Complainant is Johnson & Johnson, United States of America (“United States”), represented by Fross

Zelnick Lehrman & Zissu, PC, United States.

The Respondent is Ricardo Sotelo, United States.

2. The Domain Name and Registrar

The disputed domain name <1ts-jnj.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2023. On February 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2023, 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 amended Complaint on February 21, 2023.

The Center verified that the Complaint together with the amended 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 proceedings commenced on February 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2023.

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The Center appointed Kathryn Lee as the sole panelist in this matter on March 23, 2023. 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.

4. Factual Background

The Complainant is an American multinational corporation founded in 1886 that develops medical devices, and Brazilian Reg. No. 824644921 registered on April 24, 2007.

pharmaceuticals, and consumer packaged goods. It has more than 250 operating companies in 60 countries
and around 114,000 employees. The Complainant owns a number of trademark registrations for the JNJ
mark, including Canadian Reg. No. TMA646035 registered on August 18, 2005; Mexican Reg.
Further, the Complainant owns and uses the domain name <jnj.com> as its main website; the domain name
is also used as the Complainant’s primary corporate email address and its employee email addresses use
the subdomain <its.jnj.com>. The Complainant’s stock symbol at the New York Stock Exchange is JNJ and
its common stock is a component of the Dow Jones Industrial Average. The Complainant was ranked

No. 36 on the 2021 Fortune 500 list of the largest United States Corporations by total revenue.

The Respondent appears to be an individual with an address in the United States.

The disputed domain name was registered on July 25, 2022.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the JNJ trademark in which the Complainant has rights. The Complainant explains that the disputed domain name incorporates the Complainant’s trademark as a whole, and merely adds “1ts” which is similar to the subdomain designation “its” and therefore constitutes typosquatting.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant further contends that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

Finally, the Complainant contends that the disputed domain name was registered and is used in bad faith. The Complainant contends that the Complainant is one of the best-known companies in the world, so it is inconceivable for the Respondent to be unaware of the JNJ mark at the time of registration of the disputed domain name. The Complainant also contends that the Respondent sent emails to one of the Complainant’s

vendors claiming to be an accountant for the Complainant using the email address “[…]@lts-jnj.com” in an attempt to divert payment on an invoice to a bank not associated with the Complainant. The Complainant contends that this shows that the Respondent knew of the Complainant’s rights in the JNJ mark when

registering the disputed domain name, and also, the Respondent’s opportunistic bad faith in registering it. the Complainant’s goodwill for financial gain which is bad faith. The Complainant also argues that although the disputed domain name does not resolve to an active website, passive holding does not prevent a finding of bad faith.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it has rights to the trademark JNJ. As for the disputed domain name is confusingly similar to the Complainant trademark. The additional characters and figure “1ts” do not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).

the disputed domain name, it consists of “jnj” and “1ts” separated by a hyphen. According to WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.7, a domain name is considered confusingly similar to a trademark if it “incorporates the entirety of a
trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name”.

For the reasons mentioned above, the Panel finds that the first element has been established.

B. Rights or Legitimate Interests

On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie case has been established, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, with the burden of proof always remaining with the Complainant. However, the Respondent in this case has chosen to file no Response to these assertions by the Complainant, and there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.

Further, the Respondent used the disputed domain name in a phishing scheme in which the Respondent passed itself off as an employee of the Complainant in order to divert payment owed to the Complainant to a different bank account. The use of a domain name for illegal activity can never confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1.

For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.

C. Registered and Used in Bad Faith

The Panel finds that there is strong and clear evidence to find bad faith in this case.

First and foremost, the Respondent attempted to perpetuate fraud by sending emails from the disputed domain name to the Complainant’s vendor requesting payment owed to the Complainant to be sent to a different bank account. Using a domain name in a fraudulent activity is manifestly evidence of bad faith registration and use. See WIPO Overview 3.0, section 3.1.4 and section 3.4.

Further, it is clear that the Respondent registered the disputed domain name with knowledge of the Complainant and the Complainant’s trademark specifically for use in furtherance of the above mentioned fraudulent activity. The Complainant’s domain name is <jnj.com> and the Complainant’s employee email addresses use the subdomain <its.jnj.com>, so emails generated from the disputed domain name would look very similar to the actual email addresses of the Complainant’s employees.

For the reasons given above, the Panel finds that the third element has been established.

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7. Decision

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, <1ts-jnj.com> be transferred to the Complainant.

/Kathryn Lee/ Kathryn Lee Sole Panelist Date: April 6, 2023