national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. Texas International Property Associates

Claim Number: FA1010001350254

 

PARTIES

Complainant is Mead Johnson & Company, LLC ("Complainant"), represented by R. Parrish Freeman of Waddey & Patterson, P.C., Tennessee, USA.  Respondent is Texas International Property Associates ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enfamilcoupons.com>, registered with Budgetnames.com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr.,as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2010; the National Arbitration Forum received payment on October 4, 2010.

 

On October 6, 2010, Budgetnames.com confirmed by e-mail to the National Arbitration Forum that the <enfamilcoupons.com> domain name is registered with Budgetnames.com and that Respondent is the current registrant of the name.  Budgetnames.com has verified that Respondent is bound by the Budgetnames.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@enfamilcoupons.com.  Also on October 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <enfamilcoupons.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <enfamilcoupons.com> domain name.

 

3.      Respondent registered and used the <enfamilcoupons.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Mead Johnson & Company, LLC, is a global provider of infant and children’s nutrition and has used its ENFAMIL mark for over 50 years in connection with its infant nutrition products.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ENFAMIL mark (e.g. Reg. No. 696,534 issued April 19, 1960).

 

Respondent, Texas International Property Associates, registered the <enfamilcoupons.com> domain name on March 30, 2005.  The disputed domain name resolves to a website featuring a directory of links to third-party websites, some of which directly compete with Complainant in the child and infant nutrition industry.

 

Respondent has been the respondent in other UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants in those cases.  See Redcats USA, L.P. v. Texas International Property Associates, FA 1339543 (Nat. Arb. Forum Aug.11, 2010); see also Enterprise Holdings, Inc. v. Texas International Property Associates, FA 1337415 (Nat. Arb. Forum Aug. 3, 2010).

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established rights in the ENFAMIL mark.  Previous panels have found that trademark registration with a federal trademark authority is sufficient to establish rights in a mark.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Complainant holds numerous trademark registrations of its ENFAMIL mark with the USPTO (e.g. Reg. No. 696,534 issued April 19, 1960).  Therefore, the Panel finds that Complainant has established rights in the ENFAMIL mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the USPTO.

 

Complainant contends that Respondent’s <enfamilcoupons.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.  The disputed domain name differs from Complainant’s mark only by the addition of the generic word “coupons” and the addition of the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the mere addition of a generic term fails to properly distinguish the disputed domain name from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).  The Panel also finds that the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Therefore, the Panel concludes that Respondent’s <enfamilcoupons.com> domain name is confusingly similar to Complainant’s ENFAMIL mark pursuant to Policy ¶ 4(a)(i).

 

The Panel find that Policy ¶ 4(a)(i) has been established.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <enfamilcoupons.com> domain name.  Previous panels have found that when a complainant makes a prima facie showing in support of its allegations, the burden then shifts to Respondent to prove it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  The Panel finds that Complainant has established a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel will review the evidence in the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the <enfamilcoupons.com> domain name.  Complainant argues that Respondent has presented no evidence that would support a finding that Respondent is commonly known by the disputed domain name.  The Panel finds no evidence in the record that would provide any basis for determining that Respondent is commonly known by the disputed domain name.  The WHOIS information identifies Respondent as “Texas International Property Associates,” which is not similar to the disputed domain name.  Complainant alleges it has not authorized or licensed Respondent to use or register the <enfamilcoupons.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <enfamilcoupons.com> domain name under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Respondent uses the disputed domain name to resolve to a directory website containing links to third-party websites offering goods in competition with Complainant’s infant nutrition services.  Respondent likely receives pay-per-click fees from these links.  The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges Respondent’s use of the <enfamilcoupons.com> domain name is part of a pattern of bad faith use and registration.  Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  See Redcats USA, L.P. v. Texas International Property Associates, FA 1339543 (Nat. Arb. Forum August 11, 2010); see also Enterprise Holdings, Inc. v. Texas International Property Associates, FA 1337415 (Nat. Arb. Forum August 3, 2010).  The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Respondent’s <enfamilcoupons.com> domain name resolves to a website featuring a directory of links, some which resolve to Complainant’s competitors in the infant nutrition industry.  Complainant alleges that Respondent’s use of the disputed domain name disrupts it business because Internet users intending to purchase products from Complainant may instead choose to purchase competitor’s products as a result of Respondent’s use of the disputed domain name.  The Panel finds that Respondent’s use of the <enfamilcoupons.com> domain name does disrupt Complainant’s business, which constitutes bad faith registration under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names; see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).

 

The Panel infers that Respondent receives pay-per-click fees from the previously mentioned links on the resolving website.  Internet users searching for Complainant may instead find Respondent’s website because of Respondent’s use of a confusingly similar disputed domain name.  Internet users may then become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and featured links.  Respondent attempts to profit from this confusion through the receipt of pay-per-click fees.  The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith and use pursuant to Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that the elements of Policy ¶ 4(a)(iii) have been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enfamilcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  November 11, 2010

 

 

 

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