Mead Johnson & Company, LLC v. Vinai Moua
Claim Number: FA1010001350255
Complainant is Mead Johnson & Company, LLC ("Complainant"), represented by R. Parrish Freeman, Jr. of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Vinai Moua ("Respondent"), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enfamilcoupons.info> and <enfamilcouponsprintable.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
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 5, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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.info and postmaster@enfamilcouponsprintable.com. Also on October 8, 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 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names are confusingly similar to Complainant’s ENFAMIL mark.
2. Respondent does not have any rights or legitimate interests in the <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names.
3. Respondent registered and used the <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mead Johnson & Company, LLC, holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 696,534 issued April 19, 1960). Complainant uses the mark in connection with infant nutrition products.
Respondent, Vinai Moua, registered the <enfamilcoupons.info> disputed domain name on September 7, 2010 and the <enfamilcouponsprintable.com> domain name on September 4, 2010. The disputed domain names resolve to websites that purport to provide information about Complainant’s ENFAMIL products, as well as other baby related products, along with links to related advertising and articles.
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.
Complainant has asserted rights in its ENFAMIL mark based on its registration of the mark with the USPTO (e.g., Reg. No. 696,534 issued April 19, 1960). The Panel finds that Complainant’s trademark registration with a governmental trademark authority such as the USPTO is sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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 asserts that Respondent’s <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names are confusingly similar to Complainant’s ENFAMIL mark. Respondent’s disputed domain names incorporate the entirety of Complainant’s mark and then merely add generic terms such as “coupons” and “printable.” Respondent’s disputed domain names also add a generic top-level domain such as “.com” or “.info.” The Panel finds that these alterations, taken together, do not adequately distinguish the disputed domain names from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Based on the above cited precedent, the Panel finds that Respondent’s <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names are confusingly similar to Complainant’s ENFAMIL mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names. Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations before the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that in this case, Complainant’s Complaint establishes a sufficient prima facie case so as to effectively shift the burden to Respondent. Respondent has failed to submit a Response to these proceedings. The Panel finds that it may infer that Respondent’s failure to respond permits an inference that Respondent lacks rights and legitimate interests in the disputed domain names. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel elects to consider the evidence on record in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights or legitimate interests in the <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names.
Complainant alleges that Respondent is neither a licensee of Complainant nor is Respondent otherwise authorized to use the ENFAMIL mark. Complainant also alleges that Respondent is not authorized by Complainant to register domain names utilizing Complainant’s ENFAMIL mark. Complainant argues that Respondent cannot possibly be commonly known by the disputed domain names as ENFAMIL is an invented word that has no meaning other than to serve as a source identifier for Complainant and the products it manufactures and sells. Complainant also argues that the registrant of the disputed domain names, “Vinai Moua,” is not even remotely similar to either of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant asserts that Respondent’s <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names resolve to websites that purport to provide information about Complainant’s ENFAMIL products, as well as other baby related products, along with displaying links to related advertising and articles. Complainant further asserts that Respondent’s resolving websites basically amount to pay-per-click websites that exist for the purpose of generating income for Respondent. The Panel finds that Respondent’s use of the disputed domain names to advertise and promote products that compete with Complainant’s infant nutrition offerings is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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 Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the majority of the links on Respondent’s websites resolving from the disputed domain names redirect Complainant’s potential customers to websites selling or promoting other products. Complainant alleges, and the Panel agrees, that this constitutes a disruption of Complainant’s business. Therefore, the Panel supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant alleges that Respondent appropriated Complainant’s ENFAMIL mark in the <enfamilcoupons.info> and <enfamilcouponsprintable.com> domain names and, by all appearances, designed resolving websites around the ENFAMIL mark as a keyword in order to increase traffic to Respondent’s websites. Complainant further alleges that Respondent’s resolving websites were thus designed to commercially profit Respondent through pay-per-click revenue as a result of Internet users’ confusion about Complainant’s presence and association with Respondent. The Panel finds that by misleading Internet users in order to attract them to Respondent’s websites for commercial gain, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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.info> and <enfamilcouponsprintable.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 17, 2010
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