Mead Johnson & Company, LLC v. Active Web GroupClaim Number: FA1010001350256
Complainant is Mead Johnson & Company, LLC ("Complainant"), represented by R. Parrish Freeman of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Active Web Group ("Respondent"), New York, USA. «cFirstName» «cMiddle» «cLastName»
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcoupons.net>, registered with Wild West Domains, Inc.
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.
Honorable Paul A. Dorf (Ret.) 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«DateHardCopy».
On October 4, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamilcoupons.net> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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.net. Also on October 5, 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 Honorable Paul A. Dorf (Ret.) as Panelist.
Respondent submitted a Response in the form of an email; however, this response was not timely filed and not properly served on the Complainant. Therefore, this Response is not in compliance with ICANN Rule 5(a) and/or the Annex to the Supplemental Rules and has not been accepted or considered by the Arbitrator.
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 a timely response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enfamilcoupons.net> domain name is confusingly similar to Complainant’s ENFAMIL mark.
2. Respondent does not have any rights or legitimate interests in the <enfamilcoupons.net> domain name.
3. Respondent registered and used the <enfamilcoupons.net> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, Mead Johnson & Company, LLC, 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). Complainant uses its ENFAMIL mark in connection with its infant nutrition products.
Respondent, Active Web Group, registered the <enfamilcoupons.net> domain name on February 26, 2009. The disputed domain name resolves to a website featuring numerous advertisements and links to third-party websites, some of which compete with Complainant. The resolving website also purports to provide information on how to purchase and save on Complainant’s products.
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 contends it has established rights in the 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 a trademark registration with a federal trademark authority, such as the USPTO, 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.”) Therefore, the Panel finds that Complainant has established rights in the ENFAMIL mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <enfamilcoupons.net> 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 term “coupons” and the generic top-level domain (“gTLD”) “.net.” The Panel finds that these alterations are insufficient to distinguish the disputed domain name from Complainant’s ENFAMIL mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s <enfamilcoupons.net> domain name is confusingly similar to Complainant’s ENFAMIL mark.
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <enfamilcoupons.net> domain name. Previous panels have found that when complainant makes a prima facie showing in support of its allegations, the burden then shifts to the respondent to prove it does have rights and 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 based on the allegations contained in the Complaint. Respondent’s failure to respond to these proceedings allows the Panel to assume that Respondent lacks 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). Nevertheless, the Panel will examine the evidence in the record in order to make a fair and complete determination as to whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <enfamilcoupons.net> domain name. Complainant further alleges that it has neither licensed, nor authorized, Respondent to use its mark in any way. There does not appear to be any evidence in the record that would allow the Panel to conclude that Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Active Web Group,” which the Panel finds is not similar to the <enfamilcoupons.net> domain name. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <enfamilcoupons.net> 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 website featuring advertisements and links to third-party websites for other well-known, trademarked products, including some in competition with Complainant’s infant nutrition products. Complainant presumes, and the Panel agrees, that Respondent likely receives pay-per-click fees from these links. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website featuring advertisements and links in competition with the products offered under Complainant’s ENFAMIL mark is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <enfamilcoupons.net> domain name resolves to a website featuring advertisements and links to third-party websites and which also purports to offer advice on Complainant’s products. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Complainant’s potential customers may instead purchase products from Complainant’s competitors products as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the <enfamilcoupons.net> domain name disrupts Complainant’s business, and is evidence of Respondent’s bad faith registration and use pursuant to 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)).
As established previously, the Panel infers that Respondent receives pay-per-click fees from the aforementioned links displayed on the resolving website. Internet users who visit the confusingly similar <enfamilcoupons.net> are likely to become confused as to Complainant’s affiliation with, or sponsorship of, the disputed domain name, resolving website, and featured links. The Panel finds that Respondent is intentionally attempting to attract Internet users to its disputed domain name for Respondent’s own commercial gain and that this constitutes bad faith registration 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 Panels finds that Complainant has satisfied the elements of 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.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 15, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page