Mead Johnson & Company, LLC v. Alexander Linnik
Claim Number: FA1102001373595
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by R. Parrish Freeman, Jr. of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Alexander Linnik (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilgentlease.com>, registered with Aust Domains International Pty Ltd d/b/a Aust 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.
Luiz Edgard Montaury Pimenta, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2011; the National Arbitration Forum received payment on February 17, 2011.
On February 22, 2011, Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamilgentlease.com> domain name is registered with Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. and that Respondent is the current registrant of the name. Aust Domains International Pty Ltd d/b/a Aust Domains, Inc. has verified that Respondent is bound by the Aust Domains International Pty Ltd d/b/a Aust 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 February 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2011 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@enfamilgentlease.com. Also on February 23, 2011, 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.
A timely Response was received and determined to be complete on March 14, 2011.
On March 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it is a global leader in infant and child’s nutrition, best known for its infant formulas sold under its ENFAMIL mark. Complainant submits evidence of its numerous registrations with the United States Patent and Trademark Office (“USPTO”) for its ENFAMIL mark:
Reg. No. 696,534 issued April 19, 1960
Reg. No. 800,782 issued December 21, 1965
Reg. No. 2,469,244 issued July 17, 2001
Reg. No. 2,487,248 issued September 11, 2001
Reg. No. 2,532,844 issued January 22, 2002
Reg. No. 2,719,478 issued May 27, 2003
Reg. No. 3,758,662 issued April 1, 2009
Complainant also notes that it has a trademark registration with the USPTO for the GENTLEASE mark (Reg. No. 3,134,005 issued August 22, 2006) which it uses in connection with its infant formula.
Complainant contends that Respondent’s <enfamilgentlease.com> domain name is confusingly similar to Complainant’s mark. Complainant argues that Respondent’s disputed domain name contains Complainant’s ENFAMIL mark in its entirety, along with Complainant’s GENTLEASE mark in its entirety and then adds the generic top-level domain (“gTLD”) “.com.” Complainant suggests that adding a gTLD does not negate a finding of confusing similarity.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is neither a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s ENFAMIL or GENTLEASE marks. Complainant asserts that Respondent cannot contend that it is commonly known by or identified with the disputed domain name as ENFAMIL and GENTLEASE are both invented words that have no meaning other than as source identifiers for Complainant and its products. The WHOIS information indicates that the registrant of the <enfamilgentlease.com> domain name is “Alexander Linnik,” which Complainant argues is not even remotely similar to the disputed domain name.
Complainant asserts that the <enfamilgentlease.com> domain name resolves to a website at <enfamilgentlease.net> (see Complainant’s Annex F) which purports to offer information about Complainant’s ENFAMIL products. Complainant further asserts that Internet users also have the opportunity to purchase Complainant’s ENFAMIL products via hyperlinks to live sale sites hosted by Amazon.com. Complainant infers that Respondent receives something in the way of commission or, at the very least, pay-per-click fees, for each of the Amazon.com links featured on the resolving website. Complainant states that the remaining content on the website, that purportedly provides information about Complainant’s ENFAMIL branded infant formula, was not authorized or approved by Complainant and therefore cannot be assumed to be accurate. Complainant suggests that Internet users who visit Respondent’s resolving website may read and follow advice or suggestions upon the belief that they come directly from Complainant. Complainant argues that if the information is inaccurate, Internet users will attribute that inaccuracy to Complainant rather than Respondent, creating an additional threat of harm to Complainant’s business.
Complainant alleges that because Respondent’s disputed domain name resolves to a website that features links that redirect Complainant’s potential customers to third-party Amazon.com, which sells and promotes a wide range of products, including products made by Complainant’s competitors, Respondent has demonstrated bad faith.
Complainant argues that Respondent appropriated Complainant’s ENFAMIL and GENTLEASE marks in the disputed domain name in order to increase traffic to Respondent’s own website. Complainant further argues that Respondent’s resolving website was therefore registered and used to commercially benefit Respondent, through either commissions or pay-per-click revenue, as a result of Internet users’ confusion about Complainant’s association with Respondent. Complainant indicates that prior panels have found that misleading Internet users to attract them to a respondent’s own website for commercial gain, indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name. Complainant contends that the ENFAMIL trademarks and service marks are registered under multiple registrations and there is no trademark or service mark registered or used by third parties that is similar to the ENFAMIL mark. Complainant indicates that the same holds true for its GENTLEASE mark. Complainant states that it has been using the ENFAMIL mark in the United States and around the world for more than 50 years and that Complainant has built up considerable goodwill in the mark.
B. Respondent
Respondent has submitted a response, informing, basically, that he had already taken the website down and that he did not mean to cause any problems.
Respondent informs the disputed domain name has been registered on 14 January 2011 and was still under construction, at the time complaint has been raised. Respondent alleges the screen shot that has been attached to complaint would confirm that site was still under construction, as the “About Us” page still had a standard Wordpress text. Resopndent further alleges that the site was dedicated to compare Enfamil products with other leading products as well as the price in the same category.
The Panel finds that Complainant has provided sufficient evidence, in the form of its many longstanding trademark registrations with the USPTO, to establish rights in its ENFAMIL mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
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."
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 that Respondent’s <enfamilgentlease.com> domain name is confusingly similar to Complainant’s mark. Complainant argues that Respondent’s disputed domain name contains Complainant’s ENFAMIL mark in its entirety, along with Complainant’s GENTLEASE mark in its entirety and then adds the generic top-level domain (“gTLD”) “.com.” Complainant suggests that adding a gTLD does not negate a finding of confusing similarity. The Panel agrees.
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.”). The Panel notes that previous panels have determined that where a domain name merely combines two of Complainant’s own registered marks, the domain name is confusingly similar under Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Therefore, based on Complainant’s arguments and the relevant precedential citations, the Panel finds that Respondent’s <enfamilgentlease.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds, based on an examination of the evidence, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Respondent’s use of the disputed domain name to provide potentially inaccurate information about Complainant and its ENFAMIL product and also to provide links that enable Internet users to purchase Complainant’s products in exchange for commissions or pay-per-click fees 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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent’s registration and use of the disputed domain name constitutes a disruption of Complainant’s business, and, therefore, the Panel finds Respondent has acted in bad faith under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Complainant indicates that prior panels have found that misleading Internet users to attract them to a respondent’s own website for commercial gain, indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel agrees. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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)(iv) 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).
Complainant states that it has been using the ENFAMIL mark in the United States and around the world for more than 50 years and that Complainant has built up considerable goodwill in the mark. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the Panel finds that Respondent has actual knowledge of Complainant's mark, as Respondent’s response clearly evidences that. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilgentlease.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: March 31, 2011
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