Mead Johnson & Company, LLC v. Eileen Childs
Claim Number: FA1109001409788
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Eileen Childs (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamil-coupons.net>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 30, 2011; the National Arbitration Forum received payment September 30, 2011.
On October 3, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamil-coupons.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and 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 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@enfamil-coupons.net. Also on October 7, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <enfamil-coupons.net>, is confusingly similar to Complainant’s ENFAMIL mark.
2. Respondent has no rights to or legitimate interests in the <enfamil-coupons.net> domain name.
3. Respondent registered and used the <enfamil-coupons.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mead Johnson & Company, LLC, produces and sells infant nutrition products. Complainant offers these products under the ENFAMIL mark that Complainant registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 696,534 registered April 19, 1960).
Respondent, Eileen Childs, registered the <enfamil-coupons.net> domain name October 20, 2009. The disputed domain name resolves to a website that presents information about Complainant’s ENFAMIL products and contains multiple hyperlinks to third-party coupon providers and Complainant’s competitors.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i) by showing established rights in its ENFAMIL. Evidence of its trademark registrations for the mark with the USPTO are sufficient to show rights under the Policy (e.g., Reg. No. 696,534 registered April 19, 1960). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding … established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s disputed <enfamil-coupons.net> domain name contains Complainant’s entire ENFAMIL mark. Respondent added a hyphen, the generic term “coupons,” and the generic top-level domain (“gTLD”) “.net” to Complainant’s mark. These additions do not remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that the disputed domain name that Respondent registered is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contended that Respondent does not have any rights or legitimate interests in the <enfamil-coupons.net> domain name. Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, this Panel still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
The record contains no evidence that Respondent is commonly known by the <enfamil-coupons.net> domain name. To the contrary, the Panel found evidence that demonstrates that Respondent is not commonly known by the disputed domain name. For instance, the WHOIS information identifies “Eileen Childs” as the registrant of the domain name. “Eileen Childs” is not nominally similar to the <enfamil-coupons.net> domain name. Furthermore, Complainant asserts that Respondent is not licensed or otherwise authorized to use Complainant’s ENFAMIL mark in a domain name. Respondent has not contradicted any of this evidence. Thus, the Panel holds that Respondent is not commonly known by the <enfamil-coupons.net> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Respondent’s <enfamil-coupons.net> domain name resolves to a website that contains information about Complainant’s ENFAMIL products. Along with this information, the resolving website also hosts numerous hyperlinks to third-party coupon providers and Complainant’s competitors in the infant nutrition industry. In such circumstances, the Panel is permitted to make an inference that Respondent uses Complainant’s mark to attract Internet users to its website by using a confusingly similar domain name and providing information about Complainant’s products. However, the Panel is also permitted to make an inference that Respondent’s true purpose for its registration and use of the disputed domain names is to profit from the unrelated and competing hyperlinks found on the resolving website. The Panel finds that the existence of these hyperlinks demonstrates that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <enfamil-coupons.net> domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant 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 holds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s <enfamil-coupons.net> domain name hosts a number of hyperlinks that resolve to third parties, some of which offer products that directly compete with Complainant’s ENFAMIL products. Complainant alleges that its business is disrupted by Respondent’s use of the disputed domain name. Based on this allegation, which the Panel finds to be supported by the evidence, the Panel finds that Respondent registered and used the disputed domain name in bad faith under a Policy ¶ 4(b)(iii)evaluation. 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
As noted above, the Panel made an inference that Respondent’s true purpose in registering and using the <enfamil-coupons.net> domain name was to attract Internet users to its website and create confusion as to Complainant’s affiliation with the website by providing information about Complainant’s ENFAMIL products in this confusingly similar domain name. However, as previously mentioned, in the presence of such conduct, the Panel is permitted to make an inference that Respondent does so in order to commercially profit from the resulting confusion by receiving click-through fees from the aforementioned hyperlinks. Therefore, the Panel holds that Respondent registered and uses the <enfamil-coupons.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
While Complainant contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the ENFAMIL mark, the Panel notes that constructive notice has not been generally held to suffice for a finding of bad faith registration and use. However, the Panel finds that it may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). The Panel finds that Respondent did, in fact, have actual knowledge of Complainant’s rights in the ENFAMIL mark based on Respondent’s use of the disputed domain name to provide information about Complainant’s ENFAMIL products. Thus, the Panel finds further evidence of Respondent’s bad faith registration and use of the <enfamil-coupons.net> domain name under Policy ¶ 4(a)(iii). See 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).
The Panel holds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <enfamil-coupons.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 15, 2011.
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