Mead Johnson & Company LLC v. LeaseDomains.com
Claim Number: FA1111001417912
Complainant is Mead Johnson & Company LLC (“Complainant”), represented by Ryan D. Levy of Waddy & Patterson, P.C., Tennessee, USA. Respondent is LeaseDomains.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilstore.com>, which is registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict in serving as sole Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the National Arbitration Forum received payment on November 30, 2011.
On December 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamilstore.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@enfamilstore.com. Also on December 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the owner of the ENFAMIL mark.
Complainant’s mark is used in connection with the marketing of infant and children’s nutrition products, including infant formulas.
Complainant has registrations for the ENFAMIL trademark on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,719,478, registered May 27, 2003).
Respondent registered the disputed domain name on April 19, 2010.
The <enfamilstore.com> domain name resolves to a website which displays links to Complainant’s official website and to websites of Complainant’s competitors.
Respondent’s <enfamilstore.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.
Respondent is not commonly known by the disputed domain name.
Respondent is neither a licensee of Complainant nor is it authorized to use the ENFAMIL mark.
Respondent’s use of the disputed <enfamilstore.com> domain is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent does not have any rights to or legitimate interests in the domain name <enfamilstore.com>.
Respondent both registered and uses the <enfamilstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the ENFAMIL trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registration); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <enfamilstore.com> domain name is confusingly similar to Complainant’s ENFAMIL trademark. The addition of the generic term “store” to the mark in forming the domain name fails to differentiate the domain name from the ENFAMIL mark. See, for example, Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to a complainant’s mark); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> confusingly similar to a complainant’s YAHOO mark).
Similarly, the addition of the generic top-level domain (“gTLD”) “.com” to the ENFAMIL mark in creating the disputed <enfamilstore.com> domain name does not distinguish the domain from the ENFAMIL mark under the standards of the Policy. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
See also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), finding that: “[t]he mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”
The Panel therefore finds that the contested <enfamilstore.com> domain name is confusingly similar to the ENFAMIL trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain. Once Complainant makes out a prima facie case in support of this assertion, the burden shifts to Respondent to dispute it. 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.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under Policy 4(a)(ii), the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name).
Complainant has met its prima facie burden under Policy 4(a)(ii). Respondent has however, failed to file a response to the allegations of the Complaint. We are therefore free to conclude that Respondent lacks rights to or legitimate interests in the contested domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations under Policy 4(a)(ii)] is tantamount to admitting the truth of complainant’s assertions in this regard.
See also Am. 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.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent is neither a licensee of Complainant nor authorized to use the ENFAMIL mark. Moreover, the pertinent WHOIS record identifies the domain registrant only as “LeaseDomains.com,” which does not resemble the domain <enfamilstore.com>. On this record, we conclude that Respondent is not commonly known by the disputed domain so as to have rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that …[it]… is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Comm. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by a disputed domain name, and so failed to show that it had rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii)).
We next observe that Complainant argues, without objection from Respondent, that Respondent’s use of the disputed <enfamilstore.com> domain is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The domain resolves to a website with links to the website of Complainant and to those of its competitors. The use of a domain which is confusingly similar to the mark of another is neither a bona fide offering of goods or services nor a legitimate noncommercial use where it is used to display links to the websites both of a complainant and of that complainant’s competitors. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a contested domain under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used the domain to operate a website featuring links to websites offering goods and services unrelated to the business of a complainant); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … 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 therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <enfamilstore.com> domain name as described in the Complaint is in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) by using the domain to operate a search engine with links to a website offering the products of both a complainant and that complainant’s commercial competitors); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a search engine with links to the websites of a complainant’s commercial competitors).
In addition, it is evident that the disputed domain name was registered and is being used by Respondent to take advantage of confusion created among Internet users, by the confusing similarity of the domain to Complainant’s mark, as to the possibility that Complainant is the source or sponsor of, or affiliated with the disputed domain. This behavior, which we may comfortably presume Respondent does for profit in the form of click-through fees or other revenue, demonstrates bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name which is confusingly similar to a complainant’s mark to direct Internet traffic to a “links page” to profit from click-through fees or other revenue constitutes bad faith registration and use under Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to websites that offered services similar to those of a complainant).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <enfamilstore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 15, 2012
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