Mead Johnson & Company, LLC v. Nodex Inc. / Richard Hong
Claim Number: FA1111001417917
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Nodex Inc. / Richard Hong (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilk.com>, registered with GoDaddy.com, 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.
Honorable Karl V. Fink (Ret.) 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 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamilk.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 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@enfamilk.com. Also on December 1, 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 December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enfamilk.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.
2. Respondent does not have any rights or legitimate interests in the <enfamilk.com> domain name.
3. Respondent registered and used the <enfamilk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mead Johnson & Company, LLC, operates a business centered on infant and children’s nutrition, in particular its two widely known infant formulas, Enfamil and Enfalac, and has been using the ENFAMIL trademark and service mark globally for more than fifty years. Complainant owns many trademark registrations for the ENFAMIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 839,249 issued November 21, 1967).
Respondent, Nodex, Inc., registered the <enfamilk.com> domain name on March 11, 2010. The domain name resolves to a website that offers its visitors products for sale, some of which are in direct competition with Complainant’s product offerings, as well as products sold by Complainant itself.
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 owns many trademark registrations for the ENFAMIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 839,249 issued November 21, 1967). The Panel finds that Complainant has established rights in the ENFAMIL mark pursuant to Policy ¶ 4(a)(i) by its trademark registration with the USPTO. 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 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 contends that the domain name in dispute, <enfamilk.com>, is confusingly similar to its ENFAMIL mark. Complainant alleges that adding the single letter “k,” and adding a generic top-level domain (“gTLD”) is insufficient to properly differentiate the domain name from Complainant’s mark. The Panel finds that the addition of a single letter and the gTLD “.com” does not sufficiently differentiate the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name <enfamilk.com>. Complainant must make a prima facie case supporting the allegations of Respondent’s lack of rights or legitimate interests in the domain name; after Complainant produces a prima facie case, the burden of proof shifts to the Respondent to demonstrate any rights of legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that the Complainant has produced a prima facie case. Because the Respondent failed to respond to the proceedings, the Panel may assume that Respondent does not have any rights or legitimate interest in regard to the domain name at issue. 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); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to make a determination as to whether Respondent possesses rights or legitimate interests in the domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <enfamilk.com> domain name. Complainant argues that the word ENFAMIL is a creation of Complainant and has no meaning beyond its purpose as an identifier for Complainant and its manufactured goods. Further, Respondent is identified as, “Nodex Inc. / Richard Hong” in the WHOIS information, which the Panel finds bears no similarity to the <enfamilk.com> domain name. The Panel finds that without irrefutable evidence that Respondent is commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant contends that Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services, and Respondent is not making a legitimate noncommercial or fair use of the domain name in dispute. Complainant’s evidence shows that Respondent’s website sells products that compete with Complainant’s business, as well as products manufactured by Complainant. The Panel finds that such use of the domain name in this way does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); See also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Complainant argues that the domain name, which consists of Complainant’s mark plus an added letter, takes advantage of Internet users that attempt to reach Complainant’s website but due to a typing error are redirected to Respondent’s website. The Panel finds that Respondent’s use of the domain name to engage in “typosquatting” is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent’s use of the domain name in dispute to draw Internet users to its competing website for commercial gain disrupts Complainant’s business and shows bad faith registration and use of the name under Policy ¶ 4(b)(iii). Complainant alleges and submits evidence to show that Respondent’s website sells Complainant’s products, as well as products by other businesses that directly compete with Complainant’s business. The Panel finds the Respondent’s registration and use of the name amounts to bad faith under Policy ¶ 4(b)(iii) because such use disrupts Complainant’s business by diverting Internet users to a site that sells both Complainant’s goods and the goods of Complainant’s competitors. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use) ; see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant alleges that <enfamilk.com> exploits the goodwill of the ENFAMIL mark that Complainant has built up with consumers by profiting on Internet users’ confusion when they intend to visit Complainant’s website and find themselves instead at Respondent’s site, resulting in Respondent’s commercial gain. Complainant argues that the domain name has the potential to be mistaken as an affiliate of Complainant’s mark that will lead consumers to believe they are indeed at Complainant’s website, a belief from which Respondent will profit. The Panel finds that Respondent’s use of the domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
The Panel has previously made the determination that Respondent has engaged in typosquatting, which in itself is found to be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilk.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 3, 2012
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