Mead Johnson & Company, LLC v. Kanter Associates SA
Claim Number: FA1111001417920
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Kanter Associates SA (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamill.com>, registered with Fabulous.com Pty Ltd.
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.
Houston Putnam Lowry, Chartered Arbitrator, 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, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <enfamill.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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@enfamill.com. Also on December 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 January 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Complainant Mead Johnson & Company, LLC (“Mead Johnson”) is a global leader in infant and children's nutrition, best known for its Enfamil® and Enfalac® families of infant formulas.
Mead Johnson has registered the ENFAMIL mark with the U.S. Patent and Trademark Office under Registration Numbers 696,534; 800,782; 2,469,244; 2,487,248; 2532844; 2,719,478 and 3,758,662. In addition, Mead Johnson holds a number of federal registrations for marks that feature ENFAMIL as the dominant component, namely Registration Numbers 839,249; 888,345; 2,173,496; 2,175,945; 2,701,509;
3,795,918; and 3,815,298.
Complainant Mead Johnson has been using the ENFAMIL trademark and service mark in the United States and around the world for more than 50 years and has invested substantially in the trademark and service mark associated with the goods and services marketed under the ENFAMIL brand name. As a result, the ENFAMIL trademarks and service marks, together with Complainant’s name and reputation, have become synonymous with quality infant nutrition products. Complainant has built up considerable goodwill in the minds of consumers in connection with the ENFAMIL trademarks and service marks.
Respondent, Kanter Associates SA, (“Respondent”) registered <enfamill.com> on September 14, 2004 (the “Domain Name”). Complainant has not licensed or otherwise authorized Respondent to use the ENFAMIL trademarks, or any of its other trademarks, in the Domain Name at issue, or for any other purpose.
The <enfamill.com > domain name resolves to a website at www.enfamill.com dedicated to providing a listing of pay-per-click advertising links and in the top left states “Enfamill.com What you need, when you need it.” The site features pay-per-click advertising for a wide variety of areas providing pay-per-click links to travel locations, family tree websites as well as antivirus links. The listing of links at the site appear to differ upon each load of the website, but typically comprises sponsored (i.e., pay-for-placement) links for a multitude of information. Complainant obviously has no control over the composition of this list, which might easily include links to sites that Complainant does not want associated with their trademarks. Furthermore, the search link on Respondent’s website, even when typing in Complainant’s mark, takes one to a variety of pay-per-click links, some of which will go to a competitor. Complainant takes great pride in their product and cannot have someone attempting to benefit off of a misspelling of their trademark to be taken to a site with pay-per-click advertising. This website appears to exist solely for the purpose of attracting Internet traffic looking for Complainant’s products in order to capitalize when confused visitors are taken to the site and click on the sponsored links at the website.
Respondent has registered the Domain Name in this case, which is confusingly similar to Complainant’s ENFAMIL mark, and has used it to create confusion and profit from the goodwill associated with the ENFAMIL mark. In the process Respondent has prevented Complainant from registering the Domain Name. Complainant thus contends that: (1) Respondent has registered Domain Name which is confusingly similar to the ENFAMIL mark in which Complainant has rights, (2) Respondent has no rights or legitimate interests in the Domain Name, and (3) Respondent has registered and is using the Domain Name in bad faith.
[a.] EACH DOMAIN NAME IS CONFUSINGLY SIMILAR TO A MARK IN WHICH COMPLAINANT HAS RIGHTS.
Complainant has rights in the ENFAMIL marks, including incontestable trademark rights pursuant to 15 U.S.C. §1065 under the following federal trademark registration numbers:
• 696,534 for ENFAMIL (registered April 19, 1960 for simulated breast milk formula in liquid and powder form for infants);
• 800,782 for ENFAMIL (registered on December 21, 1965 for feeding bottles, nipples, nipple covers, and container punches for use with specially packaged ready-to-use infant products);
• 839,249 for ENFAMIL NURSETTE (registered on November 21, 1967 for simulated breast milk formula in liquid and powder form for infants);
• 888,345 for ENFAMIL NURSETTE (registered on March 24, 1970 for infant feeding bottle and disposable nipple unit);
• 2,173,496 for ENFAMIL AR (registered on July 14, 1998 for infant foods);
• 2,175,945 for ENFAMIL FAMILY BEGINNINGS (registered on July 28, 1998 for health care services, namely, providing information to expectant and new mothers which focuses on good health for mother and infant);
• 2,469,244 for ENFAMIL (registered on July 17, 2001 for food for babies; vitamin and mineral preparations);
• 2,487,248 for ENFAMIL (registered on September 11, 2001 for food for babies; vitamin and mineral preparations);
• 2,532,844 for ENFAMIL (registered on January 22, 2002 for electrolyte replenishment preparations);
• 2,701,509 for ENFAMIL LIPIL (registered on March 25, 2003 for food for babies; vitamin and mineral preparations; dietary, nutritional and food supplements containing fatty acids, namely docosahexaenoic acid and arachidonic acid);
• 2,719,478 for ENFAMIL (registered on May 27, 2003 for pediatric feeding formula).
That Complainant has rights in the ENFAMIL mark is thus not in question. 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)”).
Respondent’s Domain Name contains Complainant’s ENFAMIL mark in its entirety, adds a generic top-level domain (“gTLD”), and adds only one other letter to the trademark. As a general proposition, where a domain name incorporates a mark in its entirety, adding a gTLD does not negate a finding of confusing similarity, (Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding the addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i))), nor does the addition of a generic or descriptive word (American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i))).
In this case, Respondent has added the only the single letter “l” and the gTLDs “.com.” The panel in The Neiman Marcus Group, Inc. and NM Nevada Trust v. Ho Nim, FA 1002001305813 (Nat. Arb. Forum March 18, 2010), found that the addition of a single letter to Complainant’s mark created a confusing similarity between the disputed domain name and Complainant’s Mark. Additionally in Google, Inc. v. DktBot.org, FA286993 (Nat. Arb. Forum Aug. 4, 2004), it was stated that “[t]he mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).” Yet furthermore, in Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) it was held that the addition of one letter created a domain name that was confusingly similar to complainant’s mark. Finally, the most analogous instance is where the Respondent’s domain was shoemalll.com and the Panel found “that a single extra letter added to Complainant’s mark, especially one that is likely the result of a typographical error, fails to differentiate the disputed domain name and Complainant’s mark according to Policy ¶4(a)(i).” Mason Companies, Inc. v. Forsyte Corporation, FA 1005001322975 (Nat. Arb. Forum June 15, 2010).
In light of the foregoing, Complainant respectfully submits that this Panel should find that ICANN Policy ¶4(a)(i) has been satisfied because the Domain Name is confusingly similar to Complainant’s ENFAMIL trademark and service mark.
[b.] RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN THE DOMAIN NAME.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the ENFAMIL mark or any of Complainant’s other marks. Accordingly, Respondent is not authorized by Complainant to register the Domain Name, nor is it authorized to utilize active or inactive websites at any domain incorporating Complainant’s ENFAMIL mark. Nor can Respondent establish rights or legitimate interests under any of the scenarios described in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
First, Respondent cannot possibly contend under Policy ¶4(c)(ii) that it is commonly known by or identified with the Domain Name. ENFAMIL is an invented word that has no meaning other than to serve as a source identifier for Complainant, as well as the products it manufactures and sells. Respondent’s name, Kanter Associates SA, is not even remotely similar to the Domain Name. See ICANN Policy ¶4(c)(ii); Seiko Epson Corp. v. Price-less Inkjet Cartridge Co., FA 096849 (Nat. Arb. Forum May 2, 2001), citing, inter alia, Compagnie de Saint Gobain v. Com-Union Corp., D200-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or for permission from Complainant to use the trademarked name); Gallup, Inc. v. Amish Country Store, FA 096209 (Nat. Arb. Forum Jan. 23, 2001) (same).
Respondent likewise cannot argue rights or legitimate interests arising through bona fide offering or fair use under Policy ¶¶4(c)(i) or (iii), respectively. Respondent uses the Domain Name primarily as means of collecting pay-per-click revenue derived when confused visitors looking for information about Complainant’s Enfamil® products errantly visit the Respondent’s websites and click on any of the scores of links featured there. Use of the disputed Domain Name in this manner is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). HiringSmart Canada Inc. v. Belize Domain WHOIS Service Lt, FA 1333667 (Nat. Arb. Forum Aug. 9, 2010). See also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 7, 2007) (“The Panel finds that Respondent is redirecting Internet users interested in Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of 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)”). Similarly, in WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) the Panel found that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant respectfully submits that it has met its initial burden under ICANN Policy ¶4(a)(ii), having established that Respondent is not commonly known by the name ENFAMIL, is not engaged in a bona fide commercial use or a non-commercial fair use of Complainant’s mark, and that Complainant has not in any manner authorized Respondent to use its mark. Citigroup Inc. v. Citilend Mortgage Company, FA1233601 (Nat. Arb. Forum Dec. 1, 2008); Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). This Panel should therefore find that ICANN Policy ¶4(a)(ii) has been satisfied because the Respondent has no rights or legitimate interests in the Domain Name at issue.
[c.] RESPONDENT HAS REGISTERED AND IS USING THE DOMAIN NAME IN BAD FAITH.
At the time Respondent registered the Domain Name at issue in September of 2004, Respondent was certainly well aware of Complainant’s trademarks. First, 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. Indeed, Complainant has been using the ENFAMIL marks in the United States and around the world for more than 50 years. The ENFAMIL trademarks and service marks have become synonymous with quality infant and children’s nutrition products. Complainant has therefore built up considerable goodwill in the minds of consumers with its ENFAMIL marks. Given the fame of the ENFAMIL mark there can be no question of Respondent’s bad faith registration of the Domain Name. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name).
Respondent appropriated Complainant’s ENFAMIL mark in the <enfamill.com> Domain Name and, by all appearances, designed resolving websites around the ENFAMIL mark as a keyword in order to increase traffic to Respondent’s websites. Respondent’s resolving websites were thus designed to commercially profit Respondent through commissions, affiliate fees, and pay-per-click revenue as a result of Internet users’ confusion about Complainant’s presence and association with Respondent. Prior panels have found that this very conduct—misleading Internet users to attract them to Respondent’s own website for commercial gain—indicates bad faith registration and use pursuant to Policy ¶4(b)(iv). Victoria's Secret Stores Brand Management, Inc. v Speedeenames.com c/o Troy Rushton, FA 1325862 (Nat. Arb. Forum June 25, 2010). 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Since Respondent is diverting traffic from Complainant’s legitimate website to its website, Respondent is profiting from its use of Complainant’s mark and the confusion created from the similarity between the mark and Respondent’s domain name.
Furthermore, Respondent’s website at <enfamill.com> includes a search engine whereby users can search for products. By entering in the trademark Enfamil, users are provides links, some of which lead to a competitor’s products. (screenshot of search for Enfamil at <enfamill.com> attached as Annex F). Note that a competitor’s product, Similac®, is the first item available in both the left hand column and the top row. Furthermore, the bottom link purports to provide “amazing deals” for “all major baby brands” which obviously includes competitors as well. Previous Panels have found that when Respondent is profiting from its efforts to confuse and attract Complainant’s customers, such effort demonstrates bad faith registration and use pursuant to Policy ¶4(b)(iv). See 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) Additionally, in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) the Panel found 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. The Respondent in this instance is also committing such bad faith.
Based on the circumstances described above, it can only be inferred that Respondent registered the Domain Name, which is confusingly similar to Complainant’s ENFAMIL mark, for the purpose of preventing Complainant from itself registering the domain, to disrupt Complainant’s business, and to commercially benefit from the goodwill associated with Complainant’s ENFAMIL mark. This conduct constitutes bad faith under Policy ¶¶4(b)(ii), (iii) and (iv) and meets the showing required under Policy ¶4(a)(iii).
Accordingly, Complainant respectfully submits this Panel should find that ICANN Policy ¶4(a)(iii) is satisfied because Respondent has registered and is using the Domain Name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Mead Johnson & Company, LLC is a global provider of infant and children’s nutrition products. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENFAMIL mark (e.g. Reg. No. 696,534 registered April 19, 1960). Complainant uses the mark as its brand name for infant and children’s products in the nutrition arena.
Respondent Kanter Associates SA registered the disputed domain name on September 14, 2004. The disputed domain name resolves to a website offering links to third-party businesses. Some of the links included on the site resolve to Complainant’s competitors in the child and infant nutrition industry.
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 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 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 its rights in the ENFAMIL mark by registering it with the USPTO (e.g. Reg. No. 696,534 registered April 19, 1960). Previous panels have determined that registering a mark with the USPTO confers upon the registrant rights in said mark, regardless of whether the mark is registered in respondent’s country of residence. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds Complainant has established its rights in the ENFAMIL mark under Policy ¶4(a)(i) by registering the mark with the USPTO.
Complainant also contends Respondent’s <enfamill.com> domain name is confusingly similar to its ENFAMIL (a fanciful – or made up – word). The disputed domain name includes the entire mark, merely adding the letter “l” and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of the letter does not affect the phonetic or aesthetic qualities and that it is a long held principle under the Policy the addition of a gTLD is immaterial to the confusingly similar analysis. Therefore, the Panel finds Respondent’s <enfamill.com> domain name is confusingly similar to Complainant’s ENFAMIL mark under Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); see also 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.”).
The Panel finds Policy ¶4(a)(i) satisfied.
The Panel finds Complainant has submitted sufficient evidence to form a prima facie case against Respondent, thereby shifting the burden of proof under Policy ¶4(a)(ii) to Respondent. 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.”). Respondent has failed to file a Response in this matter, which allows the Panel to accept Complainant’s assertions as true unless clearly contradicted by the evidence. See 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). Out of an abundance of caution, the Panel will examine the entire record and make such determinations in accordance with the factors enumerated Policy ¶4(c).
Complainant contends Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Kanter Associates SA.” Respondent has failed to submit any evidence to support a finding that it is commonly known by the disputed domain name. Therefore, based upon the evidence on record, the Panel finds Respondent is not commonly known by the disputed domain 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also claims Respondent is not making a bona fide offering of goods or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <enfamill.com> domain name resolves to a classic pay-per-click website where Internet users are presented with multiple links to third-party businesses upon their arrival. Some of the third-party links resolve to the websites of Complainant’s competitors in the infant and child nutrition industry. Respondent presumably receives a click-through fee for each Internet user diverted to these linked sites. Therefore, the Panel finds Respondent is not making a bona fide offering of goods or services under Policy ¶4(c)(i) nor is it making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also 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)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent’s disputed domain name disrupts its business demonstrating bad faith registration and use. Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors in the child and infant nutrition industry alongside other links to unrelated third-parties. Internet users may arrive at the website and click-through to one of the linked sites where they can purchase goods from a competitor rather than Complainant. The Panel finds this use clearly disrupts Complainant’s business, demonstrating bad faith registration and use on the part of Respondent under Policy ¶4(b)(iii). 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 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 the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also claims Respondent registered and is using the disputed domain name for its own commercial gain, constituting bad faith registration and use. Internet users utilizing Respondent’s disputed domain name will arrive at a website offering links to third-parties. Some of these links resolve to Complainant’s competitors. Respondent presumably collects a small click-through fee each time it is able to divert an Internet user to these linked sites. The Panel finds Respondent selected the disputed domain name because it was confusingly similar to Complainant’s mark and included the competing links on its website to capitalize on the confusion created by the disputed domain name. Thus, the Panel also finds Respondent has registered and used the disputed domain name in bad faith under Policy ¶4(a)(iii) because it was clear that it intended to gain commercially from the resulting confusion. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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 Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamill.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 12, 2012
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