national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. Infopedia / Madhu Sudhanan

Claim Number: FA1111001417921

 

PARTIES

Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA.  Respondent is Infopedia / Madhu Sudhanan (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enfamilcouponsguide.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

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 <enfamilcouponsguide.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@enfamilcouponsguide.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 Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <enfamilcouponsguide.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.

 

2.    Respondent does not have any rights or legitimate interests in the <enfamilcouponsguide.com> domain name.

 

3.    Respondent registered and used the <enfamilcouponsguide.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Mead Johnson & Company, LLC, produces and distributes infant and children’s nutrition products and is well known for its ENFAMIL and Enfalac variety of infant formulas. Complainant owns many trademarks with the United States Patent & Trademark Office (“USPTO”)  for its ENFAMIL mark, including the following:

Reg. No. 696,534                 registered April 19, 1960;

Reg. No. 2,469, 244             registered July 17, 2001; &

Reg. No. 2,719,478              registered May 27, 2003.

 

Respondent, Infopedia / Madhu Sudhanan, registered the <enfamilcouponsguide.com> domain name on August 23, 2011. Respondent’s domain name resolves to a website that provides unauthorized and possibly inaccurate information regarding Complainant’s ENFAMIL family of formula products.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns many trademark registrations with the USPTO for its ENFAMIL mark (e.g., Reg. No. 696,534 issued April 19, 1960). The Panel finds that Complainant has established rights in the ENFAMIL mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). The Panel additionally finds that trademark registration is not required to be in the country where Respondent resides for the purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).

 

Complainant contends that the disputed domain name <enfamilcouponsguide.com> is confusingly similar to its ENFAMIL mark. Complainant argues that adding two generic words to a mark—“coupons” and “guide”—and adding the generic top level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from Complainant’s mark. The Panel concludes that the addition of the generic words does not render the <enfamilcouponsguide.com> domain name notably distinct from the ENFAMIL mark under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because 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)). The Panel also finds that adding a gTLD does not adequately differentiate the disputed domain name from a mark under Policy ¶ 4(a)(i). See 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.”); see also 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 therefore determines that Respondent’s <enfamilcouponsguide.com> domain name is confusingly similar to Complainant’s ENFAMIL mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondents does not possess any rights or legitimate interests in the disputed domain name <enfamilcouponsguide.com>. Under Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case that Respondent lacks rights and legitimate interests in the domain name. When Complainant has met this requirement, the burden shifts to Respondent to show why it does have rights or interests in the disputed domain name. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also 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.”). The Panel finds that Complainant has satisfied the burden of showing a prima facie case. Because the Respondent failed to reply to these proceedings, the Panel may assume Respondent does not possess any rights or legitimate interests in the disputed domain name. See 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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine if Respondent owns rights and legitimate interests in the domain name  under Policy ¶ 4(c).

 

Complainant contends that Respondent is neither commonly known by the <enfamilcouponsguide.com> domain name, nor does Respondent have permission from Complainant to use the mark. The WHOIS information identifies the Respondent as “Infopedia / Madhu Sudhanan,” which does not support a conclusion that Respondent is commonly known by the disputed domain name. Complainant argues that the ENFAMIL mark is an original word, created by Complainant, and has no meaning outside its purpose as an identifier for the products it represents. The Panel finds that absent any evidence that Respondent is commonly known by the disputed domain name, Respondent does not have any rights and legitimate interests in the disputed domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant contends that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the domain name. The <enfamilcouponsguide.com> domain name resolves to a website that displays unverified information about Complainant’s products and links to coupons for Complainant’s products. Respondent’s resolving website contains data that relates directly to Complainant, which creates a false association with Complainant and its ENFAMIL mark. The Panel finds that Respondent’s use of the domain name to post unauthorized information and display third-party links does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) and  4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)) ; see also 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.”).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the disputed domain name to lure Internet users to its website for commercial gain shows bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that its ENFAMIL mark has built up over fifty years of goodwill and positive reputation, of which Respondent is aware. Complainant alleges that it has used the mark with the intention of drawing consumers to Respondent’s website and creating confusion about Respondent’s affiliation with Complainant. Complainant asserts that Respondent makes a profit from the resolving website via the pay-per-click links. The Panel finds that Respondent’s use of the disputed domain name to attract Internet users and create confusion for its own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).

 

The Panel finds that Policy ¶ 4 (a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enfamilcouponsguide.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  January 17, 2012

 

 

 

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