national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. BuyDomains.com

Claim Number: FA1202001432183

 

PARTIES

Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA.  Respondent is BuyDomains.com (“Respondent”), represented by Erik S. Zilinek of NameMedia, Inc., Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enfamilac.com>, registered with Tierranet Inc. d/b/a Domaindiscover.

 

PANEL

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.

 

Luiz Edgard Montaury Pimenta as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2012; the National Arbitration Forum received payment on February 29, 2012.

 

On February 29, 2012, Tierranet Inc. d/b/a Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <enfamilac.com> domain name is registered with Tierranet Inc. d/b/a Domaindiscover and that Respondent is the current registrant of the name.  Tierranet Inc. d/b/a Domaindiscover has verified that Respondent is bound by the Tierranet Inc. d/b/a Domaindiscover 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 March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2012 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@enfamilac.com.  Also on March 2, 2012, 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.

 

A timely Response was received and determined to be complete on March 22, 2012.

 

On 03/02/2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta 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.

 

RELIEF SOUGHT

 

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

 

PARTIES' CONTENTIONS

 

A. Complainant

 

The Complainant, Mead Johnson & Johnson, LLC claimed to be one of the major companies in children’s nutrition business and widely known for its Enfamil ® and Enfalac ® families of infant formulas.  

 

Complainant affirmed that ENFAMIL was first used in market on 1959, as a simulated breast milk formula in liquid and powder form for infants. Presently it owns several trademark registrations for ENFAMIL before the U.S. Patent and Trademark Office, of which the first (n.º 696,534)  was registered on April 19, 1960 and the latest (n.º 3,758,662) was registered on March 09, 2010. ENFAMIL is also part of a family of marks duly registered before the U.S. Patent and Trademark Office, which comprises marks like ENFAMIL PREMIUM (registration n.º 3,795,918) and ENFAMIL RESTFULL LIPIL (registration n.º 3,815,298) among others.

 

Hence, Complainant asserted that it has been using the referred mark, not only in the United States but all over the world, for more than 50 years and investing heavily so that nowadays, according to Complainants contentions, the ENFAMIL mark represents quality when the matter is infant nutrition products.   

 

Further, Complainant affirmed that the Respondent registered the disputed domain name <enfamilac.com>, which reproduces its mark ENFAMIL with the addition of the letters “a” and “c” and of a generic top-level domain (“gTLD”), without any license and/or authorization to use Complainant’s trademark.  

 

Additionally, Complainant argued that Respondent’s use of ENFAMIL mark is made to obtain a domain name that resolves to a website providing a listing of pay-per-click advertising and sponsored links, and further indicates that the domain name is for sale, as shown on Annex E. In particular, Complainant alleged that most of the sponsored links redirect the user to products related to babies and infants, or other consumer goods, even though the listing of links is different for each load of the website.

 

Moreover, Complainant contended that Respondent has been using the website exclusively to attract consumers looking for Complainant’s products and to capitalize when mistaken and/or confused visitors click on the sponsored links and ads imbedded on the domain name <enfamilac.com>.

 

On these grounds, Complainant stated that the Respondent:  has registered and uses the domain name in dispute in bad faith (to attract Internet users to a directory website containing commercial links); lacks legitimate interest, since it has no rights over the domain name in dispute; is not commonly known by the name ENFAMIL; is not engaged in a bona fide commercial use; and also that <enfamilac.com> is confusingly similar to the ENFAMIL ® mark. Moreover, Complainant claimed that the letters “a” and “c” were intentionally selected, as they are the final letters of one of Complainant’s competitor’s main product, Similac ®.

 

Therefore, Complainant is of the opinion that Respondent registered the domain name under dispute with the intention to mislead consumers and prevent Complainant from obtaining <enfamilac.com>.

 

B. Respondent

 

Respondent denied that the domain name <enfamilac.com> was registered in bad faith, however, agreed to transfer it to Complainant claiming that the referred domain name is not critical to its business. Moreover, Respondent informed that it has reached the Complainant twice to voluntarily transfer the disputed domain name at no cost, but did not receive a response of any kind.

 

Additionally, Respondent claimed that this Panelist needed only to transfer the domain name under dispute, without issuing an opinion on the merits of the case.

 

Furthermore, Respondent attached an Affidavit of its Chief Executive Officer, Kelly Conlin, explaining the immense quantity of domain names registered by “BuyDomains.com”, and that no conflicting results were shown by the “Basic Word Mark Search (New User)” of the Trademark Electronic Search System (“TESS”) maintained by the U.S. Patent and Trademark Office, when researching the term “enfamilac”.

 

Also Respondent informed that it was not contacted by the Complainant regarding the domain name under dispute until the filing of the present Complaint, and that it did not want to sell the referred domain name,  disrupt Complainant’s business, or keep Mead Johnson from registering a domain name that includes its marks.

 

At last, Respondent reinforced that <enfamilac.com> is not critical to Respondent’s business and is willing to voluntarily transfer the disputed domain name to the Complainant at no cost. 

 

DISCUSSION and FINDINGS

 

This Panel will render a decision analyzing the case under UDRP grounds, since the Complainant has not, even implicitly, mentioned the possibility of transferring the domain name without a decision on the merits.  This Panel shares the understanding that Respondent’s “consent-to-transfer” approach at no cost and without a decision on the merits may avoid cybersquatters from adverse findings against them.

 

Hence, Complainant must fulfill all of the three requirements of Paragraph 4 (a) of the UDRP – listed below - in order to acquire the right to transfer the ownership of the disputed domain name.

 

(i)            The domain name registered by Respondent  is identical or confusingly similar  to a trademark in which the Complainant has rights;

(ii)           Respondent has no rights or legitimate interests in respect to the domain name; and

(iii)          The domain name has been registered and is being used 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."

 

This Panel finds that the Complainant dully fulfilled the above-mentioned requirements, for the reasons further exposed.

Identical and/or Confusingly Similar

 

Complainant fulfills Paragraph 4 (a) (i), because the possibility of undue association between the domain name <enfamilac.com> and the mark ENFAMIL is notable and, in addition, previous panels rendered decisions finding that a registered mark is sufficient to assure Complainant’s rights under the UDRP, i.e., Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006).

 

This Panelist finds that neither the addition of the letters “a” and “c”, nor of a top-level domain (gTLD) “.com” are enough to distinguish the disputed domain name from Complainants ENFAMIL mark. First because the mere addition of a two letter suffix to the end of Complainant’s mark does not distinguish the disputed domain name under, Paragraph 4 (a) (i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002). Second because “.com” composes great part of domain names and past Panels have determined that the affixation of a gTLD does not defeat a confusingly similar claim. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003).

 

In view of the above, this Panelist reaches the conclusion that the consumer may be induced to believe that the disputed domain name and Complainants ENFAMIL mark are somehow affiliated, which may damage Complainant’s reputation and image.

 

The Panel, therefore, finds that Complainant has established the first condition of paragraph 4(a) of the Policy.

    

Rights or Legitimate Interests

 

Complainant proved to be the rightful owner of several ENFAMIL trademarks registrations. Previous panels rendered decisions finding that a registered mark is sufficient to assure Complainant’s legitimate interest under the UDRP, i.e., Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006).

 

Respondent affirmed that the disputed domain name is not critical for its business and informed it is willing to transfer <enfamilac.com> to the Complainant at no cost. This affirmation leads this Panelist to the conclusion that the actual holder has no legitimate interest over the referred domain name.

 

Also, the Respondent is not commonly known by the disputed domain name, but is identified as “BuyDomains.com” and its business consists in registering domain names, which has no relation with the domain under dispute. Previous decisions share the same understanding that the lack of similarity between <enfamilac.com> and Respondents activity leads to lack of rights and legitimate interest, i.e., Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003).

 

At last, Complainant presented evidence, see Annex E, that the disputed domain name is available for sale: clear evidence of lack of legitimate interest.

 

In view of the above, this Panelist is of the opinion that only the Complainant has rights and legitimate interests in the domain name under dispute. The Panel, therefore, finds that Complainant has established the second condition of paragraph 4(a) of the Policy.

 

Registration and Use in Bad Faith

 

The disputed domain name resolves to a website in which Complainant’s ENFAMIL mark is listed as one of several links for related searches.

 

The link to the Complainant’s mark directs users to a new webpage containing several sponsored-links of websites that commercialize items for infants like diapers.

 

Previous decisions, such as Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), reached the conclusion that use in bad faith is characterized whenever a confusingly similar domain name is used to host sponsored links that directs the internet user to websites whose businesses are related.

 

In view of the above, this Panelist understands that the domain name under dispute may lead some Internet users to believe that Respondent’s website is affiliated to Complainant’s commercial activities. Also, it is important to note that the Complainant has been using ENFAMIL as a trademark for over fifty years, reason why this Panel understands that is inconceivable that the Respondent did not know Complainant’s activities, especially if the sponsored links direct users to Complainant’s competitors.

 

The Panel, therefore, finds that Complainant has established the third condition of paragraph 4(a) of the Policy.

 

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 <enfamilac.com> domain name be TRANSFERRED from Respondent to Complainant

 

 

Luiz Edgard Montaury Pimenta, Panelist

Dated:  04/17/2012

 

 

 

 

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