Mead Johnson & Company, LLC v. Keith Blaze
Claim Number: FA1202001432184
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Keith Blaze (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilsite.info>, 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 February 29, 2012; the National Arbitration Forum received payment on February 29, 2012.
On February 29, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamilsite.info> 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 March 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@enfamilsite.info. Also on March 6, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2012, 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
1. Complainant, Mead Johnson & Company, LLC, distributes infant nutrition products under the ENFAMIL name.
2. Complainant has multiple registrations for the ENFAMIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 696,534 registered April 19, 1960).
3. Complainant has used the ENFAMIL mark globally in commerce since 1959.
4. Respondent, Domains By Proxy, LLC, registered the <enfamilsite.info> domain name on May 8, 2011.
5. Respondent’s domain name resolves to a page of sponsored listings of hyperlinks.
6. Respondent’s domain name is confusingly similar to the ENFAMIL mark.
7. Respondent has no authorization to use the ENFAMIL mark and is not affiliated with Complainant’s business.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant claims that it has rights in the ENFAMIL mark by its registration with the USPTO (e.g., Reg. No. 696,534 registered April 19, 1960). The panels in Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) and Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) found that registration of a mark with the USPTO is evidence of the registrant’s exclusive right to use the mark. The Panel finds that Complainant’s registration of the ENFAMIL mark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <enfamilsite.info> domain name is confusingly similar to its ENFAMIL mark because the domain name uses the entire ENFAMIL mark, with the addition of the generic term “site” and the generic top-level domain (“gTLD”) “.info.” In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel held that a domain name is confusingly similar to the complainant’s mark where the change is the “mere addition of a generic . . . word to a registered mark.” Further, inTrip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel stated that adding a “gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis.” The Panel concludes that under Policy ¶ 4(a)(i) Respondent’s disputed domain name is confusingly similar to the ENFAMIL mark.
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <enfamilsite.info> domain name and that Respondent was not granted permission to use the ENFAMIL mark in any manner. Complainant states that the WHOIS information identifies the domain registrant as “Domains By Proxy, LLC,” which Complainant alleges does not indicate Respondent is commonly known by the domain name. The Panel finds that, based on the WHOIS information and lack of other supporting evidence, Respondent is not commonly known by the disputed domain name and therefore does not have rights or legitimate interests in the 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 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 argues that Respondent’s use of the <enfamilsite.info> domain name is not in a manner related to a bona fide offering of goods and services or a legitimate noncommercial or fair use. Complainant alleges the Respondent collects “pay-per-click” revenue when visitors arrive at the website while searching for Complainant’s products and click on the displayed hyperlinks. Based on the screen shots showing that the hyperlinks lead to businesses whose products compete with Complainant’s, the Panel finds that Respondent’s disputed domain name is not being used in a way that demonstrates 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 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)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant argues that Respondent’s use of the disputed domain name to redirect potential customers from Complainant’s website to Respondent’s website disrupts Complainant’s business. Complainant alleges that the <enfamilsite.info> domain name is registered and used in bad faith because the hyperlinks displayed on the resolving website lead to competing businesses and Internet users are likely to be diverted to those sites. The panel in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) held that by offering links of Complainant’s competitors to consumers, Respondent registered and uses the disputed domain name in a way that disrupts Complainant’s business. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel concluded that “by redirecting Internet users seeking information on Complainant’s [business] to competing websites,” the respondent registered the domain name in bad faith. The Panel determines that Respondent uses the domain name to redirect consumers to competing websites, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant argues that the <enfamilsite.info> domain name is designed for the purpose of increasing traffic to Respondent’s resolving website and that Respondent profits commercially through pay-per-click revenue resulting from Internet users’ confusion as to Respondent’s affiliation with Complainant. Complainant alleges that Respondent intentionally misleads Internet traffic for its own commercial gain and that such use of the domain name amounts to bad faith registration and use. The Panel finds that Respondent’s use of the <enfamilsite.info> domain name to make a profit by using a confusingly similar domain name to attract Internet users is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <enfamilsite.info> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 11, 2012
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