national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. Private Whois enfamilcouponsx.net

Claim Number: FA1203001433009

 

PARTIES

Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA.  Respondent is Private Whois enfamilcouponsx.net (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enfamilcouponsx.net>, registered with Internet.bs Corp.

 

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 March 5, 2012; the National Arbitration Forum received payment on March 7, 2012.

 

On March 8, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <enfamilcouponsx.net> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@enfamilcouponsx.net.  Also on March 12, 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 16, 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

  1. Complainant
    1. Complainant has established rights in the ENFAMIL mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 696,534 registered April 19, 1960);
    2. Respondent’s disputed domain name is confusingly similar to Complainant’s ENFAMIL mark;
    3. Respondent’s disputed domain name resolves to a website offering links to third-party businesses that compete directly with Complainant;
    4. Respondent lacks rights or legitimate interests in the disputed domain name;
    5. Respondent registered and is using the disputed domain name in bad faith;
    6. Respondent knew or should have known that Complainant had rights in the ENFAMIL mark prior to registering the disputed domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its ENFAMIL mark.

2.    Respondent’s domain name, <enfamilcouponsx.net> is confusingly similar to Complainant’s ENFAMIL mark.

3.    Respondent has no rights or legitimate interests in the disputed domain name.

4.    Respondent registered and used the disputed domain name in bad faith.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant asserts that 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).  Complainant submits multiple trademark certificates that appear to verify that the mark is duly registered and that it is the owner of record.  The Panel finds that Complainant has established its rights in the ENFAMIL mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant also asserts that Respondent’s <enfamilcouponsx.net> domain name is confusingly similar to Complainant’s ENFAMIL mark.  Complainant states that Respondent’s disputed domain name includes the entire mark while adding the generic top-level domain “.net,” the generic term “coupons,” and the letter “x.”  The Panel determines that the changes made by Respondent to form the disputed domain name fail to remove it from the realm of confusing similarity under Policy ¶ 4(a)(i) when it is compared to Complainant’s ENFAMIL mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also 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).”).

 

 

 

Rights or Legitimate Interests

 

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 alleges that Respondent is not commonly known by the disputed domain name.  The Panel notes that Respondent has not offered any evidence to support a finding contrary to Complainant’s allegations.  Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “Private Whois enfamilcouponsx.net.”  Based upon the evidence available, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See 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); see also 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).

 

Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Complainant states that the disputed domain name resolves to a website offering links to its competitors.  Previous panels have determined that this use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name.  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).  Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). 

 

Registration and Use in Bad Faith

 

Although Complainant alleges that Respondent registered and is using the disputed domain name with the intent to prevent it from reflecting its rights in a domain name, the Panel finds that Complainant has failed to allege sufficient facts to support a finding of bad faith under Policy ¶ 4(b)(ii). 

 

Complainant argues that Respondent’s disputed domain name disrupts its business, which demonstrates bad faith registration and use.  Complainant states that the disputed domain name resolves to a website offering links to third parties, many of which compete with Complainant’s own product offerings.  Internet users that are diverted to Respondent’s website may click on one of the links and be whisked away to a different website.  Once there, the diverted Internet user may purchase goods from someone else when he or she fully intended to purchase goods from Complainant.  Based upon this use, the Panel finds that Respondent’s disputed domain name disrupts Complainant’s business constituting bad faith registration and use under Policy ¶ 4(b)(iii).  See 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); see also 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)).

 

Complainant also argues that Respondent registered the disputed domain name with the intent to gain commercially by confusing Internet users into believing Complainant and Respondent are affiliated.  Complainant’s disputed domain resolves to a website offering links to its competitors in the infant nutrition industry.  The Panel infers that each time an Internet user clicks on one of the links offered, Respondent collects a small click-through fee.  Thus, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith 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 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).

 

Complainant also contends that in light of the fame and notoriety of Complainant's ENFAMIL mark, it is inconceivable that Respondent could have registered the <enfamilcouponsx.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and, finds that Respondent’s actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <enfamilcouponsx.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 26,  2012

 

 

 

 

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