national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. Aleksey Prochukhan

Claim Number: FA1203001437262

 

PARTIES

Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA.  Respondent is Aleksey Prochukhan (“Respondent”), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enfamil-coupons.info>, registered with GoDaddy.com LLC.

 

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.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2012; the National Arbitration Forum received payment on March 30, 2012.

 

On March 30, 2012, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <enfamil-coupons.info> domain name is registered with GoDaddy.com LLC and that Respondent is the current registrant of the name.  GoDaddy.com LLC has verified that Respondent is bound by the GoDaddy.com LLC 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 April 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@enfamil-coupons.info.  Also on April 4, 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 April 5, 2012.

 

On April 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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 claims to be a global leader in infant and children’s nutrition. Complainant is the owner the ENFAMIL trademark, first used in commerce in 1959 and covered by a number of USPTO Registered trademark as shown by Annex B of the Complaint. In addition, the ENFAMIL trademark is incorporated into and is the dominant feature of at least seven other federally registered trademarks.

 

 

The Complainant refers to a number of previous UDRP decisions where the Complainant has successfully managed to get the disputed domain names, incorporating the ENFAMIL trademark, transferred.

 

The Complainant states that the ENFAMIL trademarks and service marks have become synonymous with quality infant nutrition products, with a considerable goodwill in the minds of consumers.

 

The Complainant has not licensed or otherwise authorized the Respondent to use the ENFAMIL trademarks. The disputed domain name resolves to a website that purports to provide information about Complainants products and discusses how one might obtain coupons for such products. Complainant argues that visitors to Respondents website may read and follow advice or suggestions Respondent posts there believing them to emanate from Complainant.

 

Furthermore, the website at the <enfamil-coupons.info> appears to offer a coupon on the bottom portion for visitors, which has been expired for over a year, thus leading to greater issues when a potential customer attempts to use such coupon in a store. The Complainant concludes that the website appears to exist solely for the purpose of attracting Internet traffic looking for Complainant’s products in order to capitalize when confused visitors click on the sponsored links and ads imbedded there.

 

According to the Complainant, the Respondent is likely in a pattern of registration that attempts to generate revenue off of other’s marks, as the Respondent (according to a search made by the Complainant) has registered approximately 30 other domains, which the Complainant finds likely to include other trademarks that Respondent was more than likely not authorized to use.

 

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the ENFAMIL mark or any of Complainant’s other marks.

 

Finally, the Complainant states that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant has been using the ENFAMIL marks in the United States and around the world for more than 50 years, so at the time that Respondent registered <enfamil-coupons.info>, Respondent was certainly well aware of Complainant’s trademarks. The Respondent’s domain name gives the impression that the site is affiliated with the Complainant. The name itself causes confusion as to the affiliation with Complainant through the entire use of the mark with only generic words added.

 

 

B. Respondent

According to the Respondent, the web site used for the disputed domain name was created only to simplify access to public discount codes and printable coupons for the Complainant’s customers and does not contain sponsored links or ads at all.

 

The Respondent, claiming that <enfamil-coupons.info> is used only in a non-profit way, declares that Respondent has no objections to the transfer of the disputed domain name to the Complainant.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 696,534 for ENFAMIL registered on April 19, 1960 and first used in commerce on June 19, 1959;

 

No. 800,782 for ENFAMIL registered on December 21, 1965 and first used in commerce on April 18, 1964;

 

No. 2,469,244 for ENFAMIL registered on July 17, 2001 and first used in commerce on June 16, 1959;

 

No. 2,487,248 for ENFAMIL registered on September 11, 2001 and first used in commerce in February 2000;

 

No. 2,532,844 for ENFAMIL registered on January 22, 2002 and first used in commerce on April 7, 2001;

 

No. 2,719,478 for ENFAMIL registered on May 27, 2003 and first used in commerce on April 28, 2000; and

 

No. 3,758,662 for ENFAMIL registered on March 9, 2010 and first used in commerce on April 1, 2009.

 

Copies of Certificates of Registration for the above marks provided as Annex B of the Complaint.

 

The Respondent registered <enfamil-coupons.info> on November 19, 2011.

 

According to Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), “a Panel shall 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 this case, the Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant.

 

A “consent-to-transfer” approach is sometimes used as a way for cybersquatters to avoid adverse findings against them, and does not automatically means that the panel of a certain UDRP case will just accept the consent to transfer, without going through a full analyze of the case under the elements of the UDRP. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008).

 

In this case however, after consideration of the strengths and weaknesses in arguments, evidence and information provided by the Complainant as well as by the Respondent, the Panel cannot find any reason to make a full analysis.

 

The Panel therefore decides to forego the traditional UDRP analysis, not to make any further findings or discussion, and instead order an immediate transfer of the <enfamil-coupons.info> domain nameSee Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

DECISION

Giving the special circumstances in this case and the fact that Respondent has consented to the transfer of the disputed domain name, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enfamil-coupons.info> domain name be TRANSFERRED from Respondent to Complainant.

Petter Rindforth, Panelist

Dated:  April 24, 2012

 

 

 

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