Mead Johnson & Company, LLC v. Mario Taillon
Claim Number: FA1206001448470
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Mario Taillon (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilbabyformulastore.info>, registered with 1&1 Internet AG.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 13, 2012.
On June 15, 2012, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <enfamilbabyformulastore.info> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 June 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@enfamilbabyformulastore.info. Also on June 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following assertions:
1. Respondent’s <enfamilbabyformulastore.info> domain name is confusingly similar to Complainant’s ENFAMIL mark.
2. Respondent does not have any rights or legitimate interests in the <enfamilbabyformulastore.info> domain name.
3. Respondent registered or used the <enfamilbabyformulastore.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns rights in its ENFAMIL mark through its various registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 696,534 registered April 19, 1960).
2. Complainant has used the ENFAMIL mark for more than fifty years in the United States and around the world to identify its goods marketed under the ENFAMIL brand name, and has built a reputation as a company that produces quality products.
3. The ENFAMIL mark is used in connection with infant nutrition products such as baby formula, bottles, and vitamin preparations.
4. Respondent registered the <enfamilbabyformulastore.info> domain name on January 20, 2012.
5. The disputed domain name resolves to a website that purports to impart information regarding Complainant’s products and offers advice on how to obtain coupons for Complainant’s products.
6. The content on the resolving website was not authorized by Complainant and may be inaccurate.
7. The resolving website also provides links to Complainant’s competitors, and Respondent generates fees from its use of the hyperlinks.
8. The disputed domain name is confusingly similar to Complainant’s ENFAMIL mark, and Respondent lacks rights or legitimate interests in the disputed domain name.
9. Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <enfamilbabyformulastore.info> domain name, and cannot claim to be commonly known by the disputed domain name. Respondent registered and uses the <enfamilbabyformulastore.info> domain name in bad faith.
10. Respondent intended to create an association with Complainant’s business, and Respondent deliberately disrupts Complainant’s business.
11. Respondent registered the disputed domain name in order to prevent Complainant from registering the domain name on its own behalf.
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 asserts that it owns rights to the ENFAMIL mark through its many registrations with the USPTO (e.g., Reg. No. 696,534 registered April 19, 1960). In UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), the panel found that the complainant established its rights in the asserted mark under the Policy through registration with the USPTO. Further, the panel in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) found that a complainant need not own a trademark in respondent’s country for rights to attach under the Policy. The Panel concludes that Complainant’s registrations with the USPTO serves to secure Complainant’s rights in the ENFAMIL mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that the <enfamilbabyformulastore.info> domain name is confusingly similar to its ENFAMIL mark, citing the inclusion of the generic terms “baby,” “formula,” and “store,” as well as the generic top-level domain (“gTLD”) “.info.” The Panel notes that because Complainant’s business is concerned with the infant nutrition industry, the terms “baby” and “formula” can also be considered descriptive of Complainant’s business. The Panel finds that the changes made to the domain name do not change its confusing similarity to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See PNC Fin. Servs. Group, Inc. v. Thaoms, FA495474 (Nat. Arb. Forum July 28, 2005) (determining the pncbankcreditcard.info> domain name confusingly similar to the complainant’s PNCBANK mark due to the addition of a generic term as well as the gTLD “.info.”); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).
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 <enfamilbabyformulastore.info> domain name, and claims that the ENFAMIL mark derives from an invented word that has no meaning aside from an identifier for Complainant’s products. Complainant argues that it is “highly unlikely” that Respondent’s name is “remotely similar” to the disputed domain name. The Panel notes that Complainant submits evidence of the WHOIS information for the disputed domain name, which identifies “Mario Taillon” as the registrant. See Annex D. The Panel finds that based on the WHOIS information, Respondent is not commonly known by the disputed domain name and as a result, Respondent lacks rights and legitimate interests in the <enfamilbabyformulastore.info> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant claims that Respondent’s website offers information about Complainant’s company that creates a false association with Complainant and that Respondent’s website includes pay-per-click links that generate revenue on behalf of Complainant. Complainant claims that such uses of the disputed domain name are not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent’s use of the <enfamilbabyformulastore.info> domain name to display hyperlinks and to post content relating to Complainant’s products is 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 eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant claims that Respondent registered the <enfamilbabyformulastore.info> domain name to prevent Complainant from registering the domain name for itself. The Panel notes that Complainant does not provide evidence of any prior adverse UDRP decisions against Respondent and that the <enfamilbabyformulastore.info> domain name is the only domain name in dispute in the present case. The Panel determines that there is not sufficient evidence provided to demonstrate that Respondent is engaged in a pattern of preventing holders of a mark from reflecting their domain name in a mark, and declines to find that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent registered the <enfamilbabyformulastore.info> domain name to disrupt Complainant’s business. The Panel notes that Complainant does not make specific contentions as to how Respondent’s registration and use disrupts its business, but notes that previous panels have determined that competing hyperlinks on a respondent’s website are disruptive to a complainant’s business. The panel in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), stated that the respondent’s disputed domain name, which displayed hyperlinks to services in competition with the complainant’s business was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel concluded that a website featuring third-party hyperlinks to the complainant’s competitors demonstrated the respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). The Panel finds that Respondent disrupts Complainant’s business by posting competing hyperlinks at the resolving website, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent generates a profit from its use of the <enfamilbabyformulastore.info> domain name by hosting “pay-per-click” links to competitors’ websites. See Annex E. Complainant alleges that because the website has the effect of leading website visitors to believe that Complainant is affiliated with the website, Respondent registered the disputed domain name in bad faith. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panel found that Internet users were likely to be misled to the respondent’s website, which contained links for competing real estate websites, and would consequently be confused as to the source of the content found on the respondent’s website. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel stated that by operating a commercial search engine to hyperlinks of competitors, the respondent engaged in bad faith registration and use. The Panel determines that by attracting Internet traffic to its website and offering hyperlinks of Complainant’s competitors, Respondent confuses consumers and makes a commercial profit, demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent was aware of Complainant’s trademarks at the time it registered the <enfamilbabyformulastore.info> domain name. Complainant claims that due to the multiple ENFAMIL trademark registrations and the fame and good reputation of Complainant’s products, Respondent should have known that Complainant had rights in the ENFAMIL mark. The Panel finds that constructive notice is inadequate to warrant a finding of bad faith registration under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). However, the Panel notes that Complainant provides evidence of the resolving webpage, which includes references to Complainant’s products and uses the ENFAMIL mark, which the Panel finds demonstrates that Respondent had actual notice of Complainant’s rights in the ENFAMIL mark and thus registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Annex E. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilbabyformulastore.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 31, 2012
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