Mead Johnson & Company, LLC v. Mario Taillon
Claim Number: FA1206001448471
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 <enfamilformulastore.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 <enfamilformulastore.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@enfamilformulastore.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.
A timely Response was received and determined to be complete on July 11, 2012.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enfamilformulastore.info> domain name is confusingly similar to Complainant’s ENFAMIL mark;
2. Respondent does not have any rights or legitimate interests in the <enfamilformulastore.info> domain name;
3. Respondent registered or used the <enfamilformulastore.info> domain name in bad faith.
B. Respondent makes the following assertions:
1. Users generally would reach the <enfamilformulastore.info> domain name through eBay long-tail search phrases for which the Internet users need to know exactly what they are looking for;
2. The <enfamilformulastore.info> domain name has had zero visitors since its registration six months ago through the eBay long-tail search phrase process;
3. There are no searches reported by Google for the phrase “enfamil formula store” and thus the <enfamilformulastore.info> domain name has no intrinsic value;
4. The <enfamilformulastore.info> domain name was registered and is used to regroup baby formula offers together to make it easier for Internet users to find these offers before deciding to use or not to use eBay to purchase the products;
5. The display of the eBay logo on the <enfamilformulastore.info> domain name is tell-tale of the website being run by a private seller rather than by Complainant.
1. Complainant has rights in the ENFAMIL mark;
2. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the ENFAMIL mark (e.g., Reg. No. 696,534 registered April 19, 1960) which Complainant uses in connection with infant nutrition products;
3. The <enfamilformulastore.info> domain name is confusingly similar to the ENFAMIL mark;
4. Respondent is not commonly known by the <enfamilformulastore.info> domain name;
5. The <enfamilformulastore.info> domain name resolves to a website which purports to provide information on Complainant’s products while displaying links to Complainant’s competitors’ products;
6. Respondent uses the disputed domain name to commercially gain by taking advantage of Internet users;
7. Respondent registered and began using the <enfamilformulastore.info> domain name with full knowledge of Complainant’s rights in the ENFAMIL mark.
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.
Complainant contends that it has rights in the ENFAMIL mark which it uses in connection with infant nutrition products. Complainant provides the Panel with evidence of its USPTO registrations for the ENFAMIL mark (e.g., Reg. No. 696,534 registered April 19, 1960). Panels have found that, regardless of the location of the parties to a dispute, the registration of a mark with a trademark authority is sufficient evidence of rights in a mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); 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). Therefore, the Panel finds that Complainant has rights in the ENFAMIL mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <enfamilformulastore.info> domain name is confusingly similar to the ENFAMIL mark. The Panel finds that Respondent’s addition of the descriptive term “formula” and the generic term “store” fails to distinguish the <enfamilformulastore.info> domain name from the ENFAMIL mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.info” is irrelevant to the purpose of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the <enfamilformulastore.info> domain name is confusingly similar to the ENFAMIL mark under Policy ¶ 4(a)(i).
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 contends that Respondent is not commonly known by the <enfamilformulastore.info> domain name. Complainant asserts that Respondent is not remotely similar to the disputed domain name as the ENFAMIL mark was made up by Complainant and has no meaning but for its connection with Complainant. Additionally, Complainant provides the Panel with the WHOIS record for the <enfamilformulastore.info> domain name which lists “Mario Taillon” as the domain name registrant. Panels have found that the WHOIS record, as well as other pertinent, available information, determines whether a respondent is commonly known by a disputed domain name. See 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). Therefore, the Panel finds that Respondent is not commonly known by the <enfamilformulastore.info> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the <enfamilformulastore.info> domain name is evidence of Respondent’s lack of rights and legitimate interests. Complainant asserts that the <enfamilformulastore.info> domain name resolves to a website which purports to offer information about Complainant’s products but actually displays links to Complainant’s competitors’ products. The panels in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), and ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), held that the use of a website to display links to competitive products is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent’s display of links to Complainant’s competitors’ products is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent registered and is using the <enfamilformulastore.info> domain name in bad faith. Complainant argues that the <enfamilformulastore.info> domain name resolves to a website which purports to provide information about Complainant’s products while actually displaying links to Complainant’s competitors’ products. Complainant asserts that Respondent is using the ENFAMIL mark in the disputed domain name and on the resolving website for the purpose of creating confusion in order to profit from the goodwill associated with the ENFAMIL mark. Therefore, the Panel finds that Respondent registered and is using the <enfamilformulastore.info> domain name in bad faith as it attempted to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant contends that Respondent registered the <enfamilformulastore.info> domain name despite being well-aware of Complainant’s rights in the ENFAMIL mark. Complainant argues that it has long-standing trademark registrations for the ENFAMIL mark and that the mark has been used around the world for over 50 years. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore may determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilformulastore.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 31, 2012
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