Mead Johnson & Company, LLC v. Jenny Nassour
Claim Number: FA1206001448472
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Jenny Nassour (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcouponsfree.com>, registered with GoDaddy.com, LLC.
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.
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 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamilcouponsfree.com> 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 June 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@enfamilcouponsfree.com. Also on June 13, 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 10, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its ENFAMIL mark.
2. Respondent’s <enfamilcouponfree.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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 contends that it owns rights in the ENFAMIL mark under Policy ¶ 4(a)(i). Complainant claims that it provides infant and children’s nutrition products, including Complainant’s ENFAMIL infant formula. Complainant provides evidence of its trademark registrations with the USPTO for its ENFAMIL mark (e.g., Reg. No. 696,534 registered April 19, 1960). See Complainant’s Annex B. Past panels have held that a USPTO trademark registration is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). Previous panels have also determined that a complainant is not required to register its mark within the country the respondent resides or operates in order for the complainant to establish rights in the mark. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Consequently, the Panel holds that Complainant owns rights in the ENFAMIL mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <enfamilcouponsfree.com> domain name is confusingly similar to Complainant’s ENFAMIL mark pursuant to Policy ¶ 4(a)(i). Complainant notes that the disputed domain name contains Complainant’s ENFAMIL mark, the generic terms “coupons” and “free,” and the gTLD “.com.” Prior panels have found that the addition of generic terms to a complainant’s mark fails to adequately distinguish a disputed domain name from the complainant’s mark. See 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). Past panels have also concluded that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel determines that Respondent’s <enfamilcouponsfree.com> domain name is confusingly similar to Complainant’s 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 claims that Respondent is not commonly known by the <enfamilcouponsfree.com> domain name for the purpose of Policy ¶ 4(c)(ii). Complainant alleges that Respondent is not licensed or authorized to use the ENFAMIL mark. Complainant further asserts that the ENFAMIL mark is an invented word that has no meaning other than to identify Complainant. The Panel notes that the WHOIS information lists “Jenny Nassour” as the registrant of the <enfamilcouponsfree.com> domain name. See Complainant’s Annex D. The Panel also finds that Respondent failed to respond to this case and, therefore, did not reply to Complainant’s claims. Past panels have held that a respondent is not commonly known by a disputed domain name because the WHOIS information was not similar and the complainant did not authorize the respondent to use the complainant’s mark, among the other evidence in the record. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the <enfamilcouponsfree.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <enfamilcouponsfree.com> domain name. According to Complainant, Respondent’s <enfamilcouponsfree.com> domain name resolves to a website that purports to provide information about Complainant’s products and instructs Internet users how to obtain coupons for these products. See Complainant’s Annex E. Complainant contends that Respondent creates a false association with Complainant and that Complainant cannot control the information that Respondent provides. Complainant alleges that it is harmed by any inaccurate information that Respondent may include on the resolving website. Past panels have found that a respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel agrees. The Panel finds accordingly under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent registered and uses the <enfamilcouponsfree.com> domain name as a part of a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). Complainant claims that Respondent owns over 50 domain names. Complainant admits that it does not know what the 50 domain names are made up of. Nevertheless, Complainant argues that these 50 domain names are evidence of a pattern of bad faith registration and use. Prior panels have found that the registration of domain names that contain the marks of third parties is evidence that the respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii). See Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists). Tthe Panel determines that the 50 domain names contain the marks of third parties. The Panel concludes that Respondent registered and uses the <enfamilcouponsfree.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant contends that Respondent registered and uses the <enfamilcouponsfree.com> domain name to commercially gain from click-through revenue, which is evidence of bad faith under Policy ¶ 4(b)(iv). Complainant argues that Internet users will become confused as to Complainant’s affiliation with the <enfamilcouponsfree.com> domain name because the domain name is confusingly similar to Complainant’s ENFAMIL mark. Complainant further claims that the resolving website provides information regarding Complainant’s ENFAMIL mark, which further enhances that confusion. The Panel notes that Complainant does not provide any evidence that Respondent receives click-through fees, aside from Complainant’s single allegation. Previous panels have determined that a respondent’s registration and use of a disputed domain name for the purpose of passing itself off as a complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel determines that Respondent is attempting to commercially benefit from Internet user confusion. The Panel holds that Respondent registered and uses the <enfamilcouponsfree.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilcouponsfree.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 24, 2012
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