Mead Johnson & Company, LLC v. Mdm holdings
Claim Number: FA1208001456657
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Mdm holdings (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamil-coupons-printable.net>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2012; the National Arbitration Forum received payment on August 3, 2012.
On August 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamil-coupons-printable.net> 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 August 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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-printable.net. Also on August 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.
A timely Response was received and determined to be complete on September 4, 2012.
On September 11, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant claims that:
a. Complainant owns rights in the ENFAMIL mark, which it uses in connection with infant and children’s nutrition.
b. Complainant owns trademark registrations for the ENFAMIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,719,478 registered May 27, 2003).
c. Respondent registered the <enfamil-coupons-printable.net> domain name on April 10, 2012.
d. Respondent’s <enfamil-coupons-printable.net> domain name is confusingly similar to Complainant’s ENFAMIL mark.
e. Respondent is not commonly known by the <enfamil-coupons-printable.net> domain name.
f. Respondent’s use of the <enfamil-coupons-printable.net> domain name, to resolve to a website providing information about Complainant’s products, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
g. Respondent registered and uses the disputed domain name in order to commercially gain as a result of Internet users’ confusion as to Complainant’s association with Respondent, which is evidence of bad faith.
h. Respondent had actual and constructive knowledge of Complainant’s rights in the ENFAMIL mark.
B. Respondent
The Respondent consents to transfer the <enfamil-coupons-printable.net> domain name to the Complainant, without any other statements or information.
The Panel finds that the Complainant has established extensive trademark rights in the ENFAMIL trademark, covering the following registrations with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,719,478 ENFAMIL (word), registered May 27, 2003
Reg. No. 3,758,662 ENFAMIL (fig), registered March 9, 2010
Reg. No. 2,487,248 ENFAMIL (fig), registered September 11, 2001
Reg. No. 2,469,244 ENFAMIL (word), registered July 17, 2001
Reg. No. 2,532,844 ENFAMIL (word), registered January 22, 2002
Reg. No. 696,534 ENFAMIL (word), registered April 19, 1960
Reg. No. 800,782 ENFAMIL (word), registered December 21, 1965
(Annex B of the Complaint).
Annex C of the Complaint shows a number of the Complainant’s trademark registrations based on ENFAMIL and additional words.
The Respondent registered <enfamil-coupons-printable.net> on April 10, 2012.
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.
Therefore, under these special circumstances, the Panel 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-printable.net> domain name. See 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.”).
Giving the special circumstances in this case, 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-printable.net> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 17, 2012
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