Mead Johnson & Company, LLC v. kevin moroney
Claim Number: FA1208001456659
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is kevin moroney (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcouponssite.net>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, 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 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamilcouponssite.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 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@enfamilcouponssite.net. Also on August 6, 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 August 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The ENFAMIL mark is currently registered as a stand-alone mark with the U.S. Patent and Trademark Office under the following seven Registration Numbers:
1. 696,534 for ENFAMIL registered on April 19, 1960 and first used in commerce on June 19, 1959 with simulated breast milk formula in liquid and powder form for infants;
2. 800,782 for ENFAMIL registered on December 21, 1965 and first used in commerce on April 18, 1964 with feeding bottles, nipples, nipple covers, and container punches for use with specially packaged ready-to-use infant products;
3. 2,469,244 for ENFAMIL registered on July 17, 2001 and first used in commerce on June 16, 1959 with food for babies; vitamin and mineral preparations;
4. 2,487,248 for ENFAMIL registered on September 11, 2001 and first used in commerce in February 2000 with food for babies; vitamin and mineral preparations;
5. 2,532,844 for ENFAMIL registered on January 22, 2002 and first used in commerce on April 7, 2001 with electrolyte replenishment preparations;
6. 2,719,478 for ENFAMIL registered on May 27, 2003 and first used in commerce on April 28, 2000 with pediatric feeding formula; and
7. 3,758,662 for ENFAMIL registered on March 9, 2010 and first used in commerce on April 1, 2009 with infant formula.
In addition, the ENFAMIL mark is incorporated into and is the dominant feature of at least seven other federally registered trademarks, namely Registration Numbers:
1. 839,249 for ENFAMIL NURSETTE registered on November 21, 1967 and first used in commerce on March 18, 1967 with simulated breast milk formula in liquid and powder form for infants;
2. 888,345 for ENFAMIL NURSETTE registered on March 24, 1970 and first used in commerce on December 6, 1968 with infant feeding bottle and disposable nipple unit;
3. 2,173,496 for ENFAMIL AR registered on July 14, 1998 and first used in commerce on February 25, 1998 with infant foods;
4. 2,175,945 for ENFAMIL FAMILY BEGINNINGS registered on July 28, 1998 and first used in commerce in June 1995 with health care services, namely, providing information to expectant and new mothers which focuses on good health for mother and infant;
5. 2,701,509 for ENFAMIL LIPIL registered on March 25, 2003 and first used in commerce on January 31, 2002 with food for babies; vitamin and mineral preparations; dietary, nutritional and food supplements containing fatty acids, namely docosahexaenoic acid and arachidonic acid;
6. 3,795,918 for ENFAMIL PREMIUM registered on June 1, 2010 and first used in commerce in April 2009 with pediatric and infant feeding formula; vitamin and mineral preparations; dietary, nutritional and food supplements; simulated breast milk formula in liquid and powder form for infants; electrolyte replenishment preparations; formula for use in feeding infants in premeasured packets; infant foods; infant formulas for sole source nutrition or nutritional supplementation, especially infant formulas for sole source nutrition or nutritional supplementation; and
7. 3,815,298 for ENFAMIL RESTFULL LIPIL registered on July 6, 2010 and first used in commerce in July 2009 with infant formula.
Additionally, Complainant has had great success in domain name dispute proceedings related to ENFAMIL and has had the following Domains related to ENFAMIL transferred:
Case No. Domain Name Decision Date
FA1008001340855 enfamil.mobi September 23, 2010
FA1010001350254 enfamilcoupons.com November 11, 2010
FA1010001350256 enfamilcoupons.net November 16, 2010
FA1010001350259 enfamilcoupons.org November 16, 2010
FA1010001350255 enfamilcoupons.info November 17, 2010
FA1010001350255 enfamilcouponsprintable.com November 17, 2010
FA1102001373118 enfamilgentlease.net March 22, 2011
FA1102001373118 enfamilgentlease.org March 22, 2011
FA1102001373118 enfamilformula.net March 22, 2011
FA1102001373118 enfamilformula.org March 22, 2011
FA1102001373118 enfamil-coupons.com March 22, 2011
FA1102001373374 enfamilcouponsprintable.org March 30, 2011
FA1102001373374 enfamilcouponsprintable.net March 30, 2011
FA1102001373595 enfamilgentlease.com March 31, 2011
FA1109001409769 enfamil-coupons-printable.com November 09, 2011
FA1109001409788 enfamil-coupons.net November 15, 2011
FA1111001417917 enfamilk.com January 03, 2012
FA1111001417918 enfamilformula.com January 12, 2012
FA1111001417920 enfamill.com January 12, 2012
FA1111001417912 enfamilstore.com January 15, 2012
FA1111001417921 enfamilcouponsguide.com January 17, 2012
FA1111001417919 enfamile.com January 19, 2012
FA1202001432184 enfamilsite.info April 11, 2012
FA1202001432183 enfamilac.com April 17, 2012
FA1203001433010 enfamilcouponsx.com April 18, 2012
FA1203001433009 enfamilcouponsx.net April 26, 2012
FACTUAL AND LEGAL GROUNDS
[a.] BACKGROUND FACTS
Complainant Mead Johnson & Company, LLC (“Mead Johnson”) is a global leader in infant and children's nutrition, best known for its Enfamil® and Enfalac® families of infant formulas.
Mead Johnson has registered the ENFAMIL mark with the U.S. Patent and Trademark Office under Registration Numbers 696,534; 800,782; 2,469,244; 2,487,248; 2532844; 2,719,478 and 3,758,662. In addition, Mead Johnson holds a number of federal registrations for marks that feature ENFAMIL as the dominant component, namely Registration Numbers 839,249; 888,345; 2,173,496; 2,175,945; 2,701,509; 3,795,918; and 3,815,298.
Complainant Mead Johnson has been using the ENFAMIL trademark and service mark in the United States and around the world for more than 50 years and has invested substantially in the trademark and service mark associated with the goods and services marketed under the ENFAMIL brand name. As a result, the ENFAMIL trademarks and service marks, together with Complainant’s name and reputation, have become synonymous with quality infant nutrition products. Complainant has built up considerable goodwill in the minds of consumers in connection with the ENFAMIL trademarks and service marks.
Respondent, Kevin Moroney, (“Respondent”) registered <enfamilcouponssite.net> on April 25, 2012 (the “Domain Name”). Complainant has not licensed or otherwise authorized Respondent to use the ENFAMIL trademarks, or any of its other trademarks, in the Domain Name at issue, or for any other purpose.
The <enfamilcouponssite.net> domain name resolves to a website at www.enfamilcouponssite.net (“Website”) which purports to provide information regarding Complainant’s Enfamil® products discusses how one might obtain coupons for such products. The site purports to provide information about Complainant’s Enfamil® branded infant formula products, but since it was not authored by or under the authority of Complainant, it cannot be trusted as to its accuracy. Confused visitors to the Website may read and follow advice or suggestions Respondent posts there believing them to emanate from Complainant. If the information is inaccurate, the visitor will blame Complainant rather than Respondent. The threat of harm this poses to Complainant is self-evident. The Website thus uses Complainant’s ENFAMIL mark in its Domain Name to attract and profit from Internet traffic that would not have ventured there, and certainly would not have lingered long there, but for Respondent’s efforts to appear as though it is legitimately sponsored by or affiliated with Complainant. To be clear, Respondent is neither sponsored by nor affiliated with Complainant.
It goes without saying that Complainant has no control over the content of the Website or the nature of the links thereupon, despite the impression created by the Website to the contrary. The Website does not provide any legitimate service, appearing to exist solely for the purpose of attracting Internet traffic looking for Complainant’s products in order to capitalize when confused visitors click on links to the site or initiate searches for product coupons to other sites that Respondent may own. The Website does include some verbiage but at no point provides a disclaimer that the page is not associated with Complainant, but rather takes the loose form of a blog.
Furthermore, Respondent is likely in a pattern of registration that attempts to generate revenue off of other’s marks. Through the use of Domain Tools, Complainant has learned that Respondent has registered approximately 111 other domains. It is reasonable to think that a great majority of those domains including marks that Respondent was more than likely not authorized to use. This is evidence that the Respondent is a typical cyber squatter and its registration of Complainant’s mark is in bad faith.
Respondent has registered the Domain Name in this case, which is confusingly similar to Complainant’s ENFAMIL mark, and has used it to create confusion and profit from the goodwill associated with the ENFAMIL mark. In the process Respondent has prevented Complainant from registering the Domain Name. Respondent’s registration is likely but one of a pattern of similar confusing registrations. Complainant thus contends that: (1) Respondent has registered Domain Name which is confusingly similar to the ENFAMIL mark in which Complainant has rights, (2) Respondent has no rights or legitimate interests in the Domain Name, and (3) Respondent has registered and is using the Domain Name in bad faith.
[b.] EACH DOMAIN NAME IS CONFUSINGLY SIMILAR TO A MARK IN WHICH COMPLAINANT HAS RIGHTS.
Complainant has rights in the ENFAMIL marks, as described above, including incontestable trademark rights pursuant to 15 U.S.C. §1065 under the following federal trademark registration numbers:
• 696,534 for ENFAMIL (registered April 19, 1960 for simulated breast milk formula in liquid and powder form for infants);
• 800,782 for ENFAMIL (registered on December 21, 1965 for feeding bottles, nipples, nipple covers, and container punches for use with specially packaged ready-to-use infant products);
• 839,249 for ENFAMIL NURSETTE (registered on November 21, 1967 for simulated breast milk formula in liquid and powder form for infants);
• 888,345 for ENFAMIL NURSETTE (registered on March 24, 1970 for infant feeding bottle and disposable nipple unit);
• 2,173,496 for ENFAMIL AR (registered on July 14, 1998 for infant foods);
• 2,175,945 for ENFAMIL FAMILY BEGINNINGS (registered on July 28, 1998 for health care services, namely, providing information to expectant and new mothers which focuses on good health for mother and infant);
• 2,469,244 for ENFAMIL (registered on July 17, 2001 for food for babies; vitamin and mineral preparations);
• 2,487,248 for ENFAMIL (registered on September 11, 2001 for food for babies; vitamin and mineral preparations);
• 2,532,844 for ENFAMIL (registered on January 22, 2002 for electrolyte replenishment preparations);
• 2,701,509 for ENFAMIL LIPIL (registered on March 25, 2003 for food for babies; vitamin and mineral preparations; dietary, nutritional and food supplements containing fatty acids, namely docosahexaenoic acid and arachidonic acid);
• 2,719,478 for ENFAMIL (registered on May 27, 2003 for pediatric feeding formula).
That Complainant has rights in the ENFAMIL mark is thus not in question. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”).
Respondent’s <enfamilcouponssite.net> Domain Name contains Complainant’s ENFAMIL mark in its entirety, adds the generic term “coupons” and generic term “site” along with the generic top-level domain (“gTLD”) “.net.” As a general proposition, where a domain name incorporates a mark in its entirety, adding a gTLD does not negate a finding of confusing similarity, (Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding the addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i))), nor does the addition of a generic or descriptive word (American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding 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))). In this case, Respondent has added the generic term “coupons,” the generic term “site” and the gTLD “.net.” Complainant has recently concluded the successful prosecution of a separate UDRP proceeding involving a nearly identical site, “enfamilcouponsguide.com”. The panel in that case, Mead Johnson & Company, LLC v. Infopedia / Madhu Sudhanan, FA 1417921 (Nat. Arb. Forum Jan. 17, 2012), concluded that “the addition of the generic words [“coupon” and “guide”] does not render the . . . domain name notably distinct from the ENFAMIL mark under policy ¶4(a)(i).” By the same token, the same alterations cannot serve in the present case to distinguish Respondent’s <enfamilcouponssite.net> Domain Names from Complainant’s ENFAMIL mark under Policy ¶4(a)(i).
In light of the foregoing, Complainant respectfully submits that this Panel should find that ICANN Policy ¶4(a)(i) has been satisfied because the Domain Name is confusingly similar to Complainant’s ENFAMIL trademark and service mark.
[c.] RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN THE DOMAIN NAMES.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the ENFAMIL mark or any of Complainant’s other marks. Accordingly, Respondent is not authorized by Complainant to register the Domain Name, nor is it authorized to utilize active or inactive websites at any domain incorporating Complainant’s ENFAMIL mark. Nor can Respondent establish rights or legitimate interests under any of the scenarios described in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
First, Respondent cannot possibly contend under Policy ¶4(c)(ii) that it is commonly known by or identified with the Domain Name. ENFAMIL is an invented word that has no meaning other than to serve as a source identifier for Complainant, as well as the products it manufactures and sells. Respondent’s name, Kevin Moroney, is not even remotely similar to either of the Domain Names. See ICANN Policy ¶4(c)(ii); Seiko Epson Corp. v. Price-less Inkjet Cartridge Co., FA 096849 (Nat. Arb. Forum May 2, 2001), citing, inter alia, Compagnie de Saint Gobain v. Com-Union Corp., D200-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or for permission from Complainant to use the trademarked name); Gallup, Inc. v. Amish Country Store, FA 096209 (Nat. Arb. Forum Jan. 23, 2001) (same).
Furthermore, Respondent is not engaging in a bona fide offering of goods or services. The <enfamilcouponssite.net> domain resolves to a website offering information which prominently includes Amended Complainant’s ENFAMIL mark throughout the site. The web site creates a false association with Complainant and its mark. In American Express Marketing & Development Corp. v. alexanderwechsler, FA 1107001399523 (Nat. Arb. Forum Aug. 23, 2011) the Panel held that the operation of a website that creates a false association is not a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) and (iii). Furthermore, in Smith v. Network Operations Ctr., FA 371622 (Nat. Arb. Forum Jan. 13, 2005) the Panel found that the respondent’s use of the a domain name “that contain[ed] material directly related to Complainant, including her name and photograph prominently displayed at the top of the page” failed to be within the parameters of Policy ¶¶4(c)(i) or (iii) because it presented a false association with the complainant.
Complainant respectfully submits that it has met its initial burden under ICANN Policy ¶4(a)(ii), having established that Respondent is not commonly known by the name ENFAMIL, is not engaged in a bona fide commercial use or a non-commercial fair use of Complainant’s mark, and that Complainant has not in any manner authorized Respondent to use its mark. Citigroup Inc. v. Citilend Mortgage Company, FA1233601 (Nat. Arb. Forum Dec. 1, 2008); Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). This Panel should therefore find that ICANN Policy ¶4(a)(ii) has been satisfied because the Respondent has no rights or legitimate interests in the Domain Name at issue.
[d.] RESPONDENT HAS REGISTERED AND IS USING THE DOMAIN NAMES IN BAD FAITH.
At the time Respondent registered the Domain Names at issue in April 2012, Respondent was certainly well aware of Complainant’s trademarks. First, the ENFAMIL trademarks and service marks are registered under multiple registrations, and there is no trademark or service mark registered or used by third parties that is similar to the ENFAMIL mark. Indeed, Complainant has been using the ENFAMIL marks in the United States and around the world for more than 50 years. The ENFAMIL trademarks and service marks have become synonymous with quality infant and children’s nutrition products. Complainant has therefore built up considerable goodwill in the minds of consumers with its ENFAMIL marks. Given the fame of the ENFAMIL mark there can be no question of Respondent’s bad faith registration of the Domain Names. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name).
Respondent appropriated Complainant’s ENFAMIL mark in the <enfamilcouponssite.net> Domain Name and, by all appearances, designed resolving websites around the ENFAMIL mark as a keyword in order to increase traffic to Respondent’s websites. Respondent’s resolving websites were thus designed to commercially profit Respondent through commissions, affiliate fees, and pay-per-click revenue on present site or subsequent sites owned by Respondent as a result of Internet users’ confusion about Complainant’s presence and association with Respondent. Prior panels have found that this very conduct—misleading Internet users to attract them to Respondent’s own website for commercial gain—indicates bad faith registration and use pursuant to Policy ¶4(b)(iv). Victoria's Secret Stores Brand Management, Inc. v Speedeenames.com c/o Troy Rushton, FA 1325862 (Nat. Arb. Forum June 25, 2010). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Based on the circumstances described above, it can only be inferred that Respondent registered the Domain Name, which is confusingly similar to Complainant’s ENFAMIL mark, for the purpose of preventing Complainant from itself registering the domain, to disrupt Complainant’s business, and to commercially benefit from the goodwill associated with Complainant’s ENFAMIL mark. This conduct constitutes bad faith under Policy ¶¶4(b)(ii), (iii) and (iv) and meets the showing required under Policy ¶4(a)(iii).
Accordingly, Complainant respectfully submits this Panel should find that ICANN Policy ¶4(a)(iii) is satisfied because Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims rights in the ENFAMIL mark based on its registration of the mark with the USPTO (e.g., Reg. No. 696,534 registered April 19, 1960). Complainant’s registration of the mark with the United States Patent & Trademark Office (“USPTO”) is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant urges Respondent’s <enfamilcouponssite.net> domain name is confusingly similar to Complainant’s ENFAMIL mark pursuant to Policy ¶4(a)(i). The disputed domain name includes Complainant’s mark, the terms “coupons” and “site,” and the generic top-level domain (“gTLD”) “.net.” Based upon Respondent’s actual use of the domain name here, the terms “coupons” and “site” are used in their generic sense. The addition of generic terms to a mark is not sufficient to distinguish a domain name from that mark for the purposes of Policy ¶4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The addition of a gTLD like “.net” is not sufficient to distinguish a domain name for the purposes of Policy ¶4(a)(i). 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.”). Respondent’s <enfamilcouponssite.net> domain name is confusingly similar to Complainant’s ENFAMIL mark pursuant to Policy ¶4(a)(i).
It should be noted Complainant’s “track record” in previous cases is immaterial. Complainant is required to prove its case against THIS Respondent. The fact Complainant has succeeded against other respondents is immaterial.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent is not commonly known by the <enfamilcouponssite.net> domain name for the purposes of Policy ¶4(c)(ii). Complainant has not authorized Respondent to register the disputed domain name or to utilize active or inactive websites at any domain incorporating Complainant’s ENFAMIL mark. The WHOIS information identifies the domain name registrant as “kevin moroney.” Respondent’s name is not even remotely similar to the <enfamilcouponssite.net> domain name. Respondent has failed to submit any evidence demonstrating it is commonly known by the disputed domain name. Absent any such evidence, the Panel concludes Respondent is not commonly known by the <enfamilcouponssite.net> domain name for the purposes of Policy ¶4(c)(ii). 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).
Complainant contends Respondent is not engaging in 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). Complainant claims the <enfamilcouponssite.net> domain name resolves to a website purporting to provide information regarding Complainant’s ENFAMIL-branded products, while generally discussing how one might obtain coupons for such products. Complainant argues Respondent generates a commercial gain from the operation of its website.
In fact, Respondent’s web site does not provide coupons…or even links to coupons. Therefore, this Panel need not determine if offering coupons (whether or not authorized by the owner of the mark) is 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). Respondent’s actual use of Complainant’s ENFAMIL mark to divert Internet users to Respondent’s own site for Respondent’s benefit cannot be considered 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent’s registration and use of the disputed domain name exhibits bad faith attraction for commercial gain in bad faith pursuant to Policy ¶4(b)(iv). Complainant argues Respondent’s selection of a confusingly similar domain name demonstrates intent to deceive or mislead consumers as to Complainant’s affiliation with the site, and Respondent seeks to benefit from Complainant’s mark’s goodwill garnered through increased Internet traffic. Complainant claims Respondent generates a commercial gain through the operation of its site, and the Panel assumes increased traffic will lead to a larger commercial gain for Respondent. Past panels have found bad faith where a Respondent attempts to commercially benefit from creating this type of confusion. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Respondent’s registration and use of the <enfamilcouponssite.net> domain name strongly suggests attraction for commercial gain in bad faith pursuant to Policy ¶4(b)(iv).
Complainant asserts, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the ENFAMIL mark when Respondent registered the <enfamilcouponssite.net> domain name. Complainant further argues that its use of ENFAMIL mark around the world for over 50 years, and the substantial goodwill the mark has accumulated over that time, indicate Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments about constructive knowledge, because other panels have held constructive knowledge alone is not sufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, and concludes Respondent registered the <enfamilcouponssite.net> domain name in bad faith according to Policy ¶4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶4(a)(iii).").
The argument that Respondent registered 111 other domain names means nothing because there was no allegation Respondent has prevented Complainant from registering a domain name which incorporates its mark. Complainant owns the Enfamil.com domain name, which obviously incorporates its Enfamil mark.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <enfamilcouponssite.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, September 12, 2012
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