Mead Johnson & Company, LLC v. Pawel Kalkus
Claim Number: FA1208001456661
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Pawel Kalkus (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcouponszone.com>, registered with eNom, Inc.
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 August 3, 2012; the National Arbitration Forum received payment on August 3, 2012.
On August 7, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamilcouponszone.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@enfamilcouponszone.com. Also on August 10, 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 August 28, 2012.
On September 4, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enfamilcouponszone.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.
2. Respondent does not have any rights or legitimate interests in the <enfamilcouponszone.com> domain name.
3. Respondent registered or used the <enfamilcouponszone.com> domain name in bad faith.
B. Respondent submitted a short response, in which it says it agreed with some, but not all, of Complainant’s contentions and agreed to the transfer of the domain name.
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.
Preliminary Issue: Consent to Transfer
While the Respondent has consented to transfer the domain name at issue, the Panel determines, based on the lack of any express agreement to a consent judgment by the Complainant, to proceed to a decision on the merits. As Respondent has not provided any contentions or evidence in support of maintaining the domain name, the discussion below will focus on the arguments of Complainant.
Complainant asserts that it has rights in the ENFAMIL mark, used in connection with infant and children nutrition products. Complainant provides evidence of its registrations for the ENFAMIL mark (e.g., Reg. No. 696,534 registered April 19, 1960) with the USPTO. Panels have found that registration of a mark with a federal trademark authority, regardless of the location of the parties, is evidence of rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); 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 pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <enfamilcouponszone.com> domain name is confusingly similar to the ENFAMIL mark. The Panel finds that Respondent’s addition of the generic terms “coupons” and “zone” fails to distinguish the disputed 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”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. 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). Therefore, the Panel finds that Respondent’s <enfamilcouponszone.com> 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 disputed domain name. Complainant asserts that the ENFAMIL mark has no meaning unrelated to Complainant, and Respondent has not been licensed or authorized to use the ENFAMIL mark. Additionally, the Panel notes that the WHOIS record for the <enfamilcouponszone.com> domain name lists “Pawel Kalkus” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <enfamilcouponszone.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s use of the <enfamilcouponszone.com> domain name is further evidence of Respondent’s lack of rights and legitimate interests. Complainant contends that the <enfamilcouponszone.com> domain name resolves to a website that purports to offer information regarding Complainant’s products and coupons, but instead provides links to competing and noncompeting websites. In Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the Panel held that the use of a domain name to display various links to competing and noncompeting websites is not protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <enfamilcouponszone.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent registered and uses the <enfamilcouponszone.com> domain name in bad faith. Complainant argues that Respondent has engaged in a pattern of bad faith registration and use of domain names and has prevented Complainant from reflecting the ENFAMIL mark in the <enfamilcouponszone.com> domain name. Complainant argues that Respondent has registered approximately 106 domain names, of which Complainant believes that Respondent is unlikely to be authorized to register any. Complainant notes 26 domain names that include the ENFAMIL mark that have been transferred to Complainant as a result of domain disputes. The Panel disregards Complainant’s arguments as to Respondent’s registration of other domain names as evidence is not provided showing that the domain names have be registered and used without right to do so. The Panel finds that Complainant’s acknowledgement of its ownership of at least 26 domain names unravels Complainant’s assertion that Respondent’s registration of the <enfamilcouponszone.com> domain name has prevented Complainant from reflecting the ENFAMIL mark in a domain name. However, the Panel chooses to find that Respondent’s registration of the disputed domain name prevented Complainant from registering its mark in that particular domain name and thus was done in bad faith. See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant asserts that Respondent uses the disputed domain name to create confusion and profit from the goodwill associated with the ENFAMIL mark. According to Complainant, the <enfamilcouponszone.com> domain name resolves to a website which purports to offer information regarding Complainant’s products and coupons, but instead provides links to competing and noncompeting websites. Complainant asserts that the ENFAMIL mark is incorporated into the disputed domain name and that the content of the <enfamilcouponszone.com> domain name is meant to drive traffic from Complainant’s website to Respondent’s. Additionally, Complainant asserts that Respondent is attempting to commercially profit from commissions, affiliate fees, and pay-per-click revenue as a result of Internet users’ confusion about Complainant’s association with Respondent. Previous panels have held that misleading Internet users to attract them to a disputed domain name for commercial gain indicates bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and is using the <enfamilcouponszone.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent registered the <enfamilcouponszone.com> domain name with knowledge of Complainant’s rights in the ENFAMIL mark. Complainant asserts that Respondent registered the disputed domain name in April of 2012 more than 50 years after Complainant registered its ENFAMIL mark around the world. Complainant asserts that its mark has set up considerable goodwill in the minds of consumers and that the mark is famous. 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 determines 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 established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilcouponszone.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 17, 2012
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