national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. The Designary

Claim Number: FA1208001456662

 

PARTIES

Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA.  Respondent is The Designary (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enfamilformulacoupons.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically 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 Arbi-tration Forum that the <enfamilformulacoupons.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 Go-Daddy.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 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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 bil-ling contacts, and to postmaster@enfamilformulacoupons.com.  Also on August 8, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 Notic-es, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant produces and sells infant formula under the ENFAMIL mark.

 

Complainant owns registrations for the ENFAMIL trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 696,534, registered April 19, 1960). 

 

Respondent registered the <enfamilformulacoupons.com> domain name on March 13, 2012. 

 

Respondent’s <enfamilformulacoupons.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.

 

Respondent has not been commonly known by the disputed domain name.

 

Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the ENFAMIL mark.

 

Respondent is not authorized by Complainant to register the domain name. 

 

Respondent has neither rights to nor any legitimate interests in the contested domain name.

 

The <enfamilformulacoupons.com> domain name resolves to a website that pre-sents information regarding Complainant’s ENFAMIL formula products and pur-ports to offer coupons for purchasing those products.

 

Once an Internet user clicks on the coupon hyperlinks, a different webpage ap-pears which contains hyperlinks to websites offering products that compete with Complainant’s products or that are unrelated to Complainant’s business.

 

Respondent benefits financially from the operation of the website resolving from the contested domain name.

 

Respondent holds 90 domain names that feature the marks of various third-parties, which demonstrates bad faith registration and use of the domain name here in issue.

 

Respondent’s registration and use of the <enfamilformulacoupons.com> domain name disrupts Complainant’s business.

 

Respondent attempts to profit by creating confusion among Internet users as to the possibility of Complainant’s association with Respondent.

 

Respondent was aware of Complainant’s rights in the ENFAMIL mark when it registered the disputed domain name.

 

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 representa-tions 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 Verti-cal 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 reason-able 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.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in its ENFAMIL trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):

 

Complainant has established rights in the … mark through registration of the mark with the USPTO.

 

From our review of the record, we are persuaded that the disputed domain name <enfamilformulacoupons.com> is confusingly similar to Complainant’s ENFAMIL trademark under Policy ¶ 4(a)(i).  The domain name contains the ENFAMIL mark in its entirety, with the addition of the generic terms “formula” and “coupons,” which relate to aspects of Complainant’s business, and the generic top-level do-main (“gTLD”) “.com.”  These alterations of the mark, made in creating the do-main name, fail to dis-tinguish the disputed domain name from Complainant’s mark under the stand-ards of the Policy.  See, for example, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respond-ent’s <amextravel.com> domain name confusingly similar to a 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));  see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent has not been commonly known by the contested domain name <enfamilformulacoupons.com>, that Respondent is neither a licensee of Com-plainant nor is it otherwise authorized to use the ENFAMIL trademark, and that Respondent is not authorized by Complainant to register the domain name.  Moreover, the pertinent WHOIS information identifies the registrant of the dis-puted domain name only as “The Designary,” which does not resemble the do-main name.  On this record, we conclude that Respondent has not been com-monly known by the <enfamilformulacoupons.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names, and so had failed to show that it had rights to or legitimate interests in the domain name un-der Policy ¶ 4(c)(ii) where the relevant WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the domain names and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names).

We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <enfamilformulacoupons.com> do-main name in that the domain name resolves to a website that purports to offer information regarding Complainant’s ENFAMIL formula and coupons for purchas-ing Complainant’s products, but that, once an Internet user clicks on the coupon hyperlinks, a different webpage appears which contains hyperlinks to websites offering products that compete with Complainant’s products or that are unrelated to Complainant’s business.  We also note that Complainant alleges, again with-out objection from Respondent, that Respondent benefits financially from the op-eration of the resolving website in the manner alleged in the Complaint.  This employment of the 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).  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that a re-spondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use of a contested domain name where “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The evidence demonstrates that Respondent’s registration and use of the con-tested <enfamilformulacoupons.com> domain name, as alleged in the Complaint, disrupts Complainant’s business in bad faith within the contemplation of Policy ¶ 4(b)(iii) by directing Internet users to a website featuring links to the websites of Complainant’s commercial competitors.  See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using a website resolving from a disputed domain name to divert Internet users to a UDRP complainant’s competitors constituted bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).

 

The record also amply shows that Respondent employs a domain name which is confusingly similar to Complainant’s ENFAMIL trademark in an attempt to profit by creating confusion among Internet user as to the possibility of Complainant’s association with Respondent.  This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a re-spondent’s domain name resolved to a website offering links to third-party web-sites featuring services similar to those of a UDRP complainant).

 

Finally, it is evident that Respondent was aware of Complainant’s rights in the ENFAMIL mark when Respondent registered the disputed domain name.  This too shows that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  SeeYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a complainant's YAHOO! mark at the time of domain name registration).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

 

Accordingly, it is Ordered that the <enfamilformulacoupons.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  September 13, 2012

 

 

 

 

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