Mead Johnson & Company, LLC v. Ezekiel Sanni
Claim Number: FA1208001460351
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Ezekiel Sanni (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcouponprintable.com>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2012; the National Arbitration Forum received payment on August 29, 2012.
On August 31, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamilcouponprintable.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 September 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@enfamilcouponprintable.com. Also on September 5, 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 September 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Allegations
i. Respondent is not commonly known by the disputed domain name, as the WHOIS information identifies the domain name registrant as “Ezekiel Sanni,” which is “not even remotely similar to the Domain Name.”
ii. Respondent uses the disputed domain name primarily as a means of collecting pay-per-click revenue through its use of click-through links displayed on the resolving website.
i. Respondent’s use of the domain name to direct Internet users to competing companies causes a disruption to Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).
ii. Respondent is commercially profiting from the third-party links displayed on the resolving website by misleading Internet users as to Complainant’s affiliation with the website and content thereon.
iii. Respondent had knowledge of Complainant’s famous ENFAMIL mark prior to its registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 asserts that it uses the ENFAMIL mark in connection with its infant and child nutritional products, including the ENFAMIL brand of infant formula. Complainant submits that it owns numerous trademark registrations with the USPTO for the ENFAMIL mark (e.g., Reg. No. 696,534 registered April 19, 1960). Based upon these registrations, the Panel finds that Complainant has established rights in ENFAMIL mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Further, the Panel finds that Complainant need not own a trademark registration in Nigeria where Respondent resides in order to establish rights in the ENFAMIL mark. See 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).
Further, Complainant contends that Respondent’s <enfamilcouponprintable.com> domain name is confusingly similar to Complainant’s ENFAMIL mark, as the disputed domain name includes the ENFAMIL mark and the generic terms “coupon” and “printable. The Panel notes that a consumer may incorrectly conclude that the “coupon” referred to in the <enfamilkcouponprintable.com> domain has been authorized by Complainant. It is further noted that a prior UDRP panel concluded that a domain name containing the ENFAMIL mark with the same added terms “coupons” and “printable” was confusingly similar to the ENFAMIL mark under Policy ¶ 4(a)(i). See Mead Johnson & Co., LLC v. J Banks, FA 1373374 (Nat. Arb. Forum Mar. 30, 2011). Based on the descriptive nature of these words and prior UDRP precedent, the Panel finds that Respondent’s <enfamilcouponprintable.com> domain name is confusingly similar to Complainant’s ENFAMIL mark under Policy ¶ 4(a)(i).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the disputed domain name as the WHOIS information identifies the domain name registrant as “Ezekiel Sanni,” which Complainant notes is “not even remotely similar to the domain name.” Further, Complainant argues that Respondent has not been authorized to use the ENFAMIL mark in any way. The Panel accepts the veracity of these allegations and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Further, Complainant contends, and this Panel accepts, that Respondent’s disputed domain name resolves to a website that “purports to provide information regarding Complainant’s Enfamil products and coupons on purchasing such products.” Complainant also contends, and this Panel accepts, that Respondent uses the disputed domain name primarily as a means of collecting pay-per-click revenue through its use of click-through links displayed on the resolving website. The Panel notes that such links appear through “AdChoices” advertisements and in-text hyperlinks. The Panel finds that Respondent’s use of the disputed domain name does not amount to 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends, and this Panel infers, that Respondent had knowledge of Complainant’s long-standing and famous ENFAMIL mark prior to its registration of the disputed domain name. Thus, the Panel finds that Respondent registered the <enfamilcouponprintable.com> domain in bad faith.
Complainant further asserts that Respondent’s use of the domain name to direct Internet users to competing products and businesses causes a disruption to Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel notes that Complainant’s evidence appears to show a myriad of third-party links displayed on Respondent’s resolving website for both competing and unrelated products. Based upon this evidence, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith in order to disrupt Complainant’s business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is commercially profiting from the third-party links displayed on the resolving website by misleading Internet users as to Complainant’s affiliation with the website and content thereon. The Panel agrees that Respondent’s registration of the <enfamilcouponprintable.com> domain name creates confusion as to Complainant’s affiliation with the website. Accordingly, the Panel also finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding use of bad faith where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilcouponprintable.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 12, 2012
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