Mead Johnson & Company, LLC v. WhoisGuard / WhoisGuard Protected
Claim Number: FA1208001460352
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is WhoisGuard / WhoisGuard Protected (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamil-lipil.com>, registered with Namecheap.com.
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.
Hon. Karl V. Fink (Ret.), 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 30, 2012, Namecheap.com confirmed by e-mail to the National Arbitration Forum that the <enfamil-lipil.com> domain name is registered with Namecheap.com and that Respondent is the current registrant of the name. Namecheap.com has verified that Respondent is bound by the Namecheap.com 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 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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-lipil.com. Also on September 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.
On September 12, 2012 the Forum received an email from Respondent. The email was not in compliance with ICANN Rule #5(a) and/or the Annex to the Supplemental Rules and was not considered by the Panel.
Having received no compliant response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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
A. Complainant Alleges:
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ENFAMIL mark (Reg. No. 2,719,478 registered May 27, 2003).
2. Complainant has built up goodwill in the minds of consumers in correlation with the ENFAMIL mark.
3. Respondent registered the <enfamil-lipil.com> domain name on December 19, 2011.
4. Complainant has not authorized Respondent to use its ENFAMIL mark in any way.
5. Respondent’s <enfamil-lipil.com> domain name resolves to a website that provides information regarding Complainant’s products and features links resolving to Amazon.com sites offering Complainant’s products for sale.
6. Respondent’s <enfamil-lipil.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.
7. Respondent has no rights or legitimate interests in the <enfamil-lipil.com> domain name.
8. Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the panel finds Complainant is entitled to the relief requested.
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.
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 its rights in the ENFAMIL mark by submitting proof of its registrations with the USPTO:
Reg. No. 696,534 registered April 19, 1960;
Reg. No. 800,782 registered December 21, 1965.
Reg. No. 2,469,244 registered July 17, 2001;
Reg. No. 2,487,248 registered September 11, 2001;
Reg. No. 2,532,844 registered January 22, 2002;
Reg. No. 2,719,478 registered May 27, 2003;
Reg. No. 3,758,662 registered March 9, 2012;
Previously, panels have found that registration with the USPTO or other government trademark offices demonstrates rights in a given mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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).”). Based on these registrations, the Panel finds that Complainant has rights in the ENFAMIL mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <enfamil-lipil.com> domain name is confusingly similar to Complainant’s ENFAMIL mark. Complainant states that adding the generic top-level domain (“gTLD”) “.com” does not negate a finding of confusingly similar. Complainant also argues that Respondent’s <enfamil-lipil.com> domain name incorporates Complainant’s ENFAMIL mark in its entirety with the addition of a hyphen and the term “lipil.” Traditionally these variations have not been found sufficient to differentiate a disputed domain name from a registered mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel finds that Respondent’s <enfamil-lipil.com> disputed domain name is confusingly similar to Complainant’s ENFAMIL mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 claims that Respondent is not commonly known by the <enfamil-lipil.com> disputed domain name under Policy ¶ 4(c)(ii). Complainant states that ENFAMIL is a word invented to identify Complainant’s company and products. Complainant also argues that according to Respondent’s WHOIS information, Registrant’s name is “WhoisGuard,” which relates in no way to either Complainant’s business or its products. Complainant further argues that Respondent is not authorized to use Complainant’s mark in any way. The Panel determines that Respondent is not commonly known by the <enfamil-lipil.com> domain name or Complainant’s ENFAMIL mark under 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent is not using the <enfamil-lipil.com> domain name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i) and ¶ 4(c)(ii). Complainant asserts that Respondent is using the <enfamil-lipil.com> domain name to collect pay-per-click fees collected when Internet users visit Respondent’s website searching for Complainant’s products and click on the advertisements featured on the page. The Panel notes that some of the featured advertisements include, “amazon.com,” “Enfamil Nutramigen,” “Enfamil Premium Lipil,” “Nutramigen Lipil,” and “Enfamil Lipil Free Shipping.” Previous panels have found that using a confusingly similar domain name to profit from links for third parties competing with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user). Based on Complainant’s contentions and previous UDRP cases, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for third-party websites does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent demonstrates bad faith in accordance with Policy ¶ 4(b)(iv). Complainant claims that Respondent designed its <enfamil-lipil.com> website around Complainant’s ENFAMIL mark in order to increase Internet traffic to Respondent’s website. Complainant also claims that the <enfamil-lipil.com> disputed domain name aims at confusing Internet users as to Complainant’s relationship and association with Respondent’s website. Complainant further asserts that Respondent is commercially profiting through commissions and pay-per-click revenue from links featured on the resolving website owned by Respondent. Previous panels have found that similar facts indicated bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel finds that misleading Internet users and attracting them to Respondent’s website for commercial gain, through the use of a confusingly similar domain name, suggests bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that, 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 disputed domain name. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence to support a finding 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 finds that Respondent had actual knowledge and concludes that Respondent registered the <dixiecup.com> 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).")."
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamil-lipil.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 8, 2012
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