Mead Johnson & Company, LLC v. WhoisGuard / WhoisGuard Protected
Claim Number: FA1208001460353
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 <enfamillipillgg.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 <enfamillipillgg.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 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@enfamillipillgg.com. Also on September 4, 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 October 1, 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 issues 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.
i. The addition of the term “LGG,” which Complainant uses in association with its products, and the generic top-level domain (“gTLD”) “.com” fail to properly distinguish the disputed domain name.
i. Respondent is not a licensee of Complainant and is not authorized to use Complainant’s ENFAMIL and LIPIL marks.
ii. The WHOIS information lists “WhoisGuard / WhoisGuard Protected” as the registrant of the disputed domain name.
i. Respondent uses the <enfamillipillgg.com> domain name to resolve to a website that purports to offer information about Complainant’s products, but instead provides multiple hyperlinks to <amazon.com> product pages, some of which offer competing products.
i. Respondent is diverting Complainant’s potential customers to <amazon.com> product pages that sell competing products.
i. Respondent commercially benefits from click-through fees associated with the competing hyperlinks.
ii. Respondent’s use of Complainant’s ENFAMIL LIPIL mark in the disputed domain name creates confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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 contends that it owns a trademark registration for the ENFAMIL LIPIL mark with the USPTO (e.g., Reg. No. 2,701,509 registered March 25, 2003). Complainant claims it uses the mark in connection with infant and children’s nutrition products. The Panel finds that Complainant’s trademark registrations sufficiently demonstrate Complainant’s rights in the ENFAMIL LIPIL mark under Policy ¶ 4(a)(i). 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).
Complainant claims that Respondent’s <enfamillipillgg.com> domain name is confusingly similar to Complainant’s ENFAMIL LIPIL mark. Complainant argues that Respondent simply added the term “LGG,” which Complainant alleges it uses in association with its products, and the gTLD “.com” to Complainant’s ENFAMIL LIPIL mark. Complainant contends that these additions fail to properly distinguish the disputed domain name from Complainant’s mark. The Panel agrees with Complainant. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel notes that the disputed domain name does not contain the space found in Complainant’s mark. The Panel determines that the removal of a space is not relevant to a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Consequently, the Panel concludes that Respondent’s <enfamillipillgg.com> domain name is confusingly similar to Complainant’s ENFAMIL LIPIL 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 asserts that Respondent is not commonly known by the <enfamillipillgg.com> domain name. Complainant claims that Respondent is not a licensee of Complainant and is not authorized to use Complainant’s ENFAMIL, LIPIL, or ENFAMIL LIPIL marks. Complainant further notes that the WHOIS information lists “WhoisGuard / WhoisGuard Protected” as the registrant of the disputed domain name, which the Panel determines is not similar to the domain name. Based on this evidence and the lack of a Response, the Panel holds that Respondent is not commonly known by the <enfamillipillgg.com> domain name for the purpose 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 avers that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant accuses Respondent of using the <enfamillipillgg.com> domain name to resolve to a website that purports to offer information about Complainant’s products, but instead provides multiple hyperlinks to <amazon.com> product pages, some of which offer competing products. The Panel notes that the resolving website does contain information about Complainant’s products and does also contain hyperlinks on the right side of the webpage. The Panel agrees with Complainant that Respondent’s use of the <enfamillipillgg.com> domain name to provide competing hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant has proven this element.
Complainant alleges that Respondent’s registration and use of the <enfamillipillgg.com> domain name disrupts Complainant’s business. Complainant contends that Respondent is diverting Complainant’s potential customers to <amazon.com> product pages that sell competing products. According to these contentions and Complainant’s screenshot, the Panel determines that Respondent’s registration and use of the <enfamillipillgg.com> domain name disrupts Complainant’s business, constituting bad faith registration and use according to Policy ¶ 4(b)(iii). 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 additionally argues that Respondent registered and uses the <enfamillipillgg.com> domain name for the purpose of commercially gaining by creating Internet user confusion as to Complainant’s presence and association with Respondent. Complainant asserts that Respondent commercially benefits from click-through fees associated with the competing hyperlinks. Complainant also avers that Respondent’s use of Complainant’s ENFAMIL LIPIL mark in the disputed domain name creates confusion. The Panel finds that Respondent is commercially benefiting from Internet user confusion as to Complainant’s affiliation with the disputed domain name. The Panel concludes that Respondent registered and uses the <enfamillipillgg.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) 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).
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 <enfamillipillgg.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 2, 2012
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