national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. Community Maker

Claim Number: FA1208001460357

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nutramigencoupons.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 known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

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 <nutramigencoupons.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@nutramigencoupons.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 Bruce E. Meyerson 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for the NUTRAMIGEN mark (e.g., Reg. No. 397,676 registered September 15, 1942).
    2. Complainant uses the NUTRAMIGEN mark in connection with its infant and child nutritional products, including the NUTRAMIGEN brand of infant formula.
    3. Respondent, Community Maker, registered the <nutramigencoupons.com> domain name on April 17, 2012.
    4. Respondent’s disputed domain name resolves to a website that purports to provide information regarding Complainant’s NUTRAMIGEN products and coupons for such products.
    5. Respondent’s website contains many third-party links to “coupon” websites for infant formula and baby formula coupons.  Clicking on these links brings Internet users to more links, some of which feature Complainant’s competitors’ products.
    6. Respondent’s <nutramigencoupons.com> domain name is confusingly similar to Complainant’s NUTRAMIGEN mark as the disputed domain name includes the NUTRAMIGEN mark and adds the generic term “coupons,” as well as the generic top-level domain (“gTLD”) “.com.” 
    7. Respondent has no rights or legitimate interests in the disputed domain name.  Respondent is not commonly known by the disputed domain name as the WHOIS information identifies the domain name registrant as “Community Maker,” which is “not even remotely similar to the Domain Name.” 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 and the other advertisements featured on the website.
    8. Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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). 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. Respondent had knowledge of Complainant’s famous NUTRAMIGEN mark prior to its registration of the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the NUTRAMIGEN mark. Respondent’s domain name is confusingly similar to Complainant’s mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <nutramigencoupons.com> domain name, and that Respondent registered and uses the domain name 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:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant asserts that it uses the NUTRAMIGEN mark in connection with its infant and child nutritional products, including the NUTRAMIGEN brand of infant formula.  Complainant submits that it owns numerous trademark registrations with the USPTO for the NUTRAMIGEN mark (e.g., Reg. No. 397,676 registered September 15, 1942).  The Complainant need not own a trademark registration in Denmark, where Respondent resides, in order to establish rights in the NUTRAMIGEN 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). Based upon these registrations, the Panel finds that Complainant has established rights in the NUTRAMIGEN 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, Complainant argues that Respondent’s <nutramigencoupons.com> domain name is confusingly similar to Complainant’s NUTRAMIGEN mark as the disputed domain name includes the NUTRAMIGEN mark and the generic term “coupons,” as well as the gTLD “.com.”  The addition of the term “coupons” and a gTLD does not remove the disputed domain name from the realm of confusing similarity.  See Bath & Body Works Brand Mgmt., Inc. v. Namecheap, FA 1340802 (Nat. Arb. Forum Sept. 30, 2010), (finding that adding the generic term “coupons” and a gTLD “d[id] not sufficiently distinguish the disputed domain name from Complainant’s mark.”).    Based on this prior precedent, the Panel finds that Respondent’s <nutramigencoupons.com> domain name is confusingly similar to Complainant’s NUTRAMIGEN mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant argues that Respondent is not commonly known by the disputed domain name as the WHOIS information identifies the domain name registrant as “Community Maker,” which Complainant alleges is “not even remotely similar to the Domain Name.”  Further, Complainant argues that Respondent has not been authorized to use the NUTRAMIGEN mark in any way.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Further, Complainant asserts that Respondent’s disputed domain name resolves to a website that contains many third-party links to “coupon” websites for infant formula and baby formula coupons.  Complainant contends that clicking on these links brings an Internet user to more links, some of which feature Complainant’s competitors’ products.  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 is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the disputed domain name to direct Internet users to competing products and businesses disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).  Complainant argues that “most of the links on the websites [sic] redirect Complainant’s potential customers to websites selling or promoting other products.  In clicking on some of the links, a user can be directed to competing baby formula products.”  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 determines that Respondent has registered and is using the disputed domain name in bad faith in order to disrupt Complainant’s business.  Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under 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 argues 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. Therefore, the Panel 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 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 also argues that Respondent had knowledge of Complainant’s famous NUTRAMIGEN mark prior to Respondent’s registration of the disputed domain name.  Complainant notes its long standing use of the NUTRAMIGEN mark and its trademark registrations with the USPTO as proof that Respondent undoubtedly had actual knowledge of Complainant’s rights in the NUTRAMIGEN mark.  The Panel agrees and 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").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

Bruce E. Meyerson, Panelist

Dated:  October 4, 2012

 

 

 

 

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