Mead Johnson & Company, LLC v. Entrepeneur / Zachary Hunter
Claim Number: FA1208001460361
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Entrepeneur / Zachary Hunter (“Respondent”), Phillipines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutramigenwithenfloralggs.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch 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 29, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nutramigenwithenfloralggs.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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@nutramigenwithenfloralggs.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 John J. Upchurch 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 makes the following assertions:
1. Respondent’s <nutramigenwithenfloraleggs.com> domain name is confusingly similar to Complainant’s NUTRAMIGEN and ENFLORA marks.
2. Respondent does not have any rights or legitimate interests in the <nutramigenwithenfloraleggs.com> domain name.
3. Respondent registered or used the <nutramigenwithenfloraleggs.com> domain name in bad faith.
B. 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 contends that it has rights in the NUTRAMIGEN and ENFLORA marks. Complainant asserts that it uses the marks in connection with food products, including infant formulas. Complainant states that it is the owner of USPTO trademark registrations for the NUTRAMIGEN mark (e.g., Reg. No. 397,676 registration September 15, 1942). Complainant also notes that it is the owner of a USPTO trademark registration for the ENFLORA mark (Reg. No. 3,683,974 registered September 15, 2009). Panels have found that the registration of a mark, regardless of the location of the parties, is evidence of a rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the NUTRAMIGEN and ENFLORA marks under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <nutramigenwithenfloralggs.com> domain name is confusingly similar to the NUTRAMIGEN mark. The Panel finds that Respondent’s addition of the generic terms “with” and “lggs” fails to distinguish the disputed domain name from the NUTRAMIGEN mark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel finds that Respondent’s addition of the ENFLORA mark in the domain name actually increases, rather than decreases, confusing similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). The Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <nutramigenwithenfloralggs.com> domain name is confusingly similar to the NUTRAMIGEN mark pursuant to Policy ¶ 4(a)(i).
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 contends that Respondent is not commonly known by the <nutramigenwithenfloralggs.com> domain name. Complainant asserts that Respondent is neither a licensee of Complainant nor an authorized user of Complainant’s mark. Additionally, Complainant notes that the WHOIS record for the <nutramigenwithenfloralggs.com> domain name lists “Entrepeneur / Zachary Hunter” as the domain name registrant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel held that the information relating to the connection between the respondent and the disputed domain name, including the WHOIS record, is evidence of whether the respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <nutramigenwithenfloralggs.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the <nutramigenwithenfloralggs.com> domain name is not one which provides rights or legitimate interests. According to Complainant, the disputed domain name resolves to a website that displays a variety of pay-per-click links that compete with the goods that Complainant offers. Complainant notes that these links are displayed under such headings as “baby formula & more” and “free baby food and Similac coupons.” The panel in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), held that the display of competing links on a disputed domain name removes the disputed domain name from the protective bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <nutramigenwithenfloralggs.com> 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).
Complainant asserts that Respondent registered and is using the <nutramigenwithenfloralggs.com> domain name in bad faith. According to Complainant, the disputed domain name resolves to a website that displays links that compete with Complainant’s offerings, under headings such as “free baby food and Similac coupons” and “baby formula coupon & more.” Complainant contends that Respondent receives fees for displaying these links. Therefore, the Panel finds that Respondent registered and uses the <nutramigenwithenfloralggs.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes 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 asserts that Respondent was well aware of Complainant’s rights in the NUTRAMIGEN mark when it registered the <nutramigenwithenfloralggs.com> domain name. Complainant contends that its mark has generated a great amount of goodwill and public knowledge. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nutramigenwithenfloralggs.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 10, 2012
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