Mead Johnson & Company, LLC v. Nikki Ling
Claim Number: FA1305001497584
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Nikki Ling (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <similacvsenfamil.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <similacvsenfamil.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 May 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 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@similacvsenfamil.com. Also on May 6, 2013, 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 June 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The ENFAMIL mark is currently registered as a stand-alone mark with the U.S. Patent and Trademark Office under the following seven Registration Numbers:
1. 696,534 for ENFAMIL registered on April 19, 1960 and first used in commerce on June 19, 1959 with simulated breast milk formula in liquid and powder form for infants;
2. 800,782 for ENFAMIL registered on December 21, 1965 and first used in commerce on April 18, 1964 with feeding bottles, nipples, nipple covers, and container punches for use with specially packaged ready-to-use infant products;
3. 2,469,244 for ENFAMIL registered on July 17, 2001 and first used in commerce on June 16, 1959 with food for babies; vitamin and mineral preparations;
4. 2,487,248 for ENFAMIL registered on September 11, 2001 and first used in commerce in February 2000 with food for babies; vitamin and mineral preparations;
5. 2,532,844 for ENFAMIL registered on January 22, 2002 and first used in commerce on April 7, 2001 with electrolyte replenishment preparations;
6. 2,719,478 for ENFAMIL registered on May 27, 2003 and first used in commerce on April 28, 2000 with pediatric feeding formula; and
7. 3,758,662 for ENFAMIL registered on March 9, 2010 and first used in commerce on April 1, 2009 with infant formula.
In addition, the ENFAMIL mark is incorporated into and is the dominant feature of at least seven other federally registered trademarks, namely Registration Numbers:
1. 839,249 for ENFAMIL NURSETTE registered on November 21, 1967 and first used in commerce on March 18, 1967 with simulated breast milk formula in liquid and powder form for infants;
2. 888,345 for ENFAMIL NURSETTE registered on March 24, 1970 and first used in commerce on December 6, 1968 with infant feeding bottle and disposable nipple unit;
3. 2,173,496 for ENFAMIL AR registered on July 14, 1998 and first used in commerce on February 25, 1998 with infant foods;
4. 2,175,945 for ENFAMIL FAMILY BEGINNINGS registered on July 28, 1998 and first used in commerce in June 1995 with health care services, namely, providing information to expectant and new mothers which focuses on good health for mother and infant;
5. 2,701,509 for ENFAMIL LIPIL registered on March 25, 2003 and first used in commerce on January 31, 2002 with food for babies; vitamin and mineral preparations; dietary, nutritional and food supplements containing fatty acids, namely docosahexaenoic acid and arachidonic acid;
6. 3,795,918 for ENFAMIL PREMIUM registered on June 1, 2010 and first used in commerce in April 2009 with pediatric and infant feeding formula; vitamin and mineral preparations; dietary, nutritional and food supplements; simulated breast milk formula in liquid and powder form for infants; electrolyte replenishment preparations; formula for use in feeding infants in premeasured packets; infant foods; infant formulas for sole source nutrition or nutritional supplementation, especially infant formulas for sole source nutrition or nutritional supplementation; and
7. 3,815,298 for ENFAMIL RESTFULL LIPIL registered on July 6, 2010 and first used in commerce in July 2009 with infant formula.
Copies of Certificates of Registration for the foregoing registrations are provided as Annex C.
FACTUAL AND LEGAL GROUNDS
[a.] BACKGROUND FACTS
Complainant Mead Johnson & Company, LLC (“Mead Johnson”) is a global leader in infant and children's nutrition, best known for its Enfamil® and Enfalac® families of infant formulas.
Mead Johnson has registered the ENFAMIL mark with the U.S. Patent and Trademark Office under Registration Numbers 696,534; 800,782; 2,469,244; 2,487,248; 2532844; 2,719,478 and 3,758,662. [Annex B.] In addition, Mead Johnson holds a number of federal registrations for marks that feature ENFAMIL as the dominant component, namely Registration Numbers 839,249; 888,345; 2,173,496; 2,175,945; 2,701,509; 3,795,918; and 3,815,298.
Complainant Mead Johnson has been using the ENFAMIL trademark in the United States and around the world for more than 50 years and has invested substantially in the trademark associated with the goods and services marketed under the ENFAMIL brand name. As a result, the ENFAMIL trademarks, together with Complainant’s name and reputation, have become synonymous with quality infant nutrition products. Complainant has built up considerable goodwill in the minds of consumers in connection with the ENFAMIL trademarks and service marks.
Respondent, Nikki Ling, (“Respondent”) registered <similacvsenfamil.com> on July 4, 2012 (the “Domain Name”). Complainant has not licensed or otherwise authorized Respondent to use the ENFAMIL trademarks, or any of its other trademarks, in the Domain Name at issue, or for any other purpose.
Additionally, a Domain Tools Reverse Whois Lookup on Nikki Ling indicates that Respondent has registered at least 31 domain names other than the presently contested Domain Name, at least half of which incorporate unrelated registered trademarks all owned by different parties. (Build-A-Bear®; Shakeology®; Charmin®; Cottonelle®; Facebook®; Glade®; Good Year®; Great Clips®; Office Depot®; Purex®; Similac®; Enfamil®; Stanley Steemer®; Torrid®; Valvoline®; Wing-Stop®) It is extraordinarily unlikely that Respondent has obtained license or authorization to use any of the unrelated registered trademarks listed from their respective owners, especially where Respondent’s use of the ENFAMIL trademark has not been licensed or authorized. Furthermore, considering that the pattern of registration for most of the listed domain names incorporates a registered trademark with the generic advertising term “coupons,” it is apparent that Respondent is a typical cybersquatter.
The <similacvsenfamil.com> domain name resolves to a website at www.similacvsenfamil.com (“Website”) which purports to provide information regarding Complainant’s Enfamil® products as well as comparisons to Similac® brand products which directly complete with Complainant’s Enfamil® brand products. The Website also provides a multitude of links to Amazon.com product pages, many of which are for competitors’ products not associated with Complainant or the ENFAMIL trademarks. Clicking on these links loads in-line pages for Amazon.com products where the user apparently can purchase baby formula related products. The hyperlinks for these products indicate that these products are sold by a third-party Amazon affiliate under the handle “babylogy-20” and are not sold by an authorized Enfamil® seller. Additionally, the Website features revolving advertisements for “Free Gerber Baby Food,” “Free Huggies Samples,” and other baby-related products. Clicking on these advertisements redirects users from the page through several third-party websites to third-party promotion pages that prompts a user to enter their e-mail to participate in the reward program.
It is reasonable to infer that there is some financial incentive for Respondent to structure the Website in a way that redirects traffic to referral sites for the purposes of collecting referral fees. Despite the presentation of allegedly factual information regarding Complainant’s Enfamil® products, Complainant has no control over the content of the Website or the nature of the links and ads provided there, despite the impression created by the Website to the contrary. The Website does not provide any legitimate service, appearing to exist solely for the purpose of attracting Internet traffic looking for Complainant’s products in order to capitalize when confused visitors click on the sponsored links and ads imbedded there.
Respondent has registered the Domain Name in this case, which is confusingly similar to Complainant’s ENFAMIL mark, and has used it to create confusion and profit from the goodwill associated with the ENFAMIL mark. In the process Respondent has prevented Complainant from registering the Domain Name in question, in which it has rights. Complainant thus contends that: (1) Respondent has registered Domain Name which is confusingly similar to the ENFAMIL mark in which Complainant has rights, (2) Respondent has no rights or legitimate interests in the Domain Name, and (3) Respondent has registered and is using the Domain Name in bad faith.
[b.] EACH DOMAIN NAME IS CONFUSINGLY SIMILAR TO A MARK IN WHICH COMPLAINANT HAS RIGHTS.
Complainant has rights in the ENFAMIL marks, including incontestable trademark rights pursuant to 15 U.S.C. §1065 under the following federal trademark registration numbers:
That Complainant has rights in the ENFAMIL mark is thus not in question. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)); 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)”).
Respondent’s <similacvsenfamil.com> Domain Name contains the third-party-registered SIMILAC trademark, the generic term “vs,” Complainant’s ENFAMIL mark in its entirety, and the generic top-level domain (“gTLD”) “.com.” As a general proposition, where a domain name incorporates a mark in its entirety, adding a gTLD does not negate a finding of confusing similarity, (Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding the addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i))), nor does the addition of a generic or descriptive word (American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i))). Furthermore, the inclusion of a third-party trademark “may lead to confusion to any consumer accessing the web site.” F. Hoffmann-La Roche v. Max Lucky, D2011-0218 (WIPO Apr. 18, 2011) (finding the domain names <valiumvsclonazepam.com> and <valiumxanax.com> to be confusingly similar to Complainant’s VALIUM trademark). By the same token, the same alterations cannot serve in the present case to distinguish Respondent’s <similacvsenfamil.com> Domain Name from Complainant’s ENFAMIL mark under Policy ¶4(a)(i).
In light of the foregoing, Complainant respectfully submits that this Panel should find that ICANN Policy ¶4(a)(i) has been satisfied because the Domain Name is confusingly similar to Complainant’s ENFAMIL trademark and service mark.
[c.] RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN THE DOMAIN NAMES.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the ENFAMIL mark or any of Complainant’s other marks. Accordingly, Respondent is not authorized by Complainant to register the Domain Name, nor is it authorized to utilize active or inactive websites at any domain incorporating Complainant’s ENFAMIL mark. Nor can Respondent establish rights or legitimate interests under any of the scenarios described in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
First, Respondent cannot possibly contend under Policy ¶4(c)(ii) that it is commonly known by or identified with the Domain Name. ENFAMIL is an invented word that has no meaning other than to serve as a source identifier for Complainant, as well as the products it manufactures and sells. Respondent’s name, Nikki Ling, is not even remotely similar to the Domain Name. See ICANN Policy ¶4(c)(ii); Seiko Epson Corp. v. Price-less Inkjet Cartridge Co., FA 096849 (Nat. Arb. Forum May 2, 2001), citing, inter alia, Compagnie de Saint Gobain v. Com-Union Corp., D200-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or for permission from Complainant to use the trademarked name); Gallup, Inc. v. Amish Country Store, FA 096209 (Nat. Arb. Forum Jan. 23, 2001) (same).
Respondent likewise cannot argue rights or legitimate interests arising through bona fide offering or fair use under Policy ¶¶4(c)(i) or (iii), respectively. Respondent uses the Domain Name primarily as means of collecting pay-per-click or affiliate revenue derived when confused visitors looking for information about Complainant’s Enfamil® products errantly visit the Respondent’s websites and click on any of the scores of links and ads featured there. Use of the disputed Domain Name in this manner is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial fair use under Policy ¶4(c)(iii); see also Meyerson v. Speedy Web, FA 96049 (Nat. Arb. Forum May 25, 2007) (holding use of a domain name to display various links to competing and noncompeting websites is not protected by Policy ¶¶4(c)(i) and 4(c)(iii)).
Furthermore, Respondent cannot contend that the use of Complainant’s ENFAMIL trademark is a nominative fair use. Although Respondent offers a comparative description of Complainant’s Enfamil® products to Complainant’s competitor’s Similac® products, Respondent has no relationship with Complainant and is not authorized in any manner to sell or represent Complainant’s products. At no point on Respondent’s Website does Respondent disclaim any relationship with Complainant. While Respondent does offer in-line links to Enfamil® products for sale, it also offers side-by-side links to competing Similac® products for sale as well as links to alleged sweepstakes for other baby-related products such as Gerber® baby food and Pampers® diapers. It is unclear whether Respondent is selling Enfamil® and Similac® products through Respondent’s own Amazon.com account or is merely linking to a third party and collecting referral fees. Previous panels have found that where it is unclear if Respondent’s website is using Complainant’s allegedly infringing mark to sell Complainant’s product or is in fact merely using the mark to attract users seeking Complainant’s products and then profiting from the traffic in some other manner, Respondent’s use of the domain name extends well beyond nominative fair use. See Steveland Morris a/k/a Stevie Wonder v. Enrique Matta, FA 1889962 (Nat. Arb. Forum Jul. 9, 2008) (holding that Respondent’s use of the domain name <steviewondertickets.com> which promotes both Complainant’s concert tickets and enables access to search for other concert tickets has no rights or legitimate interests and cannot claim nominative fair use).
According to the standard set forth by the Oki Data UDRP panel, an authorized distributor can only claim a bona fide offering of goods or services when: 1) the Respondent is actually offering the goods or services at issue; 2) Respondent use the site to sell only the trademarked goods; 3) Respondent accurately discloses the registrant's relationship with the trademark owner; and 4) Respondent does not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Oki Data Americas Inc. v. ASD, Inc. D2001-0903 (WIPO Nov. 6, 2001); Xerox Corporation v. Primeroprint / Simon Naylor, FA 1448783 (Nat. Arb. Forum Jul. 25, 2012). A majority of UDRP panels have adopted the Oki Data factors as the appropriate standard for authorized distributor cases, and some panels have applied the standards to unauthorized distributor cases as well. See, e.g. Volvo Trading Holding AB v. Auto Shivuk, D2005-0447 (WIPO Jun. 8, 2005) (“The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels. . . and have also been applied in cases where there was no contractual relationship between the complainant and the respondent. . . . [T]he Oki Data criteria are appropriate to be applied in cases, as the present case, where the complainant has not authorized the respondent to act as its distributor or and [sic] there is no contractual relationship between the complainant and the respondent.”)
If the Oki Data standards were to be applied to this case, Respondent would fail to meet the second and third factors. Respondent does not use the site to promote only the trademarked goods, as Respondent also links to pages that sell Complainant’s competitor’s products as well. Use of Complainant’s mark in the Domain Name to sell both Complainant’s and Complainant’s competitor’s products is not a legitimate interest. See, e.g. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (“On the facts of this case, it is clear that, under either approach, Respondent lacks a legitimate interest. . . because Respondent appears to have used at least the <nikoncamera.com> domain name to sell both Nikon products and goods of other manufacturers who compete directly against Nikon.”) Nor does Respondent accurately disclose the relationship, or lack thereof, with Complainant by disclaiming anywhere on the website any affiliation with Complainant. See, e.g. Adidas AG v. Paolo Luppi, D2008-1334 (Nat. Arb. Forum Oct. 17, 2008) (holding use of Complainant’s logo without accurately disclosing the registrant’s relationship, or lack thereof, is not consistent with a bona fide offering of goods or services and is therefore not a legitimate, noncommercial or fair use of the Domain Name.) Because Respondent fails two of the four Oki Data factors, and because Respondent improperly profits by misusing Complainant’s mark to attract Complainant’s customers and potentially sell to them competing products, Respondent cannot argue a bona fide or fair use of Complainant’s mark.
Complainant respectfully submits that it has met its initial burden under ICANN Policy ¶4(a)(ii), having established that Respondent is not commonly known by the name ENFAMIL, is not engaged in a bona fide commercial use or a non-commercial fair use of Complainant’s mark, and that Complainant has not in any manner authorized Respondent to use its mark. Citigroup Inc. v. Citilend Mortgage Company, FA1233601 (Nat. Arb. Forum Dec. 1, 2008); Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). This Panel should therefore find that ICANN Policy ¶4(a)(ii) has been satisfied because the Respondent has no rights or legitimate interests in the Domain Name at issue.
[d.] RESPONDENT HAS REGISTERED AND IS USING THE DOMAIN NAMES IN BAD FAITH.
Respondent has demonstrated actual knowledge of Complainant’s trademarks, as the Website features a multitude of links advertising Enfamil® products and images of Complainant’s products which prominently feature the ENFAMIL trademarks. The ENFAMIL trademarks are registered under multiple registrations, and there is no trademark or service mark registered or used by third parties that is similar to the ENFAMIL mark. Respondent has indicated that the Website’s use of the ENFAMIL mark is solely for the purpose of identifying and selling or linking to pages that sell Complainant’s Enfamil® baby formula products and similarly competing products. Respondent has used the Domain Name to attract users looking for Enfamil® products or information about such products and then advertise to them both unauthorized Enfamil® products for sale as well as Complainant’s competitor’s Similac® products for sale. Use of the Domain Name in this manner constitutes bad faith use. See Textron Innovations, Inc. v. Apple International Inc. Ltd / Richard Harper, FA 1466330 (Nat. Arb. Forum Dec. 28, 2012) (holding that registration and use of a domain name incorporating Complainant’s trademark to sell both Complainant’s products and unrelated or competing products creates a likelihood of confusion and constitutes bad faith registration and use); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name).
Furthermore, Respondent’s bad faith is clearly established by the mere offering of or linking to offers of products that compete with Complainant’s goods. “By linking to competing sellers of Complainant’s products, Respondent is disrupting Complainant’s business, demonstrating bad faith registration and use according to Policy ¶4(b)(iii).” Victoria's Secret Stores Brand Management, Inc. v. Speedeenames.com c/o Troy Rushton, FA 1325862 (Nat. Arb. Forum June 25, 2010). See also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy 4(b)(iii)).
Respondent appropriated Complainant’s ENFAMIL mark in the <similacvsenfamil.com> Domain Name and, by all appearances, designed resolving websites around the ENFAMIL mark as a keyword in order to increase traffic to Respondent’s websites. Respondent’s resolving websites were thus designed to commercially profit Respondent through commissions, affiliate fees, pay-per-click revenue, or profit from third-party sales as a result of Internet users’ confusion about Complainant’s presence and association with Respondent. Prior panels have found that this very conduct—misleading Internet users to attract them to Respondent’s own website for commercial gain—indicates bad faith registration and use pursuant to Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Finally, Respondent has registered at least 18 domain names that incorporate unrelated trademarks. It is exceptionally unlikely that Respondent has obtained license or authorization to use any of the registered trademarks listed from their respective owners. Respondent has clearly not obtained license or authorization to use Complainant’s ENFAMIL mark. Considering that the pattern of registration for most of the listed domain names combines a registered trademark with the generic advertising term and gTLD “-coupons.com” or some insubstantial variation thereof, it is readily apparent that Respondent is a typical cybersquatter and has similarly registered the <similacvsenfamil.com> Domain Name in bad faith. See Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered a number of domain names that correspond to different well-known trademarks, evidence of a pattern of bad-faith registration exists).
Based on the circumstances described above, it can only be inferred that Respondent registered the Domain Name, which is confusingly similar to Complainant’s ENFAMIL mark, for the purpose of preventing Complainant from itself registering the Domain Name in question, to disrupt Complainant’s business by diverting traffic away from authorized channels, and to commercially benefit from the goodwill associated with Complainant’s ENFAMIL mark. This conduct constitutes bad faith under Policy ¶¶4(b)(ii), (iii) and (iv) and meets the showing required under Policy ¶4(a)(iii).
Accordingly, Complainant respectfully submits this Panel should find that ICANN Policy ¶4(a)(iii) is satisfied because Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and is not being used in bad faith.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 a series of emails sent to the Forum, Respondent inquired about transferring the <similacvsenfamil.com> domain name to Complainant. The Forum does not give advice to the parties in a UDRP proceeding. Complainant does not appear to have ever accepted or even responded to Respondent’s offer (or, if it did, it didn’t copy the Forum, which is perfectly possible). Respondent clearly did not know how to respond to a UDRP proceeding and was concerned about the possibility of having damages assessed against Respondent.
The Panel does not believe the correspondence actually amounted to an agreement to transfer, although Respondent certainly seemed to offer to transfer the disputed domain name.
In view of Respondent's failure to submit a formal 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 Mead Johnson & Company, LLC claims it is a global leader in infant and children’s nutrition, best known for its ENFAMIL and “Enfalac” families of infant formulas. Complainant is the owner of trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the ENFAMIL mark (e.g., Reg. No. 696,534 registered April 19, 1960). Policy ¶4(a)(i) does not require Complainant register its mark in the country in which Respondent operates (apparently Singapore), so long as Complainant can demonstrate rights in the mark in some jurisdiction. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant’s registration of the ENFAMIL mark with the USPTO sufficiently establishes its rights in the mark pursuant to 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.”).
Complainant claims Respondent’s <similacvsenfamil.com> domain name contains Complainant’s ENFAMIL mark in its entirety, combined with the third-party-registered “SIMILAC” trademark and the generic term “vs.” Starting with the easy part, the gTLD “.com” of the disputed domain name must be ignored for the purposes of a Policy ¶4(a)(i) analysis. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark).
The more difficult analysis is whether adding a third party’s mark to the disputed domain name sufficiently differentiates it from Complainant’s mark so the two aren’t confused. In this case, there was no actual evidence of confusion. It would seem clear the Similac brand is different from the Enfamil brand. They are owned by different companies. Complainant’s mark is the second of two marks in the disputed domain name. The disputed domain name suggests the two brands are going to be compared (and they actually are compared). In light of the evidence in this case, combining Complainant’s mark with a third party’s mark does not make the disputed domain name confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) not satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent it is not commonly known by or identified with the domain name. ENFAMIL is an invented word that has no meaning other than to serve as a source identifier for Complainant, as well as the products it manufactures and sells (which means it is entitled to highest level of trademark protection). The WHOIS information for the disputed domain name identifies “Nikki Ling” as the registrant. Respondent’s name, Nikki Ling, is not even remotely similar to the domain name. Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the ENFAMIL mark or any of Complainant’s other marks. It seems clear Respondent is not commonly known by the disputed domain name pursuant to 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).
Respondent’s <similacvsenfamil.com> domain name resolves to a website which purports to provide information regarding Complainant’s ENFAMIL products as well as comparisons to “Similac” brand products. This amounts to a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii), as would the registration of a <enfamilSUCKS.com> domain name.
The Panel finds Policy ¶4(a)(ii) not satisfied.
Complainant claims Respondent has registered at least 18 domain names that incorporate unrelated trademarks. A “Domain Tools” reverse WHOIS lookup on “Nikki Ling” indicates Respondent has registered at least 31 domain names other than the presently contested domain name, at least half of which incorporate unrelated registered trademarks all owned by different parties. The fact Respondent had made so many registrations is peculiar. Complainant did not provide any detailed information on these registrations to the Panel. Perhaps this could all be explained. Perhaps Respondent has registered a number of “comparison type” domain names, as Respondent did in this case. The Panel was not provided with a list of the domain names. Complainant has not claimed Complainant is unable to register a domain name to reflect Complainant’s mark. Complainant has failed to meet its burden of proof on this point.
Complainant argues Respondent is disrupting Complainant’s business. Complainant claims Respondent is offering and linking to offers or products that compete with Complainant’s goods. This Panel does not accept this simplified answer. Respondent compares the two brands. It seems to be logical and fair Respondent would then link to various web sites relating to each of the two brands. It is perfectly possible Respondent could receive click to pay revenue, but this Panel does not believe this amounts to bad faith registration and use. The fact some consumer will chose the Similac brand over the Enfamil is the inevitable result of a comparison site.
The Panel finds Policy ¶4(a)(iii) not satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <similacvsenfamil.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, June 14, 2013
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