Mead Johnson & Company, LLC v. Neil Playfoot
Claim Number: FA1309001521726
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Neil Playfoot (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilprosobee.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2013; the National Arbitration Forum received payment on September 27, 2013.
On September 27, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamilprosobee.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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@enfamilprosobee.com. Also on September 30, 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.
A timely Response was received and determined to be complete on October 2, 2013.
On October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that it owns trademark rights in the word ENFAMIL and the word PROSOBEE. The Complainant also contends that the disputed domain name <enfamilprosobee.com> is confusingly similar to its ENFAMIL and PROSOBEE trademarks.
Complainant maintains that Respondent has no rights or legitimate interest in<enfamilprosobee.com>. Complainant notes that Respondent has not been commonly known as <enfamilprosobee.com> and that Respondent owns no trademark for “Enfamil” or “Prosobee.” Complainant also argues that Respondent is acting in bad faith, because “Respondent registered and is using Complainant’s trademarks without permission at a site that is unauthorized by Complainant.” The website corresponding to <enfamilprosobee.com> sometimes directs a computer user to information about the products of Complainant’s competitors.
B. Respondent
Respondent states that the <enfamilprosobee.com> domain name “was set up for [Respondent] and the company created the content.” Evidently, Respondent takes the position that he is not responsible for the site’s content because it was created by another entity. The Respondent also states that the company that set up the domain name “claimed to have done their due diligence” and that <enfamilprosobee.com> “was supposed to give [Respondent] a residual income.”
Respondent expressly consents to the transfer of the <enfamilprosobee.com> domain name to Complainant. Respondent states, “I would like them (complainants) to refund me the administration fee of US $50 that I had to pay due to this case. Which didn’t need to happen. (I know this is highly unlikely.)”
Complainant owns several U.S. trademark registrations for ENFAMIL and PROSOBEE. The ENFAMIL registrations are for both the word ENFAMIL standing alone, as well as the word ENFAMIL combined with another word. For example, Complainant’s registration for ENFAMIL NURSETTE claims a first use date of 1967 (U.S. Reg. No. 839,249, dated November 21, 1967). Complainant’s registration for PROSOBEE claims a 1965 date of first use (U.S. Reg. No. 806,458, dated March 29, 1966).
Respondent does not contest Complainant’s assertion that it has used the ENFAMIL and PROSOBEE trademarks for many decades, and does not contest Complainant’s rights in these trademarks. Respondent also does not contest that the disputed domain name is confusingly similar to the ENFAMIL and PROSOBEE trademarks.
Respondent registered the <enfamilprosobee.com> domain name on January 27, 2013.
As of the date of the Complaint, Respondent’s <enfamilprosobee.com> website featured an image of a can of ENFAMIL PROSOBEE infant formula, next to promotional text explaining the product’s benefits. Respondent’s site links to a $5 off coupon that was not sponsored or affiliated with Complainant. In addition, Respondent’s site links to another website that contains information about Similac infant formula, which is sold by one of Complainant’s competitors.
Respondent consents to transfer of the domain name to Complainant. Although Respondent states that it would be nice for Complainant to reimburse Respondent’s $50 fee, Respondent does not require such a payment as a condition for Respondent’s transfer of the domain name to Complainant.
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.
Complainant has been using its registered trademarks ENFAMIL and PROSOBEE for about 50 years. Complainant has rights in both the ENFAMIL and PROSOBEE marks through its U.S. registrations. The disputed domain name combines two of Complainant’s trademarks and is confusingly similar to Complainant’s trademarks. See Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION TRAINING marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com”). Respondent makes no contentions with respect to this issue.
The Panel concludes that Complainant has satisfied the requirements of Policy
¶ 4(a)(i).
Respondent, “Neil Playfoot,” is not commonly known by the <enfamilprosobee.com> domain name, and Complainant has not licensed or authorized Respondent to use the ENFAMIL and PROSOBEE marks. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that respondent was not commonly known by the domain name and lacks rights or legitimate interests).
Respondent does not allege any rights or legitimate interests in the domain name, other than to say that the domain name “was supposed to give [Respondent] a residual income.” However, Respondent’s anticipated income is evidently generated by pay-per-click revenue from the links and advertisements featured on the <enfamilprosobee.com> website. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003); see also ALPITOUR S.p.A. v. balata inc. FA 888649 (Nat. Arb. Forum Feb. 27, 2007).
The Panel concludes that Complainant has satisfied the requirements of Policy
¶ 4(a)(ii).
The <enfamilprosobee.com> site contains several links for the “Enfamil” product and for other baby-related products. Some links redirect internet users to websites selling or promoting coupons for Complainant’s products, or to pages giving information about a competitor of Complainant.
Respondent’s website and activities disrupt Complainant’s business, as these activities constitute bad faith. Previous panels have found that using a disputed domain name to resolve to a website featuring links and advertisements that compete with complainant, disrupts a complainant’s business and constitutes bad faith. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith).
Respondent presents no defense on the issue of bad faith.
The Panel concludes that Complainant has satisfied the requirements of Policy
¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilprosobee.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: October 16, 2013
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