Mead Johnson & Company, LLC v. Anthony Jansen
Claim Number: FA1309001521729
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Anthony Jansen (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilinfantformula.com>, registered with GoDaddy.com, LLC.
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.
Richard DiSalle 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 <enfamilinfantformula.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@enfamilinfantformula.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 21, 2013.
On October 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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
Policy ¶ 4(a)(i)
Complainant uses its ENFAMIL mark in connection with milk formula for infants and babies. Complainant has registered the ENFAMIL mark with the United States Patent and Trademark Office ("USPTO") (i.e., 696,534, registered on April 19, 1960).
Respondent’s <enfamilinfantformula.com> domain name contains the entire ENFAMIL mark along with the product-descriptive phrase “infant formula.” The generic top-level domain (“gTLD”) “.com” is not a relevant addition.
Respondent registered the <enfamilinfantformula.com> domain name on March 11, 2013.
Policy ¶ 4(a)(ii)
Respondent is not known as this <enfamilinfantformula.com> domain name, but is actually “Anthony Jansen.” Complainant has not licensed, authorized, or approved of Respondent’s usage of the ENFAMIL mark in domain names.
Respondent’s use for the domain name is to promote ENFAMIL products and Respondent offers hyperlinks that purport to be for Complainant’s ENFAMIL goods. Internet users who seek out these coupons are taken to websites wherein an array of goods, including competing SIMILAC goods are promoted. Respondent is most likely profiting from this domain name each time an Internet user clicks on the advertisements and “coupons.”
Moreover, confused Internet users may see the information on the <enfamilinfantformula.com> domain name’s website and believe that it is authored by Complainant, when in fact Complainant cannot vouch for the accuracy of Respondent’s explanation of ENFAMIL products.
Policy ¶ 4(a)(iii)
Respondent is disrupting Complainant’s business by using the <enfamilinfantformula.com> domain name to promote competing SIMILAC products.
Respondent’s decision to use Complainant’s mark in the domain name, throughout the website, and in Respondent’s detailed description of ENFAMIL goods, illustrates an attempt to confuse Internet users into believing that they must be visiting a website that is official, and/or affiliated with Complainant. In reality, the Internet user is taken to a “coupon website” that offers competing advertisements to brands such as SIMILAC.
Respondent actually knew of Complainant’s rights in the ENFAMIL mark when registering the domain name. This is shown by the fact that Respondent has continuously used the domain name to discuss the ENFAMIL product line, whilst using Complainant’s own trademarks in the domain name and throughout the resolving website.
B. Respondent
Respondent did not register the domain name in bad faith. Respondent registered the domain name as part of a marketing service that would inform Respondent which domain names to register. Respondent’s understanding was that the marketing team would pick the names that would link to Amazon.com affiliate marketing opportunities. Respondent assumed they were experts and thus, as a novice domainer, Respondent deferred to their judgment.
Respondent was shocked to see this domain name dispute filed. Respondent has since cancelled all product domain names that he registered on the basis of the marketing team’s word. Respondent desires to surrender this domain name, and believes that keeping his integrity is more important than making the pittance he has realized from this domain name registration.
(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.
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Preliminary Issue
As noted, Respondent consents to transfer the <enfamilinfantformula.com> domain name to Complainant. However, Respondent has not implicitly consented in its Response to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel notes that consent-to-transfer cases traditionally require an unconditional surrender of the domain name, whereas here Respondent seeks some guarantee releasing any other legal claims that Complainant may have against Respondent. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that he is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel will analyze the case under the elements of the UDRP.
Complainant claims that it uses its ENFAMIL mark in connection with the promotion and sale of milk formula for infants and babies. Complainant notes that it has registered the ENFAMIL mark with the USPTO (i.e., 696,534 registered on April 19, 1960). It is generally accepted that USPTO registration satisfies Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel agrees that Complainant has established Policy ¶ 4(a)(i) rights in the ENFAMIL mark through USPTO registration, despite the fact that Respondent dwells in South Africa. See, e.g., 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).
Complainant next argues that Respondent’s <enfamilinfantformula.com> domain name contains the entire ENFAMIL mark along with the product-descriptive phrase “infant formula.” Complainant claims that the gTLD “.com” is not a relevant addition. The Panel agrees that a gTLD is not considered in a Policy 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). The Panel also agrees that the terms “infant” and “formula” do nothing more than describe the products that dominate the ENFAMIL mark’s business. See, e.g., 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 thus finds that the <enfamilinfantformula.com> domain name is confusingly similar to the ENFAMIL mark under Policy ¶ 4(a)(i).
The Panel notes that 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 argues that Respondent is not known as this <enfamilinfantformula.com> domain name, but is actually “Anthony Jansen.” Complainant stated that it has not licensed, authorized, or approved of Respondent’s usage of the ENFAMIL mark in domain names. The Panel notes that Respondent identifies only as Anthony Jansen in the Response. Therefore, the Panel finds that Respondent is not known as the <enfamilinfantformula.com> domain name, or any variation thereof under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant next argues that Respondent uses the domain name to promote ENFAMIL products and offer hyperlinks to coupons. Complainant explains that Internet users who seek out these coupons are taken to websites wherein an array of goods, including competing SIMILAC goods, are promoted. Complainant believes that Respondent is most likely profiting from this domain name each time an Internet user clicks on the advertisements and “coupons.” The Panel notes that the <enfamilinfantformula.com> domain name resolves to a website that discusses ENFAMIL products throughout several paragraphs, with a sidebar featuring hyperlinks to various ENFAMIL products. The Panel further notes that the website to which these hyperlinks resolve is apparently a website that specifically discusses the benefits of competing SIMILAC products, and provides the Internet user with an array of coupon options for SIMILAC goods. In the case of Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel agreed that there is no bona fide offering when the ultimate purpose of a domain name is to promote the sale and advertisement of competing goods. The Panel agrees that as Respondent’s goal is to send Internet users through to competing SIMILAC coupons and advertisements, there is nothing bona fide under Policy ¶ 4(c)(i), or legitimately noncommercial or fair under Policy ¶ 4(c)(iii), about Respondent’s use of the <enfamilinfantformula.com> domain name.
Complainant argues that confused Internet users may see the information on the <enfamilinfantformula.com> domain name’s website and believe that it is authored by Complainant, when in fact Complainant cannot vouch for the accuracy of Respondent’s explanation of ENFAMIL products. The Panel again notes the extent to which Respondent uses Complainant’s marks in describing ENFAMIL goods. In Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005), the panel found that there could be no bona fide offering, or legitimate noncommercial or fair use, when it appeared that the Respondent sought to pass itself off as the Complainant by using language and images that would cause the Internet user to believe the Complainant had to be the source of the domain name. The Panel agrees that Respondent’s decision to use the <enfamilinfantformula.com> domain name to pass itself off as an official website for Complainant 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.
Complainant argues that Respondent is disrupting Complainant’s business by using the <enfamilinfantformula.com> domain name to promote competing SIMILAC products. Complainant contends that the hyperlinks on the <enfamilinfantformula.com> domain name’s website lead Internet users to competing SIMILAC goods offered in connection with SIMILAC coupons. The panel in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), found that the use of a disputed domain name to send Internet users to competing goods or services was evidence of an attempt to unfairly disrupt the business of a competitor. The Panel agrees that Respondent’s decision to host hyperlinks to competing SIMILAC offerings evidences a Policy ¶ 4(b)(iii) bad faith attempt to use the <enfamilinfantformula.com> domain name to disrupt Complainant’s ENFAMIL business.
Complainant also alleges that Respondent seeks to accrue advertising revenue from competing advertisements through this domain name. The Panel notes that the domain name’s website features advertisements that take Internet users to monetized, competing, SIMILAC offerings. The Panel agrees that Respondent has created a Policy ¶ 4(b)(iv) likelihood that Internet users will be confused into believing that Complainant is the source or origin of the content and advertisements promoted through the <enfamilinfantformula.com> domain name’s website, and as a result of Respondent admittedly accruing some form of advertising revenues, there is sufficient evidence of bad faith. See, e.g., 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 claims that Respondent’s decision to use Complainant’s mark in the domain name, throughout the website, and in Respondent’s detailed description of ENFAMIL goods, illustrates an attempt to confuse Internet users into believing that they must be visiting a website that is official, and or affiliated with Complainant. Complainant explains that Internet users are taken to a “coupon website” that offers competing advertisements to brands such as SIMILAC. The Panel notes that the <enfamilinfantformula.com> domain name’s resolving website features Complainant’s ENFAMIL word and design marks, along with competing SIMILAC advertisements, on a website that discusses the benefits of ENFAMIL products. In Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001), the panel found sufficient bad faith when the Respondent’s development of the website brought to mind the Complainant’s mark and business in a way that made the domain name’s website deceptively similar to an official website. The Panel finds that Respondent’s attempt to pass itself off as Complainant for purposes of increasing its web traffic is evidence of Policy ¶ 4(a)(iii) bad faith.
Complainant argues that Respondent actually knew of Complainant’s rights in the ENFAMIL mark when registering the domain name. Complainant claims that Respondent’s knowledge is shown by the fact that Respondent has continuously used the domain name to discuss the ENFAMIL product line, whilst using Complainant’s own trademarks in the domain name and throughout the resolving website. The Panel agrees that as Respondent’s own Response indicates that he knew what he was doing, but assumed his actions were acceptable due to the support of a marketing team, Respondent did indeed know that Complainant had rights in the ENFAMIL mark when Respondent registered this domain name. Therefore, the Panel finds actual knowledge on the part of the Respondent to establish Policy ¶ 4(a)(iii) bad faith registration. See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Complainant, having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilinfantformula.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: November 1, 2013
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