national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. Jared Burnup

Claim Number: FA1309001521730

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enfamilcoupon.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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

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 <enfamilcoupon.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@enfamilcoupon.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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.”  In this document, Respondent purports to consent to the transfer of the <enfamilcoupon.com> domain name.  However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12 (b) the Panel will issue a decision.  

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

  1. Complainant makes the following contentions:

1.    Complainant is a global leader in infant and children’s nutrition, best known for its infant formulas.

2.    Complainant owns registrations for the ENFAMIL mark with the United States Patent and Trademark Office (“USPTO”).

a.    Reg. No. 696,534 registered April 19, 1960.

b.    Reg. No. 800.782 registered December 21, 1965.

c.    Reg. No. 2,469,244 registered July 17, 2001.

d.    Reg. No. 2,487,248 registered September 11, 2001.

e.    Reg. No. 2,532,844 registered January 22, 2002.

f.      Reg. No. 2,719,478 registered May 27, 2003.

g.    Reg. No. 3,758,662 registered March 9, 2010.

3.    Respondent registered the <enfamilcoupon.com> domain name on May 9, 2013.

4.    Respondent’s <enfamilcoupon.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.

a.    Respondent’s disputed domain name contains Complainant’s ENFAMIL mark in its entirety with the addition of the generic term “coupon” and the generic top-level domain (“gTLD”) “.com.”

5.    Respondent has no rights or legitimate interests in the <enfamilcoupon.com> domain name.

a.    Complainant has neither licensed nor authorized Respondent to use the ENFAMIL mark in any way.

b.    Respondent is not commonly known by the disputed domain name.

                                                                  i.    ENFAMIL is an invented word that has no meaning other than to serve as a source identifier for Complainant.

                                                                 ii.    The WHOIS information for the disputed domain name lists “Jared Burnup” as Registrant.

c.    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.

                                                                  i.    Respondent uses the disputed domain name to collect pay-per-click revenue.

                                                                 ii.    Respondent’s resolving website features links and advertisements for third-parties.

6.    Respondent registered and is using the <enfamilcoupon.com> domain name in bad faith.

a.    Respondent has a pattern of bad faith use and registration.

b.    Respondent uses the disputed domain name to disrupt and compete with Complainant’s business.

                                                                  i.    The website resolving from the disputed domain name features coupons for Complainant’s ENFAMIL products.

                                                                 ii.    The links featured on Respondent’s resolving website redirect Internet users to websites selling or promoting other products.

                                                                iii.    Some of the links redirect to websites featuring competing baby formula products for sale.

c.    Respondent uses the disputed domain name to commercially profit through commissions, affiliate fees, and pay-per-click revenue.

 

B. Respondent

Although the Forum received Other Correspondence from Respondent, the Forum did not receive a formal, timely Response.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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 states that it is a global leader in infant and children’s nutrition, specifically known for its brand of infant formulas. Complainant argues that it has used the ENFAMIL mark around the world and in the United States for more than 50 years. Complainant claims its rights in the ENFAMIL mark through its registrations with the USPTO e.g.:

            Reg. No. 696,534 registered April 19, 1960;

            Reg. No. 800.782 registered December 21, 1965;

            Reg. No. 2,469,244 registered July 17, 2001;

            Reg. No. 2,487,248 registered September 11, 2001;

            Reg. No. 2,532,844 registered January 22, 2002;

            Reg. No. 2,719,478 registered May 27, 2003;

            Reg. No. 3,758,662 registered March 9, 2010.

Prior panels have found that evidence of a registration with a recognized federal authority is sufficient to establish rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel concludes that Complainant has rights in the ENFAMIL mark under Policy ¶ 4(a)(i), established through its registrations for the ENFAMIL mark with the USPTO.

 

Complainant asserts that Respondent’s <enfamilcoupon.com> domain name is confusingly similar to Complainant’s ENFAMIL mark under Policy ¶ 4(a)(i). Complainant states that Respondent’s <enfamilcoupon.com> domain name features Complainant’s ENFAMIL mark in its entirety with the addition of the generic term “coupon” and the gTLD “.com.” Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark under Policy 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel concludes that Respondent’s <enfamilcoupon.com> domain name is confusingly similar to Complainant’s ENFAMIL mark under Policy 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

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 asserts that Respondent has no rights or legitimate interests in the <enfamilcoupon.com> domain name because it is not commonly known by it under Policy 4(c)(ii). Complainant claims that Respondent has not been licensed or authorized to use the ENFAMIL mark in any way. Complainant further states that the word ENFAMIL is an invented word that has no meaning other than to represent Complainant and its products. Complainant further points out that the WHOIS information lists “Jared Burnup” as registrant of the <enfamilcoupon.com> domain name. Previous panels have found that a respondent was not commonly known by a domain name where there was no indication on the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent has no rights or legitimate interests in the <enfamilcoupon.com> domain name because it is not commonly known by it under Policy 4(c)(ii).

 

Complainant argues that Respondent has no rights or legitimate interests in the  <enfamilcoupon.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii). Complainant states that Respondent uses the disputed domain name to resolve to a website featuring third-parties links and advertisements and thus to collect pay-per-click revenue. The Panel notes that Respondent’s <enfamilcoupon.com> domain name resolves to a page featuring links including, “Free Baby Formula Coupons,” “Baby Formula Coupons,” “Coupon Savings at Target,” “Similac Coupons,” and “Absolutely Free for Baby.” Previous panels have consistently found that using a confusingly similar domain name to resolve to a website displaying a series of links that compete with a complainant or offer complainants products, in order to gain revenue, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). The Panel concludes that Respondent has no rights or legitimate interests in the  <enfamilcoupon.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii).

 

Complainant has proven this element.

Registration and Use in Bad Faith

Complainant contends that Respondent has a history of registering domain names that are later transferred. Complainant states that Respondent has registered about 1,003 domain names. Complainant further provides that Respondent has recently been required by this Forum to transfer an invalidly registered domain name. The Panel notes that Complainant has provided no evidence or citations for this claim. However, the Panel notes that a search for “Jared Burnup” in the National Arbitration Forum Database results in two cases that resulted in a transfer: Lockheed Martin Corporation v. Jared Burnup, FA 1508768 (Nat. Arb. Forum August 13, 2013), and Vanguard Trademark Holdings USA LLC v. Jared Burnup, FA 1514281 (Nat Arb. Forum September 11, 2013). Previous panels have found that UDRP proceedings where a Respondent has been ordered to transfer names are sufficient evidence of a pattern of bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel considers this extrinsic evidence and finds that Respondent has a pattern of bad faith behavior under Policy ¶ 4(a)(iii).

 

Complainant asserts that Respondent has registered and is using the <enfamilcoupon.com> domain name in bad faith under Policy 4(b)(iii). Complainant claims that some of the links present on the website resolving from Respondent’s disputed domain name redirect Complainant’s potential customers to websites selling or promoting products in competition with those that Complainant offers. Complainant argues that Respondent is disrupting Complainant’s business by providing links to Complainant’s competitors. Previous panels have found bad faith when a respondent uses a confusingly similar domain name to feature links that lead to competitors of a complainant. 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 pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent has registered and is using the <enfamilcoupon.com> domain name in bad faith under Policy 4(b)(iii).

 

Complainant asserts that Respondent registered and is using the <enfamilcoupon.com> domain name in bad faith under Policy 4(b)(iv). Complainant argues that Respondent uses Complainant’s ENFAMIL mark to increase Internet traffic to Respondent’s website. Complainant argues that Respondent aims at collecting commissions, affiliate fees, and pay-per-click revenue in response to Internet users’ confusion about Complainant’s relation and association with Respondent and the disputed domain name. Previous panels have found that misleading Internet users and attracting them to a respondent’s website for commercial gain indicates bad faith registration and use under 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).”). The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  

 

Complainant has proven this element.

 

DECISION

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 <enfamilcoupon.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  October 28, 2013

 

 

 

 

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