Mead Johnson & Company, LLC v. Matt Smith
Claim Number: FA1309001521732
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Matt Smith (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcoupon.net>, registered with 1&1 Internet AG.
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.
Ho Hyun Nahm 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 30, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <enfamilcoupon.net> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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.net. 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 Ho Hyun Nahm 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 issues 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
1. Policy ¶ 4(a)(i)
2. Policy ¶ 4(a)(ii)
3. Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <enfamilcoupon.net> on June 14, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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:
(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 states that it uses the ENFAMIL mark to identify and promote its simulated breast milk formula for infants. Complainant notes that it has registered the ENFAMIL mark with the USPTO (e.g. Reg. No. 696,534 registered on April 19, 1960). The Panel agrees that USPTO registration satisfies Policy ¶ 4(a)(i) in this case as both parties to this dispute reside in the United States. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant next argues that Respondent’s <enfamilcoupon.net> domain name merely adds the gTLD “.net,” and the generic term “coupon” to the ENFAMIL mark. The Panel also agrees that a gTLD is never a serious consideration in the confusing similarity analysis of Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The panel in Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000), found that the disputed domain name remained confusingly similar when the only term added to the mark was the generic term “shopping.” The Panel here likewise agrees that as the domain name merely refers to coupons for ENFAMIL goods, the <enfamilcoupon.net> domain name is confusingly similar to the ENFAMIL mark under 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 explains that Respondent is known as “Matt Smith,” not as a name reflected by the <enfamilcoupon.net> domain name. Complainant avers that it has not authorized or licensed Respondent’s use of the ENFAMIL mark in domain names. The Panel notes that the WHOIS record supports Respondent’s identity as “Matt Smith.” In Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel found that the respondent was not known by the domain name when no evidence was presented to suggest otherwise, and the WHOIS contact was not similar to the domain name. The Panel therefore finds that Respondent is not known as the <enfamilcoupon.net> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the domain name to promote a website that purports to provide information regarding ENFAMIL goods. Complainant explains that Internet users who click on any of the “coupon” hyperlinks are sent to link pages that include an array of advertisements for competing goods. The Panel notes that the domain name’s immediate resolving website includes descriptions of ENFAMIL goods along with what appear to be coupons for Complainant’s products. See Amended Compl., at Attached Ex. E. The Panel further notes that these coupon hyperlinks take Internet users through to promotions for competing SIMILAC goods at the <localxpress.com> domain name. See id. at Attached Ex. F. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel found that the use of a confusingly similar domain name to promote a competing brand was not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name. The Panel here likewise agrees that there is nothing bona fide under Policy ¶ 4(c)(i), nor legitimately noncommercial under Policy ¶ 4(c)(iii), when Respondent’s purpose for the domain name is to send Internet users to coupons for competing goods.
Complainant also argues that Respondent takes efforts to create a false association between Complainant and Respondent through the content of the <enfamilcoupon.net> domain name. The Panel notes that Respondent’s narrative on the domain name’s website suggests that the author must have some knowledge of ENFAMIL goods, and the Panel further notes the presence of Complainant’s own design marks on the domain name’s website. See Amended Compl., at Attached Ex. E. In Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005), the panel agreed that the respondent could not have rights or legitimate interests in the disputed domain name when it seemed that the respondent merely sought to pass itself off as the complainant. The Panel here agrees that Respondent’s ploy to pass itself off as Complainant does not warrant a finding of Policy ¶ 4(a)(ii) rights and legitimate interests.
Complainant explains that Respondent’s bad faith attempt to disrupt Complainant’s business is evident through Complainant’s decision to include hyperlinks on the <enfamilcoupon.net> domain name that lead to offers for competing goods. The Panel again notes that the hyperlinks on the disputed domain name’s landing page lead to a website promoting competing SIMILAC goods. See Amended Compl., at Attached Exs. E–F. The Panel finds that the use of the <enfamilcoupon.net> domain name to send Internet users through hyperlinks to advertisements and coupons for competing products evidences a Policy ¶ 4(b)(iii) bad faith attempt to disrupt Complainant’s ENFAMIL business. See, e.g., Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent’s use of the ENFAMIL mark in the <enfamilcoupon.net> domain name, and throughout the domain name’s resolving website content, illustrates an attempt to confuse Internet users into believing that Complainant must be at the source or origin of the views and hyperlinks expressed on the <enfamilcoupon.net> domain name’s website. Complainant claims that Respondent is able to accrue hyperlink advertisement revenues each time a confused Internet user mistakenly clicks on the “coupon” links that send the user to competing goods. The Panel notes that the <enfamilcoupon.net> domain name’s website uses Complainant’s own trademarks to describe ENFAMIL goods, giving the impression that the domain name is earnestly informing the public about ENFAMIL goods, only to send the Internet user through to competing SIMILAC offers. See Amended Compl., at Attached Exs. E–F. The panel in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), determined that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names. The Panel here likewise finds that Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith.
Complainant argues that Respondent’s use of Complainant’s mark and logos in describing Complainant’s ENFAMIL goods on the <enfamilcoupon.net> domain name’s website illustrates that Respondent had actual knowledge of Complainant’s rights in the ENFAMIL mark when registering the domain name. The Panel finds that, due to the fame Respondent’s usage of Complainant’s marks throughout the domain name’s resolving website, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <enfamilcoupon.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 28, 2013
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