national arbitration forum

 

DECISION

 

Mead Johnson & Company, LLC v. Apollo / Rei Kalemaj

Claim Number: FA1309001521736

PARTIES

Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA.  Respondent is Apollo / Rei Kalemaj (“Respondent”), Albania.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <newenfamilcoupons.com>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 27, 2013; the National Arbitration Forum received payment on September 27, 2013.

 

On September 27, 2013, ENOM, INC. confirmed by e-mail to the National Arbi-tration Forum that the <newenfamilcoupons.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, INC. reg-istration 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, in-cluding 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 en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@newenfamilcoupons.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 Respond-ent’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 29, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 Not-ices, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a global leader in the marketing of products devoted to infant and children’s nutrition, and it is best known for its ENFAMIL and ENFALAC families of infant formulas.

 

Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for the ENFAMIL trademark (including Registry No. 2,719,478, registered May 27, 2003).

 

Respondent registered the <newenfamilcoupons.com> domain name on June 17, 2013.

 

The domain name is confusingly similar to Complainant’s ENFAMIL mark.

 

Respondent has not been commonly known by the domain name.

 

Respondent is not authorized by Complainant to register the domain name.

 

Respondent uses the domain name to attract Internet users who are looking for information about Complainant’s ENFAMIL products but mistakenly visit Re-spondent’s website and click on the links featured there that feature images of Complainant’s products and the ENFAMIL trademark.

 

Respondent has no rights to or legitimate interests in the domain name.

 

Respondent’s use of the domain name disrupts Complainant’s business.

 

Respondent attempts to profit from its use of the domain name.

 

Respondent knew of Complainant and its rights in the ENFAMIL trademark when it registered the domain name.  

 

Respondent both registered and uses the domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

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 can-celled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the ENFAMIL trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Albania).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding, under Policy ¶ 4(a)(i), that it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <newenfamilcoupons.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.  The domain name con-tains the mark in its entirety, with the addition of the generic terms “new” and  “coupons,” which describe an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.”  These alterations of the mark, made in form-ing the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy.   See, for example, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respond-ent’s <amextravel.com> domain name confusingly similar to a UDRP complain-ant’s AMEX mark because 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)).  

 

See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (finding that attaching a gTLD to the mark of another in creating a domain name is “unable to create a distinction capable of overcoming a finding of con-fusing similarity”).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests);  see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy.  Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).  Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant asserts, and Respondent does not deny,

that Respondent is not authorized by Complainant to register the domain name <newenfamilcoupons.com>, and that Respondent has not been commonly known by the domain name.  Moreover, the WHOIS information for the domain name identifies the registrant only as “Apollo Rei Kalemaj,” which does resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the <newenfamilcoupons.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel there finding under Policy ¶ 4(c)(ii) that a respondent was not common-ly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indica-tion that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark.

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <newenfamilcoupons.com> domain name to profit by attracting Internet users who are looking for information about Complainant’s ENFAMIL products, but who mistakenly visit Respondent’s resolving website and click on any of the many links featured there, some of which feature information about Complainant’s products.  This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under 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 to a website of Respondent and for Re-spondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We are persuaded by the evidence that Respondent’s employment of the con-tested <newenfamilcoupons.com> domain name, which is confusingly similar to Complainant’s ENFAMIL trademark, to profit as alleged in the Complaint demon-strates bad faith in the registration and use of the domain name as provided in Policy ¶ 4(b)(iv).  See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a do-main name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a UDRP complainant to its own website, likely profit-ing from that diversion).  To similar effect, 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).

 

We are also convinced by the evidence that Respondent knew of Complainant and its rights in the ENFAMIL trademark when it registered the disputed domain name.  This is independent proof of bad faith registration of the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that that re-spondent had "actual knowledge of Complainant's mark when registering the dis-puted domain name").

 

Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <newenfamilcoupons.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  November 11, 2013

 

 

 

 

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