Mead Johnson & Company, LLC v. BRIAN YURICK / HTTC
Claim Number: FA1512001652569
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Patterson Intellectual Property Law, Inc., Tennessee, USA. Respondent is BRIAN YURICK / HTTC (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutramigencoupons.net>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2015; the Forum received payment on December 15, 2015.
On December 16, 2015, eNom, Inc. confirmed by e-mail to the Forum that the 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. 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 December 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2016 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@nutramigencoupons.net. Also on December 17, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant's submissions can be summarised as follows:
Complainant is a global leader in infants' and children's nutrition and has registered the NUTRAMIGEN mark in the USA for its products. It has been using the NUTRAMIGEN mark in the USA and around the world for 60 years. As a result, Complainant has built up considerable goodwill in the minds of consumers in the NUTRAMIGEN mark.
Respondent registered the Domain Name on June 5, 2012. Complainant has not licensed or otherwise authorisedRespondent to use the NUTRAMIGEN trademarks for any purpose.
The Domain Name resolves to a web site containing filler text allegedly pertaining to couponing for Complainant's Enfamil and NUTRAMIGEN products as well as providing several pay-per-click advertising links for baby formula products, grocery coupons or other consumer goods often provided by Complainant's competitors generated using the words of the Domain Name as search terms. The web site appears to exist solely for the purpose of attracting Internet traffic looking for Complainant's products in order to capitalize when confused visitors click on the sponsored links and advertisements embedded there.
The Domain Name is confusingly similar toComplainant's trademark containing it in its entirety, adding the generic term 'coupons' and the gTLD “.net.” Adding a gTLD extension does not negate confusing similarity. Adding the generic term 'coupons' does not distinguish the Domain Name fromComplainant's NUTRAMIGEN mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name. NUTRAMIGEN is an invented word that has no meaning other than to serve as a source identifier for Complainant and the products it sells.
Respondent is not making a bona fide offering of goods or fair use as it is using the Domain Name primarily as a means of collecting pay-per-click revenue derived when confused visitors looking for information aboutComplainant's products errantly visitRespondent's site.
Respondent's bad faith is clearly established as most of the links on the web site redirect Complainant's potential customers to web sites competing withComplainant's products. This disruptsComplainant's business demonstrating bad faith registration and use according to Policy 4(b)(iii). Respondent's website was designed using Complainant's mark NUTRAMIGEN as a keyword to commercially profit Respondent through commissions, affiliate fees and pay-per-click revenue on the site owned by Respondent as a result of Internet users' confusion about Complainant's presence and association with Respondent. Misleading Internet users to attract them to Respondent's own web site for commercial gain indicates bad faith registration and use pursuant to Policy 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding, but has indicated he is willing to transfer the Domain Name to Complainant in email correspondence in these proceedings.
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(f), 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.”).
Apart from the “.net” suffix, which is not taken into account for the purposes of the Policy, the Domain Name consists of Complainant’s NUTRAMIGEN registered trademark and the generic word “coupons”. The addition of the word “coupons” does not serve to distinguish the Domain Name from Complainant’s mark. See Broadcom Corp v Domain Depot FA 96854 (Nat. Arb. Forum Apr 23 2001) (finding the broadcomonline.com domain name is confusingly similar to the complainant's BROADCOM mark); See also Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat.Arb.Forum Apr 10, 2007) (Holding that the mere addition of a generic top-level domain ("gTLD") does not serve to adequately distinguish the Domain Name from the mark). The Panelist finds that the Domain Name is confusingly similar to Complainant’s registered trademark NUTRAMIGEN for the reasons given above and as such Complainant satisfies para 4(a)(i) of the Policy.
The Panelist has had an opportunity to review Respondent's web site and is of the opinion that it gives the impression that it is an official site authorised by Complainant. It was not clear to the Panelist upon a quick review of the site that it was not a site authorised by Complainant mainly due to use of the NUTRAMIGEN logo. As such the web site must be considered to be misleading and Respondent passing itself off as connected with or authorised by Complainant. Passing off is evidence that Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests). As such, the Panelist need not consider additional arguments made by Complainant in this regard and finds that Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that Respondent's web site is confusing and misleading customers into believing it is associated with Complainant, the Panelist believes that Respondent is attempting to pass itself off as authorised by Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using Complainant's marks and logo as to the source or endorsement of its web site under Para 4(b)(iv) of the Policy and also causing disruption to Complainant under Para 4(b)(iii) of the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (Nat. Arb. Forum Dec. 28 2005) ('Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii);See Also Asbury Auto, Group, Inc v Tex, Int'l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv)). As such the Panelist need not consider additional arguments as to bad faith made by Complainant and finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nutramigencoupons.net> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: January 26, 2016
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