Mead Johnson & Company, LLC v. Admin - Oversee Domain Management, LLC
Claim Number: FA1111001417919
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Admin - Oversee Domain Management, LLC (“Respondent”), represented by William A. Delgado of Willenken Wilson Loh & Lieb LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamile.com>, registered with Nameking.com, 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.
Hon. Sir Ian Barker QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the National Arbitration Forum received payment on November 30, 2011.
On December 1, 2011, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enfamile.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2011 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@enfamile.com. Also on December 2, 2011, 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 December 27, 2011.
On January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a manufacturer of infant and children’s nutritional products and formulae. It has been selling its products under the ENFAMIL brand and mark in the United States and in other countries for over 50 years. It has built up a considerable goodwill in and a strong reputation for its products.
The Complainant owns numerous registered United States trademarks for the word ENFAMIL, either on its own or in a combination of words. The first of these trademarks was registered on April 19, 1960. The Complainant also owns many domain names which incorporate the trademarked word.
The disputed domain name is confusingly similar to the Complainant’s trademark, the only difference being the addition of the letter ‘e’.
The disputed domain name resolves to a website providing “pay-per-click” advertising with links to the Complainant’s products and those of competitors.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant gave it no right to reflect its mark in a domain name. None of the defences provided by Paragraph 4(c) of the Policy applies to the Respondent.
The disputed domain name was registered by the Respondent on February 11, 2004 in bad faith. The Respondent must have known of the Complainant’s famous brand and mark at that date. Bad faith registration and use is shown by the “click-through” links. By purporting to be selling the Complainant’s products online, the Respondent is profiting from the use of the Complainant’s trademark and its similarity with the disputed domain name. The Respondent’s bad faith use is exacerbated by the offering for sale of competitors’ products on the website accessed by the disputed domain name.
B. Respondent
The Respondent owns a portfolio of generic domain names . As part of its business practice , it invites potential claimants to contact it regarding domain names which are believed to violate a trademark.
The Respondent had never heard of the Complainant or its trademarks prior to the filing of this Complaint. On receiving the Complaint, the Respondent endeavoured to contact the Complainant several times to offer a voluntary transfer of the disputed domain name. The Complainant refused to accept the Respondent’s proposal.
Without admitting fault or liability and without replying substantively to the allegations of the Complainant, the Respondent stipulates that it is willing voluntarily to transfer the disputed domain name to the Complainant. The Respondent requests an order of transfer without any findings of fact.
(a) The Complainant has rights in registered trademarks for the word “Enfamil”.
(b) The disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights.
(c) The Respondent consents to the relief requested by the Complainant, if so ordered by the Panel.
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.
Where a respondent has consented to the transfer of the disputed domain name, the Panel may forego the traditional UDRP analysis and order the immediate transfer of the disputed domain name. See Tex. Med. Ctr. v. Spinder, FA 886496 (Nat. Arb. Forum Feb. 19, 2007) (foregoing the traditional Policy analysis where the respondent stipulated to the transfer of the disputed domain names to the complainant); see also Richard Simon Jocelyn Peter Adams v. Truth About Jos, FA 907564 (Nat. Arb. Forum Mar. 9, 2007) (concluding that when a respondent stipulates to the transfer of the disputed domain name in its response or expresses a willingness to transfer the disputed domain name to the complainant, the Panel can forego an analysis of the Policy and order the immediate transfer of the disputed domain name); see also Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 16, 2007) (“In light of Respondent’s request that the Panel enter an order transferring the disputed domain name to Complainant without findings of fact on the elements set forth in Paragraph 4(a) of the Policy, and the lack of any objection thereto, the Panel declines to set forth or address the Parties’ contentions.”); see also Californian Acad. of Sciences v. Texas Int’l Prop. Assocs., FA 944494 (Nat. Arb. Forum May 8, 2007); see also 3M Innovative Props. Co. v. (name redacted), FA 1211165 (Nat. Arb. Forum Aug. 4, 2008); see also State Farm Mut. Auto. Ins. Co. v. Global Selling Network LLC, FA 121354 (Nat. Arb. Forum Aug. 12, 2008).
The same approach can be found in WIPO decisions, such as Williams-Sonoma Inc. v. VEZ-Port, D2000-0207 (WIPO May 5, 2000), Slumberland France v. Chadia Acohuri, D2000-0195 (WIPO June 10, 2000), Cartoon Network LP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006) and Sanofi-Aventis & Ors v. Demand Domains Inc., D2008-1465 (WIPO Dec. 9, 2009).
This Panel agrees with the Panelists in Citigroup Inc. v. Texas Int’l Prop. Assocs., FA 1210904 (Nat. Arb. Forum Aug. 5, 2008) who disagreed with the Panelist in Gruebel Van Lines Ins. v. Texas Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), who suggested that a full review was required in circumstances such as the present in order not to shield cybersquatters from adverse findings. The Citigroup Panel considered that the UDRP does not have a “policing function”.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamile.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker QC, Panelist
Dated: January 19, 2012
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