Mead Johnson & Company, LLC v. Seahawk Mania / Wilmot, Jude
Claim Number: FA1206001448473
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Seahawk Mania / Wilmot, Jude (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <babyenfamil.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 13, 2012.
On June 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <babyenfamil.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 June 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2012 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@babyenfamil.com. Also on June 14, 2012, 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 July 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. The ENFAMIL mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 696,534 registered April 19, 1960.)
2. Respondent registered the domain name on November 10, 2011.
3. Respondent is not licensed or otherwise authorized to use the ENFAMIL trademark.
4. Respondent’s <babyenfamil.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.
5. Respondents <babyenfamil.com> mark incorporates Complainant’s mark in its entirety with the addition of the word “baby” as well as the generic top-level domain (“gTLD”) “.com.”
6. Respondent is not commonly known by or identified with the <babyenfamil.com> domain name.
7. Respondent does not have rights or legitimate interests in the <babyenfamil.com> domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
8. The <babyenfamil.com> domain name resolves to a website providing a list of links to competitors’ products including baby-related-products and coupon sources.
9. Respondent has registered and is using the <babyenfamil.com> domain name in bad faith.
10. Respondent had knowledge of Complainant’s ENFAMIL mark.
11. Respondent has a pattern of bad faith registrations as evidenced by its ownership of ten other domain names.
12. Respondent is disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii) by redirecting Complainant’s potential customers to websites selling and promoting other products.
13. Respondent’s resolving website was designed to commercially profit Respondent via affiliate fees and pay-per-click revenue by attracting traffic to Respondent’s website and creating confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Mead Johnson & Company, LLC, is a global leader in infant and children’s nutrition. Complainant’s ENFAMIL mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 696,534 registered April 19, 1960). Complainant has been using the ENFAMIL mark for over 50 years in producing quality infant nutrition products.
Respondent, Seahawk Mania / Wilmot, Jude, registered the <babyenfamil.com> domain name on November 10, 2011. The <babyenfamil.com> domain name resolves to a website providing a list of links to competitors’ products including baby-related-products and coupon sources.
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 owns numerous trademark registrations with the USPTO (e.g., Reg. No. 696,534 registered April 19, 1960) for its ENFAMIL and related marks. Previous panels have found that registration with the USPTO satisfies the requirement of demonstrating rights in a given mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). The Panel finds that Complainant has established rights in the ENFAMIL and related marks pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <babyenfamil.com> domain name is confusingly similar to Complainant’s ENFAMIL mark. Complainant argues that Respondent’s <babyenfamil.com> domain name contains Complainant’s ENFAMIL mark in its entirety with the addition of the (“gTLD”) “.com” and the word “baby.” Previous panels have found that variances such as adding a generic top-level domain (“gTLD”) or a generic or descriptive word are insufficient in distinguishing a disputed domain name from a complainant’s registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <babyenfamil.com> domain name is confusingly similar to Complainant’s ENFAMIL mark according to 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).
Complainant argues that Respondent lacks rights and legitimate interests in the <babyenfamil.com> domain name. Respondent is neither a licensee of Complainant nor is it authorized to use Complainant’s ENFAMIL mark. The WHOIS information shows the registrant as “Seahawk Mania” of Bellingham, Washington. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
In addition, Complainant argues that Respondent is using the <babyenfamil.com> domain name to feature pay-per-click links and collect fees when visitors looking for Complainant’s products visit the website and click on the competing and unrelated links and ads featured on the page. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring ads and links to Complainant’s competitors, as well as unrelated links, for Respondent’s financial benefit is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also ALPITOUR S.p.A. v. balata Inc., FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Based on this analysis, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate non-commercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant claims that Respondent holds ten other domain names, the composition of which is unknown. Complainant states that it is reasonable to infer that at least some of the ten other domain names follow a pattern similar to Respondent’s <babyenfamil.com> domain name in this case in the sense of comprising wholly or partially the well-known trademarks of third parties. The Panel notes that Complainant has submitted no further information on Respondent’s bad faith pattern behavior. Previous panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent registered multiple domain names containing third-party marks. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). The Panel, however, declines to make such a bad faith finding as Complainant has presented no evidence that the other domain names registered by Respondent contain third-party trademarks and the other domain names have not been analyzed for bad faith in a UDRP proceeding.
Complainant argues that Respondent’s <babyenfamil.com> domain names resolve to websites containing links that redirect Complainant’s potential customers to sites selling various other products, including Complainant’s products. Based on these facts, the Panel finds that by providing links to competitors selling Complainant’s products, Respondent’s use of the disputed domain name disrupts Complainant’s business and is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant further argues that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv). Complainant contends the Respondent uses Complainant’s ENFAMIL mark to increase traffic to Respondent’s resolving website. Complainant also states that this resolving website is being used to commercially profit Respondent through commissions, affiliate fees, and pay-per-click links resulting from Internet users’ confusion about Complainant’s involvement in Respondent’s <babyenfamil.com> resolving website. Previous panels have found that misleading Internet users and attracting them to a respondent’s website for commercial gain is bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also 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 finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as Respondent registered and uses the disputed domain name for the purpose of attracting consumers and financially profiting by creating a likelihood of confusion with Complainant’s mark.
Complainant asserts that its trademark registrations for the ENFAMIL mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds 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)."
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 <babyenfamil.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 26, 2012
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