Mead Johnson & Company, LLC v. Ian Hart
Claim Number: FA1208001456656
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Ian Hart (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamil-coupon.com>, registered with GoDaddy.com, LLC.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2012; the National Arbitration Forum received payment on August 3, 2012.
On August 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamil-coupon.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 August 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@enfamil-coupon.com. Also on August 13, 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.
A timely Response was received and determined to be complete on August 13, 2012.
On August 14 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant alleges:
1. Complainant has rights in the ENFAMIL mark through its registration with the United States Patent and Trademark Office:
Reg. No. 696,534 registered April 19, 1960;
Reg. No. 800,782 registered Dec. 21, 1965;
Reg. No. 83,924 registered Nov. 21, 1967;
Reg. No. 2,469,244 registered July 17, 2001;
Reg. No. 2,487,248 registered Sept. 11, 2001;
Reg. No. 2,532,844 registered Jan. 22, 2002; &
Reg. No. 2,719,478 registered May 27, 2003.
2. Respondent’s <enfamil-coupon.com> domain name is confusingly similar to Complainant’s ENFAMIL mark.
3. Respondent’s <enfamil-coupon.com> domain name contains Complainant’s ENFAMIL mark in its entirety with the addition of the generic term “coupon,” a hyphen and the generic top level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <enfamil-coupon.com> domain name.
5. Respondent is not authorized to use the ENFAMIL mark in any way.
6. Respondent is not commonly known by the <enfamil-coupon.com> domain name.
7. The WHOIS information lists “Ian Hart” as registrant of the <enfamil-coupon.com> domain name, which shows no correlation between Respondent and the disputed domain name.
8. Respondent is using the <enfamil-coupon.com> domain name to collect affiliate revenue by confusing visitors looking for information on Complainant’s products who then click on the featured links and ads.
9. Respondent is using the <enfamil-coupon.com> domain name in bad faith in order to attract Internet users to Respondent’s website for commercial gain through commissions, affiliate fees and pay-per-click revenue.
10. Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(iii) by preventing Complainant from registering the disputed domain name itself and disrupting Complainant’s business.
11. When Respondent registered the disputed domain name, it was aware of Complainant’s mark and thus registered the mark in bad faith.
B. Respondent alleges:
1. It offered the disputed domain name several times to the Complainant and did not got any response from them.
2. Consents to transfer the <enfamil-coupon.com> domain name to Complainant.
The Respondent consented to transfer of the disputed domain name to the Complainant, without making any assertions in respect of the Paragraph 4(a) of the Policy.
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.
Preliminary Issue: The Respondent’s Consent to Transfer
As stated in the Response, the Respondent consents to transfer the disputed domain name to Complainant. In this sense the Respondent requests that the transfer be ordered without Panel implication.
However, after the initiation of this proceeding, Godaddy.com, LLC placed a hold on Respondent’s account and therefore, Respondent cannot transfer the disputed domain name while this proceeding is still pending.
In the UDRP Panels’ practice, there are different approaches of the “consent-to-transfer” going from considering that such consent represents the sufficient sole basis for a transfer without findings of fact or conclusions under Policy ¶ 4(a), as the Respondent in these proceedings requests, to the consideration of such consent as an element in the appreciation of all the Policy elements.
Neither the Policy nor the Rules or the Supplemental Rules provide for criteria to rule on this issue. On the other side, the scope of the Policy is to deal with cybersquatting. Cybersquatting is the “deliberate, bad faith, abusive registration of domain names in violation of others rights.” Final Report of the WIPO Internet Domain Name Process 29 (1999), available at http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.
In this sense, the Panel finds as in other prior cases that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008); see also Amegy Bank Nat’l Assoc. v. Admin, LLC, FA 132547 (Nat. Arb. Forum June 29, 2010).
Therefore, the Panel decides that it will to analyze the case under the elements of the UDRP.
Complainant provides evidence for the Panel indicating its trademark registrations with the USPTO for its ENFAMIL mark:
Reg. No. 696,534 registered April 19, 1960;
Reg. No. 800,782 registered Dec. 21, 1965;
Reg. No. 83,924 registered Nov. 21, 1967;
Reg. No. 2,469,244 registered July 17, 2001;
Reg. No. 2,487,248 registered Sept. 11, 2001;
Reg. No. 2,532,844 registered Jan. 22, 2002; &
Reg. No. 2,719,478 registered May 27, 2003.
By considering this evidence, the Panel finds that Complainant has sufficiently established rights in the ENFAMIL mark through its trademark registrations with the USPTO under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the Complainant had submitted evidence of its registration with the USPTO, “such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the Complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <enfamil-coupon.com> domain name is confusingly similar to Complainant’s ENFAMIL mark. The Complainant asserts that the <enfamil-coupon.com> domain name contains Complainant’s ENFAMIL mark in its entirety with the addition of the generic term “coupon” and the (“gTLD”) “.com.”
The Panel notes that Respondent also adds a hyphen between the “enfamil” and “coupon” terms. The Panel finds that these variations are insufficient to differentiate the disputed domain name from the registered mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the Complainant’s mark).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Therefore, the Panel finds that the first element of the Policy had been proven.
The 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 asserts that Respondent is not commonly known by the <enfamil-coupon.com> domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Ian Hart” as registrant. Complainant also contends, that Respondent is not licensed or authorized to use Complainant’s mark. Based on this information, the Panel determines that there is no connection between Respondent and the <enfamil-coupon.com> domain name or Complainant’s ENFAMIL mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the Complainant had not authorized the respondent to register a domain name containing its registered mark);
Complainant further claims that Respondent has no rights or legitimate interests in the <enfamil-coupon.com> domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the <enfamil-coupon.com> domain name. Complainant alleges that Respondent’s disputed domain name resolves to a website that purports to provide information about Complainant’s products and various ENFAMIL coupons, as well as displaying links to third-party websites selling Complainant’s products. Complainant argues that Respondent is using the <enfamil-coupon.com> domain name to collect affiliate program revenue resulting from confused Internet users looking for Complainant’s business who click on the displayed links. The Panel notes that the resolving website features pictures of Complainant’s products, as well as an explicit affiliate disclaimer stating that Respondent is financially profiting from providing links associated with Amazon Service LLC, Associates Program.
Based on this evidence provided, the Panel finds that Respondent’s use of the <enfamil-coupon.com> domain name to feature pay-per-click links to collect affiliate fees while featuring Complainant’s products does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use interest under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); 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).”)
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Therefore, the Panel finds that the first element of the Policy had been proven.
Complainant argues that Respondent’s <enfamil-coupon.com> domain name resolves to a website to disrupt Complainant’s business, and to commercially benefit from the mistaken affiliation with Complainant’s business. It is the Panel position that the content of the website to which the disputed domain name resolves could support such an argumentation.
Moreover, Complainant claims that Respondent has registered and is using the <enfamil-coupon.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant argues that Respondent’s resolving website is designed to commercially profit Respondent through affiliate fees and pay-per-click links. Complainant further contends that Respondent is aiming to mislead Internet users and attract them to Respondent’s disputed website for commercial gain. Previous panels have found that these types of actions constitute bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the Complainant’s mark to redirect users to a website that offered services similar to those offered by the Complainant); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the Complainant). Again, it is the Panel position that the content of the website to which the disputed domain name resolves could support such an argumentation.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii). Moreover, the Respondent consents to transfer as an implicit acknowledgement of the rights of the Complainant over the disputed domain name.
In this sense, on the balance of probabilities the Panel finds that the Complainant had proven also the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamil-coupon.com> domain name be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka Panelist
Dated: August 27, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page