Mead Johnson & Company, LLC v. Bill Chau
Claim Number: FA1305001497581
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Bill Chau (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcoupons.biz>, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 3, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <enfamilcoupons.biz> 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 May 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 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@enfamilcoupons.biz. Also on May 8, 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 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 June 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
i. Respondent cannot possibly contend that it is commonly known by or identified with the domain name.
ii. Respondent uses the domain name primarily as a means of collecting pay-per-click revenue derived when confused visitors looking for information about Complainant’s ENFAMIL products errantly visit Respondent’s websites and click on any of the sources of links and ads featured there.
i. Respondent registered the domain name for the purpose of preventing Complainant from registering the domain name in question.
ii. Most of the links on the website redirect Complainant’s potential customers to websites selling or promoting other products.
iii. Respondent appropriated Complainant’s ENFAMIL mark in the <enfamilcoupons.biz> domain name and, by all appearances, designed resolving websites around the ENFAMIL mark as a keyword in order to increase traffic to Respondent’s website.
iv. Respondent has demonstrated actual knowledge of Complainant’s trademarks, as the website features a multitude of links advertising ENFAMIL products and images of Complainant’s products which prominently feature the ENFAMIL trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its ENFAMIL mark.
2. Respondent’s <enfamilcoupons.bizz> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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, Mead Johnson & Company, alleges that it is a global leader in infant and children’s nutrition, best known for its ENFAMIL and “Enfalac” families of infant formula. Complainant asserts that it is the owner of trademark registrations with the USPTO for the ENFAMIL mark (e.g., Reg. No. 696,534, registered April 19, 1960). See Annex B. The Panel notes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the ENFAMIL mark with the USPTO sufficiently proves its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <enfamilcoupons.biz> domain name contains Complainant’s ENFAMIL mark in its entirety and adds the generic term “coupons.” The Panel finds that Respondent’s addition of a generic term does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Complainant contends that Respondent adds the gTLD “.biz” to the disputed domain name. The Panel holds that Respondent’s addition of a gTLD does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel concludes that Respondent’s <enfamilcoupons.biz> domain name is confusingly similar to Complainant’s ENFAMIL mark under 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); 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 argues that Respondent cannot possibly contend that it is commonly known by or identified with the <enfamilcoupons.biz> domain name. Complainant asserts that ENFAMIL is an invented word that has no meaning other than to serve as a source identifier for Complainant, as well as the products it manufactures and sells. Complainant claims that Respondent’s name, “Bill Chau,” is not even remotely similar to the domain name. The Panel notes that the WHOIS information lists “Bill Chau” as the registrant of the disputed domain name. See Annex D. Finally, Complainant asserts that Respondent is neither a licensee of Complainant nor is Respondent otherwise authorized to use the ENFAMIL mark or any of Complainant’s other marks in a domain name. Thus, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent uses the domain name primarily as a means of collecting pay-per-click revenue derived when confused visitors looking for information about Complainant’s ENFAMIL products errantly visit Respondent’s websites and click on any of the sources of links and ads featured there. Complainant contends that Respondent’s website provides a multitude of links to “coupon websites” for baby formula products and local-area products. See Annex E. Complainant alleges that clicking on the links takes a user to additional websites and website links, many of which offer products or items not associated with Complainant or the ENFAMIL trademark. Complainant argues that advertisements through the “AdChoices” network even display links and images for “Similac Coupons,” which link to “Similac” products which directly compete with Complainant’s ENFAMIL baby formula products. The Panel therefore determines that Respondent’s use of the disputed domain name to list links to Complainant’s competitors is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant asserts that Respondent registered the domain name for the purpose of preventing Complainant from registering the domain name in question. The Panel finds that Respondent registered the website to prevent Complainant’s registration of the disputed domain name. The Panel finds that Respondent registered the domain name in bad faith under Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”).
Complainant argues that most of the links on the website redirect Complainant’s potential customers to websites selling or promoting other products. Complainant argues that advertisements on Respondent’s site through the “AdChoices” network even display links and images for “Similac Coupons,” which link to “Similac” products which directly compete with Complainant’s ENFAMIL baby formula products. See Annex E. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant claims that Respondent appropriated Complainant’s ENFAMIL mark in the <enfamilcoupons.biz> domain name and, by all appearances, designed resolving websites around the ENFAMIL mark as a keyword in order to increase traffic to Respondent’s website. Complainant contends that Respondent’s website provides a multitude of links to “coupon websites” for baby formula products and local-area products. See Annex E. Complainant argues that Respondent’s resolving websites were designed so that Respondent would commercially profit through commissions, affiliate fees, and pay-per-click revenue due to Internet users’ confusion about Complainant’s presence and association with Respondent. The Panel finds that Respondent’s use of the disputed domain name to commercially profit from Internet users’ attraction to its website constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv). 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).”).
Complainant contends that Respondent has demonstrated actual knowledge of Complainant’s trademarks, as Respondent’s website features a multitude of links advertising ENFAMIL products and images of Complainant’s products which prominently feature the ENFAMIL trademarks. Complainant argues that its ENFAMIL trademarks are registered under multiple registrations and there is no trademark or service mark registered or used by third parties that is similar to the ENFAMIL mark. Complainant alleges that Respondent has indicated that the website’s use of the ENFAMIL mark is solely for the purpose of identifying and allegedly providing coupons for Complainant’s baby formula products. The Panel finds that, due to Respondent’s use of the domain name to provide coupons for Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilcoupons.biz> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 18, 2013
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