Mead Johnson & Company, LLC v. noom kung
Claim Number: FA1309001521731
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is noom kung (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilcouponprintableblog.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2013; the National Arbitration Forum received payment on September 27, 2013.
On September 27, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamilcouponprintableblog.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 September 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@enfamilcouponprintableblog.com. Also on September 30, 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 October 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Mead Johnson & Company, is a global leader in infant and children’s nutrition, best known for its ENFAMIL and ENFALAC families of infant formulas.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENFAMIL mark (e.g., Reg. No. 696,534, registered April 19, 1960).
Respondent’s <enfamilcouponprintableblog.com> domain name contains Complainant’s ENFAMIL mark in its entirety, adding the generic terms “coupon,” “printable,” and “blog,” and the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent cannot possibly contend that it is commonly known by or identified with the domain name. Respondent uses the domain name primarily as 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 scores of links and ads featured there.
Respondent has registered and is using the domain name in bad faith. Most of the links on the website redirect Complainant’s potential customers to websites selling or promoting other products. By clicking on some of the links, a user is directed to websites featuring competing infant formula products for sale. Respondent’s resolving websites were designed to commercially profit Respondent through commissions, affiliate fees, and pay-per-click revenue as a result of Internet users’ confusion about Complainant’s presence and association with Respondent.
Respondent registered the <enfamilcouponprintableblog.com> domain name on April 5, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for ENFAMIL.
Respondent is not affiliated with Complainant and had not been authorized to use the ENFAMIL mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in ENFAMIL.
Respondent’s <enfamilcouponprintableblog.com> website ultimately directs visitors to third party websites some of which sponsor and/or sell competing infant formula products.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the ENFAMIL mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its mark where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <enfamilcouponprintableblog.com> domain name fully incorporates Complainant’s ENFAMIL mark, adds the generic term “coupon,” the descriptive term “printable,” the generic term “blog,” and appends the top level domain name “.com” thereto. Adding the phrase “coupon printable blog” mark only adds to any confusion between the mark and the domain name since the phrase suggests the retail nature of products covered by the Complainant’s trademark and the fact that Complainant might offer “coupons” for such products. Appending the necessary top level domain name, here “.com,” is irrelevant for the purpose of confusing similarity analysis. Therefore, the Panel concludes that Respondent’s <enfamilcouponprintableblog.com> domain name is confusingly similar to Complainant’s ENFAMIL mark pursuant to Policy ¶4(i). See, Churchill Ins. Co. Ltd. v. Sutherland FA 1328073 (Nat. Arb. Forum July 13, 2010)(finding that the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, because the domain name fully incorporated the complainant’s mark and added the descriptive phrase “lending group”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “noom kung” as the at-issue domain name’s registrant. The record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s domain name appears to provide information regarding Complainant’s ENFAMIL products and coupons on purchasing such products. The domain name addresses a website displaying competing links titled “Baby Samples (Free)” and “Free Enfamil Coupons.” Respondent’s use of the domain name to offer services that directly compete with services offered by Complainant fails to qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i), or as a noncommercial or fair use under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007)(finding “[t]he disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”)
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent’s <enfamilcouponprintableblog.com> website directs Complainant’s potential customers to third party commercial websites some of which address competing infant formula products including inks titled “Baby Samples (Free)” and “Free Enfamil Coupons.” Thereby the Panel finds Respondent is using the <enfamilcouponprintableblog.com> domain name in bad faith by disrupting Complainant’s legitimate business under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Finally, Respondent’s <enfamilcouponprintableblog.com> website and related links are designed to commercially benefit Respondent through commissions, affiliate fees, and/or pay-per-click revenue and to capitalize on consumer confusion regarding the <enfamilcouponprintableblog.com> domain name and Complainant’s affiliation and sponsorship of the domain name’s related websites and links. Notably and as mentioned above, Respondent uses the <enfamilcouponprintableblog.com> domain name to provide links to Complainant’s competitors. Using a confusingly similar domain name that provides competing links demonstrates Respondent’s bad faith registration and use of the at-issue domain name 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).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilcouponprintableblog.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 24, 2013
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