The Complainant is Mead Johnson & Company, LLC of Evansville, Indiana, United States of America, represented by Waddey & Patterson, P.C., United States of America.
The Respondent is Michael Daniel of Tangerang, Banten, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 2, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2010. On September 2, 2010, the Respondent submitted an email. On September 3, 2010 the Center acknowledged receipt of such email and referred the Respondent to the notification of Complaint document, as sent on that day, for further information. The Respondent did not submit any response. Accordingly, on September 27, 2010 the Center informed parties by email that it had not received a Response.
The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on September 30, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a global manufacturer of nutritional supplements, vitamin preparations, and infant formulae, as well as pharmaceutical preparations for treatment of sleep diseases and disorders. The Complainant has used the mark MEAD JOHNSON commercially since May 1998 and holds a portfolio of registered trademarks for the corresponding mark including United States of America federal trademark MEAD JOHNSON + design, registration no. 3092321, registered on May 16, 2006 for use in Class 5 and Indonesian trademark MEAD JOHNSON + design, registrations nos. 391624, registered on September 19, 1997 in Class 5; 391625 registered on September 19, 1997 in Class 29; 391626 registered on September 19, 1997 in Class 30; and 414918 registered on April 16, 1998 in Class 5. All the aforementioned trademarks shall hereafter be referred to as the “MEAD JOHNSON trademark”.
The Respondent registered the disputed domain name on July 21, 2010. A screenshot taken by the Complainant shows that as at August 30, 2010, the website associated with the disputed domain name displayed sponsored listings relating primarily to infant formulae. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to trademarks in which the Complainant owns rights; the Respondent has no right or legitimate interest in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
The disputed domain name not only incorporates the entirety of the Complainant’s mark, it consists solely of that mark, other than the inclusion of the ccTLD “.co” and the elimination of the space between MEAD and JOHNSON. Differences such as these are inadequate to preclude confusion from occurring.
The Complainant has never licensed or otherwise authorized the Respondent to use the MEAD JOHNSON mark or register it as a domain name. The Respondent is not using the disputed domain name to offer any goods or services, but instead to display pay-per-click advertising diverting Internet users trying to find the Complainant’s website. The disputed domain name is not comprised of dictionary terms, but rather solely of the Complainant’s trademark, so it is self-evident that the advertisements are keyed to the trademark value of the disputed domain name. Such use is not a bona fide offering of goods and services under the Policy.
The Complainant’s investigation of the Respondent has uncovered nothing to suggest either that he is commonly known by the name Mead Johnson or that he has developed trademark rights in that name. The Respondent is not a reseller of the Complainant’s but rather provides only the pay-per-click page, complete with competitor links. There is no evidence of use of the disputed domain name in a “legitimate non-commercial or fair use” manner.
As at the date of registration of the disputed domain name, the Complainant held (and continues to hold) a great number of trademark registrations in the United States, around the world, and in the Respondent’s home country of Indonesia including four separate registrations for the MEAD JOHNSON trademark which were issued in 1997 and 1998, more than a decade before the registration of the disputed domain name. Where a mark is inherently distinctive or has become well-known, as is the case here, an inference arises that the mark was “targeted” by the registrant. Registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.
The Respondent is capitalizing on the fame of the MEAD JOHNSON trademark to attract users to its website containing links to competitor products. The Complainant asserts that it is reasonable for the Panel to infer bad faith in the present case based on the Complainant’s particularly strong trademark rights, and also based on the fact that there can be no conceivable good faith use of the mark as a domain name where the Respondent is not an authorized licensee, distributor or reseller. B. Respondent
As noted in the Procedural History section above, the Respondent sent a pre-commencement communication to the Center in which it stated “The complainant has made material ignorance by not participating auction of [sic] whereby an ample time spectrum has been given”. The Respondent did not however file a formal response to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the trademark MEAD JOHNSON by virtue of the registered trademarks which it has cited. The Panel is also satisfied that the disputed domain name is identical to these. For the purposes of comparison, the country code top level domain “.co” may be disregarded as wholly generic as is customary in cases under the Policy. Furthermore, the fact that there is no space in the disputed domain name between the two words “mead” and “johnson” is of no significance as a space is not permitted within a domain name for technical reasons.
Accordingly the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous panel decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent. The onus of producing evidence rebutting such case then shifts to the respondent. If the respondent does not rebut the complainant’s prima facie case, the respondent shall be found not to have any rights or legitimate interests in the disputed domain name.
The Complainant states that it has never licensed or otherwise authorized the Respondent to use the MEAD JOHNSON trademark. The Complainant has also provided evidence that the website associated with the disputed domain name has been used to display pay-per-click advertising diverting Internet users trying to find the Complainant’s website. It is well established that this type of use of a domain name, which in effect trades off the Complainant’s reputation and trademark, offering or linking to competing goods and services, is not bona fide. The Panel considers that such use cannot confer any rights or legitimate interests upon the Respondent.
In these circumstances the Panel is satisfied that the Complainant has made out a prima facie case in terms of paragraph 4(a)(ii) of the Policy. The Respondent did not file a formal response to the Complainant’s contentions and its informal pre-commencement communication adds nothing to the Panel’s understanding of the Respondent’s potential rights or legitimate interests in the disputed domain name. In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present case, the Panel is satisfied that given the Complainant’s strong rights in its registered MEAD JOHNSON trademark, both in the United States of America and in the Respondent’s home country of Indonesia, it is more probable than not that the Respondent registered the disputed domain name with the Complainant in mind and with intent to target the Complainant’s rights. It has not escaped the Panel’s notice that the disputed domain name is extremely similar to the Complainant’s principal domain name and that Internet users seeking the Complainant’s website but making the common typographical error of missing the final letter ‘m’ from the relative domain name would inevitably arrive at the disputed domain name thus increasing the traffic to the Respondent’s website. The Panel considers that it is more probable than not that the Respondent selected the disputed domain name for exactly this reason. Furthermore, the Respondent’s site has been configured to display a range of sponsored links which directly target the Complainant’s brands and products and which feature the Complainant’s competitors.
Given the close similarity of the Complainant’s domain name to the disputed domain name, and the use of sponsored advertising links on the website associated with the disputed domain name which target the Complainant’s rights, the Panel finds that the Respondent registered and used the disputed domain name with intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark in terms of paragraph 4(b)(iv) of the Policy. While the website also contains advertisements for the Respondent’s registrar, such that the registrar itself may be the beneficiary of any revenue generated from the pay-per-click links, the Panel is satisfied that the ultimate responsibility for and control of the content rests with the Respondent and thus that the disputed domain name has been registered and used by the Respondent in bad faith.
Accordingly, the third element under the Policy has been established. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew D.S. Lothian
Sole Panelist
Dated: October 6, 2010
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