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 Nadir Maknojiya, SoftDot Technologies, LLC of Sugar Land, Texas, United States of America. 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 November 22, 2010. On November 23, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 22, 2010, 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 November 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2010. On December 16, 2010, the Respondent sent an email communication to the Center advising that “I am sorry I missed the first place. I will simply transfer over the domain name to the complainant in exchange of our-of-pocket cost for the domain.” The Center advised the Complainant of the Respondent’s December 16, 2010 email and that the Complainant could seek a suspension of the proceeding for the purposes of exploring settlement. The Complainant did not request the suspension of this proceeding. Accordingly, the Center appointed William F. “Bill” Hamilton as the sole panelist in this matter on December 29, 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 an international manufacturer and supplier of infant and children's nutrition al products including the Enfamil® infant formula. The Complainant has registered the ENFAMIL mark (the “Mark”) with the United States Patent and Trademark Office under Registration Numbers 696,534; 800,782; 2,469,244; 2,487,248; 2532844; 2,719,478 and 3,758,662. In addition, Complainant holds a number of federal registrations for marks that feature ENFAMIL as the dominant component, namely Registration Numbers 839,249; 888,345; 2,173,496; 2,175,945; 2,701,509; 3,795,918; and 3,815,298. A number of these registrations have been in force for several years and have thus gained incontestable status in the United States under 15 U.S.C. §1065. These incontestable registrations include the following:
- 696,534 for ENFAMIL (registered April 19, 1960 for simulated breast milk formula in liquid and powder form for infants);
- 800,782 for ENFAMIL (registered on December 21, 1965 for feeding bottles, nipples, nipple covers, and container punches for use with specially packaged ready-to-use infant products);
- 839,249 for ENFAMIL NURSETTE (registered on November 21, 1967 for simulated breast milk formula in liquid and powder form for infants);
- 888,345 for ENFAMIL NURSETTE (registered on March 24, 1970 for infant feeding bottle and disposable nipple unit);
- 2,173,496 for ENFAMIL AR (registered on July 14, 1998 for infant foods);
- 2,175,945 for ENFAMIL FAMILY BEGINNINGS (registered on July 28, 1998 for health care services, namely, providing information to expectant and new mothers which focuses on good health for mother and infant);
- 2,469,244 for ENFAMIL (registered on July 17, 2001 for food for babies; vitamin and mineral preparations);
- 2,487,248 for ENFAMIL (registered on September 11, 2001 for food for babies; vitamin and mineral preparations);
- 2,532,844 for ENFAMIL (registered on January 22, 2002 for electrolyte replenishment preparations);
- 2,701,509 for ENFAMIL LIPIL (registered on March 25, 2003 for food for babies; vitamin and mineral preparations; dietary, nutritional and food supplements containing fatty acids, namely docosahexaenoic acid and arachidonic acid);
2,719,478 for ENFAMIL (registered on May 27, 2003 for pediatric feeding formula).
The Complainant has been using the ENFAMIL trademark and service mark in the United States and around the world for more than 50 years and has invested substantially in the trademark and service mark associated with the goods and services marketed under the ENFAMIL brand name.
The Respondent registered the disputed domain name on July 20, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to its distinctive Mark and the ccTLD is of no significance with respect to determining a likelihood of confusion. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never licensed the Mark to the Respondent and the Respondent does not appear to have ever conducted a bona fide business under the name ENFAMIL. The Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith to attract unsuspecting Internet users its click through landing website to offer competitive products and services to the Complainant’s ENFAMIL product. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i)The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii)The respondent has no rights or legitimate interests in respect of the domain name; and
(iii)The respondent’s domain name has been registered and is being used in bad faith.
Each of these elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
The disputed domain name not only incorporates the entirety of the Complainant’s ENFAMIL mark- it consists solely of that mark. The disputed domain name differs from the ENFAMIL only mark by inclusion of the ccTLD “.co”; however “[t]he addition of the [country code] suffix.. to the disputed domain name is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trademark purposes under the Policy.” Samsung Electronics Col. Ltd. v. Selim Civelek,WIPO Case No. DRO2008-0005; The Bank of the Pacific v. Digi Real Estate Foundation,WIPO Case No. D2006-1112; Columbia Insurance Company v. G Design,WIPO Case No. D2006-1617; Alliant Credit Union v. Mark Andreev,WIPO Case No. D2007-1085. The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s Mark. B. Rights or Legitimate Interests
The Complainant has asserted that the Complainant has not licensed or authorized the Respondent to use the disputed domain name. “[I]t is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the evidential onus shifts to the respondent to demonstrate that it has some right or legitimate interest.” Auto-C, LLC v. MustN,WIPO Case No. D2004-0025. The Respondent has failed to come forward with evidence showing rights or legitimate interests in the disputed domain name. Moreover, it is apparent that the Respondent has not conducted or has attempted to conduct a legitimate business under the disputed domain name which resolves to a landing page with links to products and services that compete with the Complainant’s infant formula. Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inv. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340; Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353. Moreover, the Respondent is not engaged in a legitimate noncommercial or fair use of the disputed domain name. See e.g. The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113. Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong,WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Nor does it appear conceivable that the Respondent is commonly known by the disputed domain name. ENFAML has no meaning other than to serve as a source identifier for Complainant and its products. The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
On the evidence presented, the Panel finds that the disputed domain name has been registered and used in bad faith. A simple Internet search would have promptly revealed the Complainant’s ownership of ENFAMIL mark. Moreover, the Respondent must have been aware of the Complainant’s products sold under the ENFAMIL brand because links to competitive products appear on the disputed domain name’s landing page. Moreover, the wholesale adoption of the coined ENFAMIL mark is evidence of itself of an intentional misappropriation for the purpose of diverting to Respondent’s website unsuspecting Internet users seeking ENFAMIL branded products or information. “The use of a domain name to point to a website that offers sponsored links to other websites is evidence of bad faith, particularly if, as in the instant case, complainant had registered and used before [as] famous trademarks.” The Gap, Inc. v. Deng Youqian, supra; Judd(USA), LLC v. Unasi, Inc.,WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc.,WIPO Case No. D2005-0556. 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. Terana, S.A v. RareNames, WebReg,WIPO Case No. D2007-0489. Moreover, “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 Gap, Inc. v. Deng Youqian, supra. See also Veuve Clicquot Ponsardin, Maison Fondue en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. 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 domain name be transferred to the Complainant.
William F. Hamilton
Sole Panelist
Dated: January 12, 2011
Full & Egal Universal Law Academy