3M Company v. Oleg Boyarsky c/o LAT
Claim Number: FA0708001066746
Complainant is 3M Company (“Complainant”), represented by Chet
F. Garner, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mlibrary.com>, registered with Schlund+Partner Ag.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On August 24, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <3mlibrary.com> domain name is registered with Schlund+Partner Ag and that the Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on September 19, 2007.
Complainant submitted an Additional Submission, which was determined to
be deficient and therefore was not considered.
Respondent filed a timely Additional Submission, received by the Forum
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <3mlibrary.com> domain name is confusingly similar to Complainant’s 3M mark.
2. Respondent does not have any rights or legitimate interests in the <3mlibrary.com> domain name.
3. Respondent registered and used the <3mlibrary.com> domain name in bad faith.
B. Respondent makes the following contentions:
1. Complainant invented a security process known as “3m library mode,” which is widely referred to in the field of library management.
2. Respondent’s <3mlibrary.com> domain name was registered “years ago” and simply points to Respondent’s corporate website.
3. There is no bad faith because no one would confuse Respondent’s website at <3mlibrary.com> with Complainant 3M Company.
C. Additional Submissions
1. Complainant’s Additional Submission was deficient for lack of timely payment and therefore was not considered.
2. Respondent stated in its Additional Submission:
a. 3M Library is a widely used “shorthand” or “slang” term.
b. Complainant waited seven months after Respondent registered the <3mlibrary.com> domain name to send Respondent a letter asserting its rights.
c. Respondent makes no mention of “3M” or any of its trademarks anywhere on its <3mlibrary.com> website.
An Additional Submission was submitted by Complainant on
Complainant has used its 3M mark since 1906,
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds that Complainant has established rights in its 3M mark through over a century of continuous commercial use and more than 3000 registrations of the mark worldwide. Respondent does not dispute Complainant’s trademark rights.
Respondent’s <3mlibrary.com> domain name is confusingly similar to Complainant’s well-known 3M mark, as it simply contains Complainant’s mark in its entirety and adds the term “library” along with the generic top-level domain gTLD “.com.” The Panel finds that the addition of a generic term, particularly when descriptive of one of Complainant’s product lines, does not differentiate Respondent’s domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent argues that the term “3M Library” is a known, well understood technical term in the library field, but did not submit any evidence to that effect. Even in the face of such evidence, there would be no basis for concluding that Complainant has somehow lost the right to control its own, well-established trademark. The seven months that passed between Respondent’s registration of the <3mlibrary.com> domain name, and its letter to Respondent asserting its rights, is certainly not an indication that Complainant abandoned rights during that time. Indeed, for a large, multi-national company policing rights worldwide, that is a reasonable amount of time.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant states that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s 3M mark. Respondent is known as “Library Automation Technologies, Inc.,” and sells products in competition with Complainant. Respondent does not dispute this and itself pointed out that the <3mlibrary.com> domain name simply redirects traffic to Respondent’s corporate website. The Panel finds that Respondent is not commonly known by the <3mlibrary.com> domain name for purposes of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant further states that Respondent is using the <3mlibrary.com> domain name to redirect Internet users seeking Complainant’s products to Respondent’s own website, which sells library check-out systems in competition with Complainant’s own products. Again, Respondent did not dispute this contention, and does not explain or demonstrate how the common use of the term “3m library” somehow confers rights in Respondent to use Complainant’s trademark to redirect business to itself. The Panel finds that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent was well aware of
Complainant’s 3M mark, and nevertheless registered and is using the <3mlibrary.com> domain name to redirect Internet users seeking
Complainant’s products or services to Respondent’s own website, which sells
products in competition with Complainant own business. The Panel finds that such use constitutes a
disruption of Complainant’s business and is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Furthermore, the Panel finds that Respondent’s manner of use of the <3mlibrary.com> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. This is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mlibrary.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 15, 2007
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