3M Company v. 3M Company c/o Domain Name Administrator
Claim Number: FA0711001106749
Complainant is 3M Company (“Complainant”), represented by Chet
F. Garner, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mporn.com>, registered with Findyouadomain.com LLC.
The undersigned certifies that he 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 31, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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." 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 makes the following assertions:
1. Respondent’s <3mporn.com> domain name is confusingly similar to Complainant’s 3M mark.
2. Respondent does not have any rights or legitimate interests in the <3mporn.com> domain name.
3. Respondent registered and used the <3mporn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, is a worldwide business organization offering over 50,000 products and services including, tapes, abrasives, and adhesives. Complainant has used the 3M mark since 1906, and has registered the mark and variations of it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 405,413 issued February 1, 1944). Complainant also holds the registration for the <3m.com> domain name.
Respondent registered the <3mporn.com>
domain name on
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."
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.”).
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.
Complainant registered the 3M mark with the USPTO, and
therefore, has established rights to the mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that the <3mporn.com> domain name is confusingly similar to the 3M
mark. Respondent’s addition of the
generic term “porn” to the registered mark is insufficient to distinguish the
disputed domain name from the registered mark.
In addition, because all domain names are required to have a top-level
domain, Respondent’s use of the generic top-level domain (“gTLD”) “.com” does
not distinguish the disputed domain name from Complainant’s registered
mark. Therefore, the Panel finds that
the <3mporn.com> domain name
is confusingly similar to Complainant’s 3M mark pursuant to Policy ¶ 4(a)(i). See
Mattel, Inc. v.
email@example.com, FA 187609 (Nat. Arb.
Forum Oct. 6, 2003) (“Respondent has merely added the descriptive word
‘porn’ to Complainant's registered BARBIE mark, and the addition of this word
does not create a notable distinction between Complainant's mark and the domain
name currently in dispute.”); see also Am. Online, Inc. v. GSD Pty. Ltd.,
FA 169083 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii),
Complainant must initially make a prima
facie case that Respondent has no rights or legitimate interests in the
domain at issue. The Panel finds that
Complainant has met this burden and accordingly, the burden is shifted to
Respondent to demonstrate that it does have rights or legitimate interests in
the disputed domain name. See VeriSign Inc. Vene Sign,
Respondent's WHOIS information identified Complainant as Respondent in this case. However, Complainant contends that it has no control over the disputed domain name. Respondent’s activities constitute “cyberflying,” a practice of changing the registrant of a domain name before or during a UDRP proceeding in an attempt to disrupt the proceeding and circumvent the Policy. There is thus no evidence that Respondent is commonly known by the disputed domain name in any manner, or authorized to use Complainant's mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See MB Fin. Bank, N.A. v. MBBANK, FA 644517 (Nat. Arb. Forum Apr. 4, 2006) (finding that the respondent had no rights or legitimate interests in the disputed domain name where the respondent’s WHOIS information had been altered following the filing of the complaint); see also British Sky Broad. Group plc v. Merino & Sky Services S.A., D2004-0131 (WIPO July 5, 2004) (holding that there was no evidence that the respondent was commonly known by the disputed domain names where the respondent’s information was the result of cyberflying).
The disputed domain name resolves to an adult-oriented website. The Panel finds that this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
The disputed domain name resolves to an adult-oriented website. Absent any evidence to the contrary, the Panel finds that this constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
The <3mporn.com> domain name is confusingly similar to Complainant’s 3M
mark and resolves to
an adult-oriented website. The Panel
assumes that such a website must generate revenue for Respondent. Consequently, the Panel finds further
evidence of Respondent’s bad faith registration and use of the disputed domain
name pursuant to Policy ¶ 4(b)(iv). See
Nationall Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by
E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that
pornographers rely on misleading domain names to attract users by confusion, in
order to generate revenue from click-through advertising, mouse-trapping, and
other pernicious online marketing techniques.”);
see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum
Respondent's attempt to disrupt the UDRP process by listing Complainant as the owner of the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See KSL Recreation Mgmt. Operations, LLC v. KSL Recreation Mgmt. Operations LLC, FA 876390 (Nat. Arb. Forum Feb. 13, 2007) (transferring the disputed domain name to the complainant where the respondent had engaged in cyberflying by changing the registration information to list the complainant as the registrant of the disputed domain name after notice of the dispute); see also Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding the respondent’s efforts to disguise its true identity an example of bad faith conduct).
The Panels concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mporn.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 14, 2008
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