3M Company v. Robert Kortright
Claim Number: FA0801001130788
Complainant is 3M Company (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C., P.A., 60
South Sixth Street, Suite 3300, Minneapolis, MN 55402. Respondent is Robert Kortright (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <postitpocket.com>, <postitpocket.net>, <postitpocket.org>, <postitpocket.biz>, and <postitpocket.info> registered with Namesdirect.Com, Inc. n/k/a MyDomain, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 16, 2008.
On January 16, 2008, Namesdirect.Com, Inc. n/k/a MyDomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <postitpocket.com>, <postitpocket.net>, <postitpocket.org>, <postitpocket.biz>, and <postitpocket.info> domain names are registered with Namesdirect.Com, Inc. n/k/a MyDomain, Inc. and that the Respondent is the current registrant of the names. Namesdirect.Com, Inc. n/k/a MyDomain, Inc. has verified that Respondent is bound by the Namesdirect.Com, Inc. n/k/a MyDomain, Inc. 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 January 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 7, 2008 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, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com by e-mail.
A Response in electronic form only was timely received on February 7, 2008; however, as ICANN Rule 5 requires hard copies as well, the Response was determined to be deficient. In its Additional Submission submitted on February 14, 2008, Complainant, among other things, requests that the Panel not consider Respondent’s Response. In its discretion, the Panel will consider the Response.
On February 14, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant, 3M Company, makes the following assertions:
1. Respondent’s <postitpocket.com>, <postitpocket.net>, <postitpocket.org>, <postitpocket.biz>, and <postitpocket.info> domain names are confusingly similar to Complainant’s POST-IT mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
Knowing of the fame of the POST-IT trademark, Respondent registered and is using the disputed domain names to generate advertising and click-through revenue. Respondent uses the domain names in connection with a series of websites that merely host a variety of links to and advertisements for third parties that sell stationery products and office supplies, many of which compete with 3M’s products. Respondent is not commonly known by “Postit Pocket” or any variant thereof. The WHOIS records for domain names identify Robert Kortright as the registrant and administrative contact.
Respondent, Robert Kortright, contends that the disputed domain names are not confusingly similar to Complainant’s POST-IT mark. Respondent claims that the domain names are “completely different” from 3M’s POST-IT trademark because 3M uses the federal registration symbol, namely “®,” with its POST-IT trademark.
Respondent also argues that the domain names are distinguishable because they include generic top level domains (namely, .com, .net, .org, .biz, and .info).
Respondent contends that the disputed domain names were registered to secure domain names for a product that Respondent had invented.
Respondent contends that he had no intention of commercially benefiting from registering the disputed domain names. Moreover, Respondent contends that it receives no commercial benefit from parking the disputed domain names, but that its Registrar may be profiting.
Respondent contends that the disputed domain names were registered in good faith.
C. Complainant’s Additional Submission
The domain names wholly incorporate and are confusingly similar to Complainant’s POST-IT mark. Whether Respondent uses the federal registration symbol in connection with its POST-IT mark is inconsequential to whether the domain names are identical or confusingly similar to Complainant’s POST-IT trademark.
Respondent does not have any rights or legitimate interests in the domain names.
Respondent also claims that he is “referred to as postitpocket.com, .net, .org., .biz, and .info.” Respondent, however, did not submit any evidence to support that statement.
Moreover, contrary to Respondent’s assertions, domain name owners that use the RevenueDirect parking services do share in the click-through revenue earned through the domain names. As stated on the RevenueDirect website, “When you park your domains with RevenueDirect you have the opportunity to earn money by driving traffic to targeted and relevant results. Each time a visitor clicks on an ad on your domain parking page, you generate earnings.”
Complainant, 3M Company, formerly known as Minnesota Mining and Manufacturing Company (“3M”), develops and markets innovative products and solutions that serve a diverse field of customers throughout the world. 3M introduced the now famous POST-IT brand of adhesive backed paper and stationery notes approximately thirty years ago. Since that time, 3M has used the POST-IT trademark in connection with a variety of products including, without limitation, note pads, printed notes, trays and dispensers for holding stationery notes, adhesive tape, cover-up tape, tape flags, computer software, easel pads and paper, bulletin boards, and other such office supplies. As a result of 3M’s widespread use and promotion of the POST-IT brand and the many high quality products sold thereunder, the POST-IT brand has become one the most well known and famous brands in the world.
3M is the owner of
thirteen U.S. Trademark Registrations for marks comprising or containing
POST-IT registered and used in connection with a wide variety of stationery and
office related products including: Registration No. 1,046,353; Registration No.
1,198,694; Registration No. 1,208,297; Registration No. 1,284,295; Registration
No. 1,935,381; Registration No. 2,012,212; Registration No. 2,371,084;
Registration No. 2,372,832; Registration No. 2,402,722; Registration No.
2,402,723; Registration No. 2,736,421; Registration No. 3,168,105; and
Registration No. 3,176,638. 3M’s first
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.
Complainant has established rights in the POST-IT mark through thirteen registrations with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,046,353 issued August 17, 1976 and 1,198,694 issued June 22, 1982). As a result, Complainant’s registration of the POST-IT mark with the USPTO establishes its rights in the mark for the purposes of satisfying Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s disputed domain names are confusingly similar to Complainant’s mark. All of Respondent’s disputed domain names include the majority of Complainant’s POST-IT mark omitting only the hyphen and adding the generic term “pocket” and a generic top-level domain (“gTLD”) of either “.com,” “.net,” “.org,” “.biz,” or “.info.” The additions of a generic term and a gTLD are irrelevant in determining whether a domain name is confusingly similar to an established mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the disputed domain names, which are confusingly similar to Complainant’s POST-IT mark, to operate websites containing commercial links offering a variety of competing products for sale to the public. The Panel finds that such commercial use is neither a use in connection with 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). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent also claims that he has rights and a legitimate interest in the domain names because he registered the Domain Names. “Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.” Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000).
Respondent is not commonly known by any of
the <postitpocket.com>, <postitpocket.net>, <postitpocket.org>, <postitpocket.biz>, and <postitpocket.info>
domain names, as Respondent registered the disputed domain names under the name
“Robert Kortright.” The Panel may find
that Respondent does not have rights or legitimate interests pursuant to Policy
¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding
that the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”); see also
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <postitpocket.com>, <postitpocket.net>, <postitpocket.org>, <postitpocket.biz>, and <postitpocket.info> domain names to operate websites featuring links to commercial websites for the purpose of collecting click-through fees. Respondent’s use is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. Such use is 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 Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will.”).
Claiming that he is not responsible
for the click-through advertisements that appear on the websites associated
with the domain names, Respondent points his finger at the domain parking
services used in connection with the domain names, namely RevenueDirect. Respondent may not hide behind the fact that
RevenueDirect provides the sponsored links that appear on the websites
associated with the Domain Names to avoid a finding of bad faith. “The fact that such links were provided by [the
domain parking service] does not excuse Respondent.” Diners Club Int’l Ltd. v. O P Monga, FA 670049 (Nat. Arb. Forum
May 22, 2006). As pointed out by the
Panel in Diners Club, the respondent
agreed to park the domain name with a parking service, and never un-parked the
Complainant contends that some of
the links featured on Respondent’s resultant websites operate in direct
competition with Complainant’s products. The Panel infers that Respondent is profiting
from such use through the collection of referral fees for each redirected
Internet user. The Panel finds that such
use constitutes a disruption of Complainant’s business and is therefore
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)); see also St. Farm Mutual Auto. Insr.
Lastly, Complainant contends that Respondent purposefully chose domain
names confusingly similar to Complainant’s POST-IT mark to capitalize on the
fame and good will associated with the mark when it registered the disputed
domain names. Complainant further contends that even
without actual notice of Complainant’s POST-IT mark, Respondent, as a citizen
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 <postitpocket.com>, <postitpocket.net>, <postitpocket.org>, <postitpocket.biz>, and <postitpocket.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Dated: February 28, 2008
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