national arbitration forum

DECISION

3M Company v. Domain Librarian c/o Orion Foundry (Canada) ulc

Claim Number: FA0801001139111

PARTIES

Complainant is 3M Company (“Complainant”), represented by Richard A. Kempf, of Moore & Hansen, PLLP, Minnesota, USA. Respondent is Domain Librarian c/o Orion Foundry (Canada) ulc (“Respondent”), Ontario, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <littmannstethoscopes.info>, registered with Moniker Online Services Inc.

PANEL

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.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2008.

On January 24, 2008, Moniker Online Services Inc. confirmed by e-mail to the National Arbitration Forum that the <littmannstethoscopes.info> domain name is registered with Moniker Online Services Inc. and that Respondent is the current registrant of the name. Moniker Online Services Inc. has verified that Respondent is bound by the Moniker Online Services 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 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 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 postmaster@littmannstethoscopes.info by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On February 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

Complainant was founded in 1902, and has grown into a diversified technology company serving customers and communities around the world.

Complainant has marketed stethoscopes since 1967, after acquiring Cardiosonics Inc.

Complainant owns numerous trademarks used in branding stethoscopes, including the LITTMANN mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 751,809, issued June 25, 1963).

Respondent is neither commonly known by the <littmannstethoscopes.info> domain name, nor authorized to register domain names featuring Complainant’s LITTMANN mark in any way.

Respondent registered the <littmannstethoscopes.info> domain name on June 28, 2006.

Respondent’s domain name resolves to a website containing links to various stethoscope manufacturers in competition with the business of Complainant.

Respondent’s <littmannstethoscopes.info> domain name is confusingly similar to Complainant’s LITTMANN mark.

Respondent does not have any rights or legitimate interests in the domain name <littmannstethoscopes.info>.

Respondent has registered and uses the <littmannstethoscopes.info> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the same domain name was registered and is being used by Respondent in bad faith.

DISCUSSION

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 a 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:

i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the LITTMANN mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that a complainant had sufficiently established rights in the SKUNK WORKS mark through its registration with the USPTO).

Respondent’s <littmannstethoscopes.info> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name contains the LITTMANN mark and merely adds the generic term “stethoscopes,” a term directly related to Complainant’s business, and the generic top-level domain (“gTLD”) “.info.” Neither the addition of a term related to Complainant’s business nor the addition of the gTLD “.info” is sufficient to distinguish the <littmannstethoscopes.info> domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); 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 a complainant's mark because it merely adds the word “auction” used in its generic sense); further see 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 purposes of determining whether it is identical or confusingly similar as provided in the Policy).

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant contends that Respondent lacks rights to and legitimate interests in the <littmannstethoscopes.info> domain name. Once Complainant has made out a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show that it does possess rights to or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Complainant has made out a prima facie case for purposes of Policy ¶ 4(a)(ii), while Respondent, for its part, has failed to respond to the Complaint. On this record, we are justified in finding that Respondent has no rights to or legitimate interests in the disputed domain name. Nevertheless, we will examine the record to determine if there is any basis under Policy ¶ 4(c) for concluding that Respondent has such rights or interests.

We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is using its domain name to resolve to a website that features links to various stethoscope manufacturing websites competing with the business of Complainant, from which Respondent presumably receives referral fees. This use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ (c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of disputed domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services as contemplated in the Policy).

Complainant also contends that Respondent is neither commonly known by the <littmannstethoscopes.info> domain name nor authorized to register domain names featuring Complainant’s LITTMANN mark in any way. Respondent does not dispute these assertions. We must conclude, therefore, that Respondent has not established rights to or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use a trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s rights in a domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

In the circumstances here presented, we are satisfied that Respondent’s use of the disputed domain name, as alleged, will likely cause confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the resulting websites. Such use of a domain name for Respondent’s commercial gain is evidence of Respondent’s bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See 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 a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that a respondent came within the strictures of Policy ¶ 4(b)(iv) because that respondent admittedly used a complainant’s well-known mark to attract users to that respondent's website).

Furthermore, it is evident on this record that Respondent had either actual or constructive notice of Complainant’s rights in the LITTMANN mark when it registered the disputed <littmannstethoscopes.info> domain name. This is a further indication of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):

[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.