National Arbitration Forum
DECISION
3M Company v. Maltuzi LLC
Claim Number: FA0808001219183
PARTIES
Complainant is 3M Company (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C., P.A., Minnesota, USA. Respondent is Maltuzi LLC (“Respondent”), represented by Tracy
R. Roman, of Raskin Peter Rubin & Simon LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <postitpicture.com>,
which is registered with Nameking.com,
Inc. (“Nameking”)
PANEL
The undersigned, Mr. David H
Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on August 5, 2008;
the Forum received a hard copy of the Complaint on August 6, 2008.
On August 12, 2008, Nameking confirmed by e-mail to the Forum that
the domain name <postitpicture.com>
(“the disputed domain name”) was registered with it and that the Respondent was the current registrant of the name. Nameking has
verified that Respondent is bound by the its 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 12, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding, setting
a deadline of September 2, 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@postitpicture.com by
e-mail.
A timely Response was received and determined to be complete on September 2, 2008.
On September 5, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Mr. David H Tatham,
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant develops and markets innovative products
and solutions that serve a diverse field of customers throughout the world. Founded in
1902 in Northern Minnesota, it initially
focused on mining for mineral deposits and manufacturing sandpaper products. Since then,
it has grown to be a global innovator, with annual sales exceeding $20 billion.
Complainant introduced its POST-IT brand of adhesive
backed paper and stationery notes approximately thirty years ago. Since that
time, it 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
home and office supplies. Among Complainant’s more recent product
introductions has been POST-IT picture paper. As a result of Complainant’s widespread use
and promotion of the POST-IT brand, and the many high quality products sold
thereunder, POST-IT has become one the most well known and famous brands in the
world.
Complainant is the owner of the following U.S.
Trademark Registrations for its POST-IT mark: Nos.
1,046,353; 1,198,694; 1,208,297; 1,284,295; 1,935,381; 2,012,212; 2,371,084;
2,372,832; 2,402,722; 2,402,723; 2,736,421; 3,168,105; and 3,176,638. Copies of these registrations were annexed to the
Complaint. Complainant’s first U.S. registration
for POST-IT – No. 1,046,353 – issued
on August 17, 1976 and Complainant contends that is therefore now incontestable.
Backed up by reference to numerous prior Decisions under the Policy, Complainant
contends that the disputed domain name is “identical or confusingly similar to
a trademark or service mark in which the complainant has rights” because –
- Knowing of the fame of the POST-IT trademark, and in
an obvious attempt to benefit from Complainant’s launch of its POST-IT
picture paper product, Respondent registered and is using the disputed domain
name to attract internet users to its website to generate advertising and
click-through revenue.
- Respondent uses the disputed domain name in
connection with a website that hosts a variety of links to, and
advertisements for, third parties, many of which sell stationery products
and office supplies that compete with Complainant’s products. The website also includes links to sexually
explicit material, which tarnishes Complainant’s famous trademark POST-IT.
- The sole reason why Respondent registered and is
using the disputed domain name is to generate advertising revenue for itself
by creating a likelihood of confusion with Complainant’s famous POST-IT trademark.
- Complainant owns valuable rights in the famous
POST-IT trademark that long predate Respondent’s registration of the
disputed domain name in 2006 and it is the owner of common law rights in
the POST-IT trademark in the U.S. based on its long and continuous use of the
famous brand in connection with numerous stationery and office related
products dating back to the 1970’s.
Complainant is also the owner of thirteen U.S. trademark
registrations for its POST-IT mark, six of which have become incontestable.
- The disputed domain name is confusingly similar to
Complainant’s famous POST-IT trademark, as it merely couples the POST-IT
trademark with the generic word “picture.”
Complainant annexed to the Complaint copies of pages from its website
illustrating that it offers Picture Paper under the POST-IT name, and it
points out that two of its federal trademark registrations, specifically
cover photo paper.
- A domain name comprised of a trademark, the generic
name of a product sold under the trademark, and a generic top-level domain
is confusingly similar to the trademark.
- The lack of the hyphen in
the <postitpicture.com>
domain name does not negate the overwhelming similarity to Complainant’s
POST-IT trademark.
- When a user clicks on the “Post It” link on
Respondent’s website, the user is taken to page with links to “3m [sic]
Custom Post-It Notes,” “Post-It Notes,” “Custom Post-It Notes,” “Office
Supplies Usa,” and “Sticky Notes.”
Because Complainant is world famous for selling POST-IT brand sticky notes,
the content of Respondent’s website enhances the confusing nature of the disputed
domain name.
Complainant contends that Respondent has no rights or legitimate interests
in the disputed domain name because –
- Respondent
does not use it in connection with a bona
fide offering of goods or services.
- Respondent
is not making a noncommercial fair use of the name.
- Respondent
has never been known as or referred to as “Postit Picture” or any variant
thereof, as is confirmed by the WHOIS record for the disputed domain name,
a copy of which was annexed to the Complaint, and which identifies Maltuzi
LLC as the registrant and administrative contact.
- Respondent’s
use of the disputed domain name to attract Internet users to its
commercial website that is laden with revenue-generating advertisements
and links, and its use of a domain name containing another party’s
trademark to operate a portal website that generates advertising and
click-through revenue, is not a bona
fide offering of goods or services, or a noncommercial fair use of the
domain name.
- The
web page at the disputed domain name includes links to adult-oriented
material such as “Milf Personals: Moms Looking For
Toyboy Dates” and “Married But Looking: These Local Wives Like to Play Around.”
Complainant contends that links to adult-oriented material is evidence
that Respondent lacks rights and legitimate interests in the disputed
domain name as Respondent will know, having featured as a respondent in Parke-Bell Ltd.
v. Maltuzi LLC, FA 1082265
(Nat. Arb. Forum Nov.r 7, 2007) where it was found that Maltuzi had no
rights or legitimate interest because it had posted adult-oriented
material to the website that resolves from the disputed domain name.
Complainant contends that
Respondent is acting in bad faith because -
- Respondent
has acted and is acting in bad faith by capitalizing on the likelihood of
confusion it is causing by using Complainant’s POST-IT mark in the disputed
domain name.
- Registering
multiple domain names containing the trademarks of others is strong
evidence of bad faith registration and use and Respondent has a pattern of
registering domain names containing the marks of others as evidenced by
Complainant’s reference to four cases in which Respondent featured as the
respondent.
- As
described above, the website at the disputed domain name redirects users
to websites featuring adult-oriented products and services. This
is further evidence of Respondent’s bad faith.
- Respondent
is located in California and, as Complainant has sold its POST-IT brand
products in the United States for approximately three decades, Respondent
must have been aware of the name.The
renown of POST-IT brand products, and the fact that Respondent uses the disputed
domain name to host sponsored links for office supplies and stationery
products, plainly demonstrates that Respondent was well aware of the
famous POST-IT trademark prior to registering the disputed domain name.
Indeed, certain sponsored links that appear on Respondent’s websites
refer to Complainant specifically and Respondent’s knowledge of its rights
in the famous POST-IT trademark serves as further evidence of Respondent’s
bad faith registration and use of the disputed domain name.
B. Respondent
Upon
learning of this matter and in an effort to resolve this matter expeditiously,
Respondent attempted to contact Complainant and its representative at various
times to offer a voluntary transfer of the domain name at issue. Neither
Complainant nor its representative responded to these communications.
Therefore,
without admitting fault or liability and without responding substantively to
the allegations raised by Complainant, and in order to expedite this matter so
that the Panel’s time and resources are not otherwise wasted on this undisputed
matter, Respondent stipulates that it is willing to voluntarily transfer the
disputed domain name to Complainant.
Respondent further requests that the transfer be ordered without findings of
fact or conclusions as to paragraph 4(a) of the Policy other than that the
disputed domain name be transferred.
Respondent contends that in
numerous prior UDRP decisions, panels have consistently ruled that when a complaint
has been filed and the respondent consents to the transfer of the domain name,
it is inappropriate to issue any decision other than simply ordering the
transfer of the domain name. Such panels consistently hold that it would
be improper to issue any findings of fact in such cases, and Respondent quotes
from three such Decisions and refers to twenty more.
FINDINGS
Complainant is the owner of a number of
registrations in the U.S.
for the trademark POST-IT. It has
used this name extensively for nearly 30 years and, as a result the mark has
become extremely well-known, if not famous.
Respondent has stated that it is willing for
the disputed domain name to be transferred to Complainant.
DISCUSSION
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.”
Respondent
does not contest any of Complainant’s allegations regarding the disputed domain name, and indeed has indicated that it
will consent to a judgment in favour of Complainant for the transfer of the
disputed domain name. In similar
circumstances, Panels in several earlier Decisions have foregone the
traditional UDRP analysis and ordered the immediate transfer of the domain
names. This Panel was involved in just
such a case – LF, LLC v. All Granite FA 992052 (Nat. Arb. Forum June 12,
2007). However there have been
numerous similar findings, such as in Boehringer Ingelheim International
GmbH v. Modern Ltd. – Cayman Web Development, FA 133625 (Nat. Arb.
Forum Jan. 9, 2003) (transferring the domain name registration where the
Respondent stipulated to the transfer); Cartoon Network LP,
LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006)
in which the Panel stated:“[T]his Panel
considers that a genuine unilateral consent to transfer by the Respondent
provides a basis for an immediate order for transfer without consideration of
the paragraph 4(a) elements. Where the Complainant has sought transfer of
a disputed domain name, and the Respondent consents to transfer, then pursuant
to paragraph 10 of the Rules the Panel can proceed immediately to make an order
for transfer. This is clearly the
most expeditious course”; and Diners Club Int’l Ltd.
v Nokta Internet Techs., FA 720824 (Nat. Arb. Forum Aug. 2, 2006) where the Panel held: “Indeed, it would be unwise to make any other
findings [other than the transfer] in case the same issues were to arise in
later proceedings. Accordingly, the Panel will not make any
findings of fact or compliance or otherwise, but will make the only order that
is appropriate in the circumstances, which is an order for the transfer of the
domain name to Complainant.”
In this case, the Panel sees no
reason why it should depart from the course adopted in all of the above
Decisions, or why it should deny the requests of both Complainant and
Respondent.
DECISION
Having established that Complainant’s request for a transfer of the
disputed domain name is not contested by Respondent, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <postitpicture.com>
domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: September 19, 2008
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