3M Innovative Properties
Company v. [Redacted]
Claim Number: FA0808001220698
PARTIES
Complainant is 3M Innovative Properties Company (“Complainant”), represented by Chet
F. Garner of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mmcompany.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically August 14, 2008; the
National Arbitration Forum received a hard copy of the Complaint August 15, 2008.
On August 19, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the
National Arbitration Forum that the <3mmcompany.com> domain name is
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and
that the Respondent is the current registrant of the name. Melbourne It,
Ltd. d/b/a Internet Names Worldwide
verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names
Worldwide registration agreement and thereby has 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 25, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 15, 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@3mmcompany.com by
e-mail.
A timely Response was received in electronic format only was received prior
to the Response deadline; a hard copy was received September 15, 2008. The
Response is therefore incomplete under ICANN Rule 5.
The Panel received no Additional Submissions.
On September 25, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Preliminary Issue #1:
Deficient Response
Respondent’s Response was submitted
only in an electronic format prior to the Response deadline. The National Arbitration Forum does not
consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose
whether to accept and consider this Response.
See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar.
4, 2003) (holding that the respondent’s failure to submit a hard copy of the
response and its failure to include any evidence to support a finding in its
favor placed the respondent in a de facto default posture, permitting
the panel to draw all appropriate inferences stated in the complaint). But see J.W. Spear & Sons
PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding
that where the respondent submitted a timely response electronically, but
failed to submit a hard copy of the response on time, “[t]he
Panel is of the view that given the technical nature of the breach and the need
to resolve the real dispute between the parties that this submission should be
allowed and given due weight”).
The Panel
reviewed the Response and finds that it would not require a result that is
different from the Panel’s rulings on the merits and decision in this case.
Preliminary Issue #2: Redaction
of Respondent’s Identity
Respondent
contends that it has been the victim of identity theft, and that it did not
register the disputed domain name. The Panel does not have evidence
before it to find that Respondent is a victim of identity theft,
however, the Panel does not have proof to the contrary as well. The Panel chooses therefore to redact
Respondent’s personal information from the decision to prevent any further
victimization of Respondent. In Wells
Further, the Panel notes that the person who responded to the Complaint, is the “Respondent” for purposes of the Policy (See UDRP Rule 1—definition of the Respondent).
Preliminary Issue #3:
Consent to Transfer
Respondent consents to transfer the <3mmcompany.com> domain name to Complainant. Although where Respondent consents to the transfer of the disputed domain name to Complainant, some Panels forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, under the facts of this case,
Complainant, although invited to do so, has not implicitly consented in its
Complaint to such a transfer without a decision on the merits by the
Panel. The Panel finds that the
“consent-to-transfer” approach is one way that cybersquatters seek to avoid
adverse findings. In Graebel
Van Lines, Inc. v.
Respondent has admitted in his
response to the complaint of Complainant that it is ready to offer the transfer
without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel
is of the view that the transfer of the disputed domain name deserves to be [sic]
along with the findings in accordance with the Policy.
Therefore, the Panel makes the appropriate analysis to make a Decision
on the merits in this case.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant makes the following allegations in this
proceeding:
1.
The
domain name that Respondent registered is identical to or confusingly similar
to a mark in which Complainant has exclusive rights.
2.
Respondent
has no rights to or legitimate interests in the domain name that contains in
its entirety Complainant’s protected mark.
3.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
makes the following points in response:
1.
The
“Response” of Respondent took the form of two letters to Complainant and to
Complainant’s attorney.
2.
In the
first letter, Respondent’s counsel raised the issue of identity theft.
3.
In the
second letter, Respondent’s counsel wrote: “7. Cease and desist
this action against my client. Send
proof of the cancellation and dismissal.”
4.
In the
first letter at 2.C., Respondent’s counsel wrote: “My client does not oppose
the pending proceeding and consents to the transfer of the domain name to the
Complainant.”
C. The Panel received no Additional
Submissions
FINDINGS
Complainant established rights in the mark contained within the
disputed domain name by virtue of its registration of the mark with appropriate
authorities.
Respondent registered a domain name that contains in its entirety
Complainant’s protected mark.
The domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed
domain name that contains Complainant’s protected mark.
Respondent acted in bad faith in
registering and using the disputed domain name.
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.”
Paragraph 4(a) of the Policy requires Complainant to 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) 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 argues its rights in the 3M mark (Reg. No. 405,413 issued Feb. 1, 1944), which has been registered with the United States Patent and Trademark Office (“USPTO”). Therefore, the Panel finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
Complainant alleges that the <3mmcompany.com>
domain name is confusingly
similar to its 3M mark despite the addition of the letter “m” and the generic
word “company.” The Panel finds that
these additions do not sufficiently distinguish the domain name in a manner
that would prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v.
Respondent claims to be the victim of identity theft and has therefore made no contentions under Policy ¶ 4(a)(i).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima
facie showing that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii), the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights to or legitimate
interests in the subject domain names.”).
Complainant asserts that Respondent is not
commonly known by the disputed domain name or by Complainant’s mark. The evidence before the Panel supports a
finding that Respondent is not commonly known by the disputed domain name. Policy
¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)
(finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record).
Complainant also contends that Respondent
used the disputed domain in connection with a fraudulent scheme to pass itself
off as Complainant. Specifically,
Complainant argues that Respondent distributed e-mails pretending to be an employee
of Complainant, and then pointing the disputed domain name to Complainant’s
website in order to complete the ruse.
The Panel finds that such activity is not a bona fide offering of
good or services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb.
Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain
name, confusingly similar to a registered mark, attempts to profit by passing
itself off as Complainant . . . .”); see
also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the respondent attempts to pass itself off as
the complainant online, which is blatant unauthorized use of the complainant’s
mark and is evidence that the respondent has no rights or legitimate interests
in the disputed domain name).
Respondent claims to be the victim of identity theft and has therefore made no contentions under Policy ¶ 4(a)(ii).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent
has intentionally created a likelihood of confusion as to Complainant’s
affiliation with Respondent’s disputed domain name. The Panel finds that Respondent registered
and used the disputed domain name in bad faith 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 Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent).
The
Panel also finds that Respondent engaged in bad faith registration and use
under Policy ¶ 4(a)(iii), because the evidence before
the Panel supports an inference that Respondent attempted to pass itself off as
Complainant. See Vivendi Universal Games v. Ballard, FA 146621
(Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of
the complainant’s website was used at the domain name in order to facilitate
the interception of the complainant’s customer’s account information, the
respondent’s behavior evidenced bad faith use and registration of the domain
name); see also Monsanto Co. v. Decepticons, FA 101536 (Nat.
Arb. Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith).
Respondent claims to be the victim of identity theft and has therefore made no contentions under Policy ¶ 4(a)(iii).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <3mmcompany.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 9, 2008.
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