3M Company v. Asya Rahim c/o einfusion
Claim Number: FA0810001231905
Complainant is 3M Company (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson
P.C.,
The domain name at issue is <postitnotes.net>, registered with 1 & 1 Internet Ag.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2008. At the request of the National Arbitration Forum, Complainant amended its Complaint on November 06, 2008, so as to link the Respondent’s name in the section for Respondent information, as it is listed in the header of the Complaint.
On November 4, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <postitnotes.net> domain name is registered with 1 & 1 Internet Ag and that the Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 November 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 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@postitnotes.net by e-mail.
An electronic Response was received prior to the November 26, 2008 Response deadline. However, the Response was not received in hard copy by the Forum prior to the Response deadline and thus was deemed deficient pursuant to ICANN Rule 5.
Complainant submitted an Additional Submission, which was received by the Forum on December 4, 2008.
The Panel will consider the threshold issues of the Response and the Additional Submission, in the next section, captioned “Threshold Issues.”
On December 04,
2008, pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Carol M. Stoner, Esq., as Panelist.
THRESHOLD ISSUES
Deficient Response
Respondent has
provided a Response that was deemed deficient by the National Arbitration Forum
because a hard copy of the Response was not received by the Forum prior to the
November 26, 2008 Response deadline. The
Panel is empowered to decide whether or not to consider Respondent’s
submission, as being in compliance with ICANN Rule No. 5. Said Rule states as follows:
The Response
(a) Within twenty (20) days of the date of
commencement of the administrative proceeding the Respondent shall submit a
response to the Provider.
(b) The response shall be submitted in hard copy and
(except to the extent not available for annexes) in electronic form.
(vii) State that a copy of the Response has been
sent or transmitted to the Complainant, in accordance with Paragraph 2(b).
The
Panel, in its authorized discretion, has decided to set aside the formal
deficiencies of the late filing of the electronic response, as the technical
breach did not prejudice the rights of the Complainant, while the Respondent
would be unduly prejudiced by the Panel’s decision to exclude the Response.
Therefore, the Panel has ruled to consider Respondent’s Response as being in
substantial compliance with the intent of ICANN Rule No. 5, and as such, the
Response will be considered in the decision making process. However, Panel has
reserved its rights to accord Respondent’s untimely electronic Response its due
weight. See Strum
v. Nordic Net
Additional Submission
In accordance
with Supplemental Rule 7(a), an Additional Submission is due five calendar days
after the date the Response is received by the National Arbitration. Here, the Response was not served on 3M by
Respondent. Rather 3M was notified of
the Response by the National Arbitration Forum, via e-mail, on Monday, December
1, 2008. 3M then submitted its
Additional Submission three calendar days after receipt of the Response by the
Forum, that is, December 4, 2008.
The Panel, in
its authorized discretion, agrees with the Forum that this Additional Submission,
filed three days subsequent to Complainant’s receipt of its notice of the Response,
was timely filed.
RELIEF SOUGHT
Complainant requests that the domain name <postitnotes.net> be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges as follows:
3M Company was founded in 1902 and was originally known as the Minnesota Mining and Manufacturing Company. The Company initially focused on mining for mineral deposits and manufacturing sandpaper products. Since then, 3M has grown to be a global innovator, with annual sales exceeding $20 billion.
3M introduced the now famous POST-IT brand of adhesive backed paper and stationery notes (referred to as POST-IT® Notes) approximately thirty (30) 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 home and 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 of the most well known and famous brands in the world.
3M is the owner of thirteen (13) U.S. Trademark Registrations for its POST-IT mark registered and used in connection with a wide variety of stationery and office related products including 3M’s first U.S. registration for POST-IT—incontestable Registration No. 1,046,353—issued August 17, 1976, for “paper and cardboard sheet material having adhesive coating on both sides thereof for attachment to walls or other vertical surfaces to hold displays or other messages in place, in Class 16.”
Complainant further alleges that: Respondent, knowing of the fame of the POST-IT trademark, registered and is using the <postitnotes.net> domain name to attract Internet users to Respondent’s website to generate click-through revenue. Respondent’s website hosts a variety of links to and advertisements for third parties, many of which sell stationery products and office supplies that compete with 3M’s products
3M is the owner of US common law rights in the POST trademark, based upon its long and continuous use of the famous brand in connection with numerous stationery and office related products, including POST-IT notes, dating back to the 70’s.
3M is the owner of thirteen (13) US Trademark registrations for its POST-IT mark, six of which have become incontestable.
The <postitnotes.net> domain name wholly incorporates and is confusingly similar to 3M’s famous POST-IT trademark, as the domain name merely incorporates and is confusingly similar to 3M’s famous POST-IT trademark, and as the domain name merely couples the POST-IT trademark with the generic word “notes.”
Respondent has no rights or legitimate interests in the domain name as Respondent is not using the <postitnotes.net> domain name in connection with a bona fide offering of goods or services; Respondent is not maintaining a non-commercial fair use of the domain name; and Respondent has never been known as, or referred to as “Postit Notes.” Rather, Respondent uses the <postitnotes.net> domain name to attract Internet users to Respondent’s commercial website that is laden with revenue-generating advertisements and links.
Complainant also alleges that Respondent has registered and has used the disputed domain name in bad faith, as Respondent was attempting to attract for commercial gain, internet users to its website by creating a likelihood of confusion.
Complainant lastly alleges that Respondent’s knowledge of the famous POST-IT Note is further evidence of bad faith. Respondent’s knowledge is evidenced by its inconceivably coincidental use of the <postitnotes.net> domain name to host sponsored links for office supplies and stationery products. In fact, certain sponsored links that appear on Respondent’s websites refer to 3M specifically and its POST-IT trademark, including the federal registration symbol.
B. Respondent
Respondent alleges as follows:
“The domain name <postitnotes.net> is a generic name. The Complainant has rights to the term “PostIt”. <postitnotes.net> refers to IT help and information in the Information Technology field. It has nothing to do with sticky notes.
I own many domains. It is not a habit with me to purchase names intending to bank on established reputations. I have a specific idea in mind for every domain that I own. <postitnotes.net> is meant to provide IT – (Information Technology) tools and information.
The domain was parked along with over 200 other domains that I own. I treat this domain no different than any other one of my projects; once the funding is available the website is built for its specific purpose; to date this domain has been removed from the parking service until it will be launched for its intended purpose. I hope this will alleviate any confusion as to what my intensions (sp.) are.”
C. Additional Submissions
Complainant filed a timely Additional Submission on December 4, 2008. In its Additional Submission, Complainant further alleged as follows: Respondent did not furnish any evidence demonstrating that the term <postitnotes.net> is a generic term that refers to IT help. Moreover, this argument is irrelevant in that the issue to be determined is whether the domain name is identical or confusingly similar to a trademark in which 3M has rights. Here, it is unquestionable that a domain name that couples 3M’s POST_IT trademark with the type of product (stationery related items) most widely associated with the POST-IT trademark is a domain name that is confusingly similar to 3M’s POST-IT trademark.
Complainant also argues in its Additional Submission that Respondent operates under the business name “Einfusion” and gives no indication that this business is commonly known by Postit Notes or any variant thereof. Respondent’s further argument that “I have a specific idea in mind for every domain that I own. <postitnotes.net> is meant to provide IT – (Information Technology) tools and information.” is in vain. Respondent offers no documentary evidence, or evidence on its website that Respondent has or intends to offer information technology related services, let alone services known as “POST IT services, or any variation thereof.
Lastly, Complainant alleges in its Additional Submission that Respondent registered and is using the <postitnotes.net> domain name in bad faith, in that Respondent parked the disputed domain name with a parking service that provided sponsored links from competing services, and subsequently ‘unparked’ the domain name with a service that advertised parking services. The “unparking” of the domain name after being notified of the dispute is further evidence of bad faith. Bad faith is also evidenced by Respondent’s admission that “[t] he Complainant has rights to the term ‘PostIt.’”
(1) the domain name <postitnotes.net> registered by the Respondent is identical or confusingly similar to the trademark POST-IT a trademark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name
<postitnotes.net>; and
(3) the domain name, <postitnotes.net> has been registered and is being used in bad faith.
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:
(4) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(5) the Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant has provided the Panel with
authoritative evidence that it first registered its POST-IT mark with the
United States Patent and Trademark Office (“USPTO”) on August 17, 1976 (Reg.
No. 1,046,353). The Panel finds that
Complainant’s registration sufficiently establishes its rights in the POST-IT
mark pursuant to Policy ¶ 4(a)(i). See
Complainant contends that Respondent’s <postitnotes.net> domain name is confusingly similar to Complainant’s POST-IT mark because the disputed domain name omits the hyphen and adds the descriptive term “notes,” as well as the generic top-level domain(“gTLD”) “.net.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because the deletion of a hyphen and the additions of a descriptive term and a gTLD do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also 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 the purpose of determining whether it is identical or confusingly similar).
While Respondent contends that the <postitnotes.net> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to
Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Rights or
Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 or legitimate interests in the subject domain names.”
Respondent registered the domain name <postitnotes.net> with 1&1 Internet AG on December 7, 2006, in accordance with information provided by WHOIS data.
However,
Complainant contends that Respondent is not commonly known by the <postitnotes.net>
domain name, as the WHOIS information
lists Respondent as “Asya Rahim c/o einfusion.” Further, Complainant asserts
that it has not authorized Respondent to use its POST-IT mark. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Complainant provides credible evidence that Respondent’s disputed domain name resolves to a parked website which displays links to products which compete with Complainant’s sticky note business. The Panel finds Respondent’s competing use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent contends that it intends to use the disputed domain name to provide Information Technology (“IT”) help and information. “Once the funding is available the website is built for its specific purpose” is mere illusory language on the part of the Respondent, and thus is not sufficient evidence to show demonstrable preparations to use the disputed name. The Panel finds that Respondent’s failure to provide such supporting evidence of intent to use the disputed domain name is, in and of itself, substantive evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).
Complainant offers documentary evidence that Respondent is using the disputed domain name to advertise competing sticky note products. Complainant’s Exhibit 5 consists of a copy of Respondent’s domain page <postitnotes.net>. This printed page shows sponsored listings by such competing sponsors as <thestationerystudio.com> and <123print.com>, for such competing products as ‘unique sticky notes’ and ‘Custom 3M Post-It Notes.’ Yet, Respondent states in a bold faced manner in his Response that “It (<postitnotes.net>) has nothing to do with sticky notes.” Despite Respondent’s disavowals to the contrary, the Panel finds that Respondent’s actual competing use of the disputed domain name constitutes disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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 Par. 4(b)(iii) [and] (iv).”); see also 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)
Furthermore, Complainant contends that Respondent receives compensation by generating click-through fees from its use of the confusingly similar domain name. The Panel takes notice of the general Internet method of doing business of generating click-through fees as a strong inference that Respondent is in fact, receiving click-through fees through its use of the disputed domain name. The Panel finds Respondent’s actions are an attempt to profit through the method of creating confusion in the minds of Internet consumers as to Complainant’s affiliation with the disputed domain name. Therefore, the Panel finds that Respondent’s actions are 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 TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’ website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel has also been influenced by Complainant’s Additional Submission which adduces through its Exhibit A that the website to which the <postitnotes.net> domain name now advertises a domain name parking service. Advertising another commercial enterprise through the device of a confusingly similar domain name is evidence of bad faith. Further, the newly associated website also fails to contain information about information technology. In addition, Panel agrees with Complainant’s assertion that, the alteration of the content of the offending website, subsequent to notification of the domain name dispute, is evidence of bad faith. See Lilly ICOS LLC v. Focker, D2005-0729 (WIPO Aug. 30, 2005) (“The Respondent cannot avoid a finding that he is using a domain name in bad faith by relying on alterations to his website following the Complaint. The present tense in paragraph 4(a)(iii) of the Policy must be intended to refer to the position prior to notice of the dispute, in line with paragraph 4(c)(i) of the Policy, since otherwise the Policy could readily be frustrated.”) (emphasis added).
Having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <postitnotes.net> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Esq., Panelist,
Dated: December 18, 2008
National Arbitration Forum