3M Company v. Allan Nazario d/b/a Penbras International
Claim Number: FA0902001247573
Complainant is 3M Company (“Complainant”), represented
by Chet F. Garner, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mpromotional.com>, registered with 1 & 1 Internet Ag.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2009.
On February 16, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <3mpromotional.com> 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 February 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 11, 2009 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 by e-mail.
A timely Response was received in electronic format only prior to the Response deadline, and not in hard copy on March 11, 2009. The Response is therefore incomplete under ICANN Rule 5.
Complainant submitted an Additional Submission to the National Arbitration Forum on March 16, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On March 19, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
According to Complainant, the
latter commenced use of the 3M trademark and trade name as early as
Complainant also alleges offer of over 50,000 products and services in a wide variety of fields (office supplies, home cleaning products, aftermarket automotive supplies, medical and surgical supplies, etc…) under the 3M trademark.
Complainant asserts sale of many of its products through its promotional markets divisions which allow customers to customized 3M’s products. Complainant uses the following link for that purpose: <3m.com/promote>.
Complainant also contents that
the trademark 3M is well-known and has been found to be well-known and
exceptionally strong by
Complainant is the holder of over 200
It is notably the holder of the following trademark granted by the United States Patent and Trademark Office (hereafter “USPTO”):
- Trademark 3-M n°. 405,413 registered on February 1, 1944.
Respondent registered the disputed domain name on March 22, 2006.
The disputed domain name leads internet users to a website which contains Complainant’s web page <3m.com/promote> in a frame. Respondent’s contact information (telephone and fax numbers) appears as the title of the page.
Complainant contends the following:
- That the domain name <3mpromotional.com> is confusingly similar to Complainant’s trademark;
- That Respondent does not have any rights or legitimate interests in the domain name;
- That Respondent registered and uses the domain name in bad faith.
Respondent’s Response was submitted only by electronic format, and not in hard copy prior to the Response deadline. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
As a consequence, the Panel cannot take this Response into consideration (See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003)).
Respondent’s allegations will nevertheless be mentioned since they are addressed by Complainant in its Additional Submissions.
C. Additional Submissions
Complainant provided the National Arbitration Forum with its Additional Submissions in a timely manner, according to the Forum’s Supplemental Rule 7.
As a consequence, the Panel can take these submissions into consideration.
First, when Respondent asserts that his company is registered with the Advertising Specialty Institute (hereafter “ASI”), Complainant recalls that ASI is a media and marketing organization serving the advertising specialty, services which Complainant has used on occasion. The fact that Complainant uses ASI does not mean that Respondent may use the trademark 3M in a domain name.
Second, when Respondent seems to assert that he has been authorized to link to Complainant’s website and to sell 3M products, Complainant answers that it has not managed to identify any document containing such authorization.
Third, when it comes to Respondent’s claim to sell 3M products, which would grant him a legitimate interest justifying the registration of the domain name, Complainant argues that such a fact does not provide per se a legitimate interest in the disputed domain name.
Fourth, Respondent allegedly tried to sell the domain name to Complainant for a high price.
Complainant concludes that Respondent has not provided the National Arbitration Forum with elements allowing the latter to rebut Complainant’s demand to transfer the domain name.
Complainant has been doing business with the trademark and trade name 3M since 1906. For over a century, Complainant has spent substantial time, efforts and funds to develop the goodwill associated with the trade name and trademark 3M.
It has a national and international presence. It owns various trademarks consisting of 3M. It has also been operating a website <3m.com> since 1988 to market its products services.
Respondent’s <3mpromotional.com> domain name was registered on March 22, 2006 and currently resolves to a website which contains Complainant’s web page <3m.com/promote> in a frame. Respondent’s contact information (telephone and fax numbers) appears as the title of the page.
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 asserts its rights in the 3M trademark through its registration of the mark with the USPTO (Reg. No. 405,413 issued February 1, 1944).
The Panel finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a Complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
A search on the website <uspto.gov> also provides evidence that Complainant is the holder of various federal 3M trademarks registered prior to the registration of the domain name.
Complainant contends that Respondent’s <3mpromotional.com> domain name contains Complainant’s 3M mark while adding the generic word “promotional” and the generic top-level domain “.com.”
The Panel finds that the 3M trademark remains the dominant portion of the disputed domain name.
Indeed, the remaining additions “promotional” and “.com” are insufficient to cause a meaningful distinction. See 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 [extensions such as the extension <.com>] are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The word “promotional” actually increases the likelihood of confusion with Complaint’s trademark since the latter is notably used in connection with promotional market divisions allowing customers to personalize 3M products.
Therefore the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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.”).
First, Complainant asserts that Respondent is not commonly known by the disputed domain name and that Respondent lacks any right to use Complainant’s mark.
On these points, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the Respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the Respondent was commonly known by the disputed domain name). The Panel also finds that Respondent has never been authorized to use the trademark 3M by Complainant.
Second, Complainant contends that the domain name resolves to a website which contains Complainant’s web page <3m.com/promote> in a frame. Respondent’s contact information (telephone and fax numbers) appears as the title of the page. Complainant argues that Respondent has sought to pass itself off as Complainant through this activity, and that Respondent has not adequately disclosed the nature of its relationship (or lack there of) with Complainant.
On these points, the Panel finds that Respondent has failed to create 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet
users seeking Complainant’s website to a website of Respondent and for
Respondent’s benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Kmart of
The Panel also notes that even if Respondent was actually authorized to sell 3M products, this did not amount to an authorization to use Complainant’s trademark in Respondent’s domain name. See Crocs, Inc. v. Chustz, FA 1002536 (Nat. Arb. Forum July 24, 2007) (“While evidence in the record suggests Complainant has authorized Respondent to sell Complainant’s goods bearing the CROCS mark, Complainant has not authorized Respondent to use the CROCS mark in conjunction with a domain name.”).
Complainant has therefore made a prima facie case. Respondent has not demonstrated it does have rights or legitimate interests in the domain name.
The Panel concludes that the Complainant has satisfied Policy ¶ 4(a)(ii).
First, Complainant contends that
the trademark 3M is famous and has been found to be famous and exceptionally
The Panel deems that Complainant has proven that the trademark 3M was at least well-known, if not famous, when the domain name was registered. As a consequence, it appears unlikely that respondent did not have Complainant’s trademark in mind at the time of registration. See Marriott Int’l Inc. v. Radu,. FA 93637 (Nat. Arb. Forum Mar. 30, 2000) (“Respondent knew or should have known of the existence of the entities known as Marriott Hotels”).
Second, Complainant contends in its Complaint and Additional Submission that Respondent listed the disputed domain name on an auction site for $9,995, and recently demanded $8,400 to transfer the domain name to Complainant.
On this matter, the Panel finds that Respondent intended to sell the disputed domain name for more than its registration costs at the time of registration, which constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the Respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that Respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Third, Complainant contends that Respondent, by passing itself off as Complainant, has sought to profit by creating a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website for commercial gain.
The Panel deems that Respondent engaged in bad faith registration and use under 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 the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where Respondent used the disputed domain name to sell Complainant’s products without permission and mislead Internet users by implying that Respondent was affiliated with Complainant).
The Panel finds that the Complainant satisfied ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mpromotional.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: April 2, /2009
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