3M Company v. Opalete Pty Ltd c/o Peter Kane
Claim Number: FA0902001249543
PARTIES
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3mppe.biz>, <3mn95.com>, and <3mn99.com>, registered with Namesecure.com, 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.
Jeffrey M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 25, 2009; the National Arbitration Forum received a
hard copy of the Complaint on February 26, 2009.
On February 26, 2009, Namesecure.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <3mppe.biz>, <3mn95.com>, and <3mn99.com> domain names are
registered with Namesecure.com, Inc. and that the Respondent is the current
registrant of the name. Namesecure.com,
Inc. has verified that Respondent is bound by the Namesecure.com, 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 March 4, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 24, 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 postmaster@3mppe.biz, postmaster@3mn95.com, and
postmaster@3mn99.com by e-mail.
The electronic copy of Respondent's
Response was filed in a timely manner but the hard copy was not received prior
to the response deadline. Thus, the
Response was not in compliance with ICANN Supplemental Rule 5.[1]
Complainant filed an “Additional Submission” on March 24, 2009 in a
timely manner according to the FORUM’s Supplemental Rule 7.
On March 31, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant 3M is the owner of the 3M mark and trade name, which it has
used since at least as early as 1906 in connection with abrasive products. 3M has operations in over 60 countries,
including
3M owns over 200
Complainant alleges that the disputed domain names, <3mppe.biz>, <3mn95.com>, and <3mn99.com>,
are confusingly similar to the 3M mark.
Complainant contends that the domain names incorporate the distinctive
3M mark in their entirety, adding only the common descriptive terms “ppe”,
“n95”, and “n99.” According to
Complainant, the term “ppe” is an abbreviation for “personal protective
equipment,” a category of product that includes face shields and respirators. See Complaint, Exhibit D. Complainant further asserts that the terms
“n95” and “n99” refer to National Institute for Occupational Safety and Health
(NIOSH) standards for filtration efficiency of face masks. See
Complaint, Exhibits E and F.
3M contends that Respondent uses the disputed domain names to redirect
to its main website at <medtradeasia.com>, which lists an address for
Respondent in
Complainant argues that Respondent has no rights or legitimate
interests in the disputed domain names.
It maintains that Respondent is not commonly known by the domain names,
does not operate a business under the 3M name or mark, has no legitimate
connection to Complainant’s 3M mark, and is not making a legitimate
non-commercial or fair use of the domain names in issue.
Complainant alleges that the domain names in dispute were registered
and are being used in bad faith. It
first contends that its registrations for the 3M mark constitute constructive
notice of its rights and that Respondent may, thus, be found to have knowingly
used the 3M mark in violation of Complainant’s rights.
Complainant accuses Respondent of operating its websites to divert to
its main website customers searching for 3M respiratory face masks and other 3M
personal protective equipment and advertise Respondent’s competing products.
According to Complainant, Respondent, through its use of the disputed
domain names, intentionally attempts to attract, for commercial gain, internet
searchers to a website, by creating a likelihood of confusion with
Complainant’s mark as to source, sponsorship, affiliation, or endorsement of
the website or location or of a product or service on the website or location,
within the meaning of paragraph 4(b)(iv) of the Policy.
B. Respondent
Respondent admits that Complainant has a registered trademark in the
mark 3M but denies that such registration gives Complainant any property rights
over any products not patented by Complainant.
Respondent contends that 3M does not own patents to the universal
terminology of Personal Protection Equipment (“PPE”), NIOSH Filtration Standard
95 (“N95”), or NIOSH Filtration Standard 99 (“N99”).[2] According to Respondent, the term “PPE” is
used by tens of thousands of companies. See
Response, Exhibit A. Respondent contends
that Complainant’s Australian attorneys, in an e-mail dated April 15 2008,
“knowingly and falsely” claimed the terms “PPE”, “N95”, and “N99” as brand
names of Complainant. See Response, Exhibits D and E. Respondent notes that it advised Complainant
that its claims regarding these terms constituted “misleading conduct.” See
Response, Exhibit F.
Respondent asserts that the domain names in issue are not confusingly
similar to Complainant’s 3M mark. It
points out that Complainant always identifies itself by a space between 3M and
the relevant product or business division and that there are in excess of 65 million
references to 3M on the Internet, a majority of which are not related to
Complainant. Respondent also contends
that Complainant has never used the domain names in dispute “and as such should
not be able to selectively adopt all names that might be considered by them to
be similar to their products or otherwise create a monopoly.”
Respondent also suggests that its Pall product does not compete with
any of Complainant’s products.
Respondent further argues that it has rights or legitimate interests in
the domain names. While it admits that
it is not commonly known by the names 3M, PPE, 3M N95, or 3M N99, it indicates
that it owns the following domain names:
<birdfluppe.biz>; <h5n1ppe.com>; <h5n1protection.biz>;
<sarsppe.com>; <cl7ppe.com>; <cl7protection.com>; and <h5n1ffp2.com>.
Respondent contends that it has a legitimate commercial and marketing
interest in the domain names in dispute and that such interest was expressed to
Complainant in a letter dated April 19, 2008.
In such letter Respondent asserts that its subsidiary Medical Trading
Asia Pty Ltd has three models of PPE for sale in three markets in three sizes for
three parts of the body. See Response, Exhibit F.
Finally, Respondent denies that it is using the domain names in bad
faith, alleging that Complainant’s assertions to the contrary are “without any
substantiation or evidence.”
C. Additional Submissions
In its “Additional Submission,” Complainant states that Respondent is
unable to provide a legitimate explanation as to why it is using the 3M mark in
the disputed domain names. To the extent
Respondent suggests that such use is justified by the fact that the domain
names stand for “three markets,” three models,” “three sizes,” and “three parts
of the body,” Complainant asserts that such explanation is “contrived and
unsupported by evidence.”
Complainant also takes issue with Respondent’s contention that Pall’s
face mask is different from those sold by 3M.
According to Complainant, “[c]learly, Respondent is using the 3M mark in
combination with the face mask descriptors in its domains to attract people
seeking these 3M products to Respondent’s site, where Pall face masks are
advertised.”
FINDINGS
The Panel finds that: (1) each of the
disputed domain names is confusingly similar to the 3M trademark and that
Complainant has rights in such mark; (2) Respondent has no rights or legitimate
interests in any of the disputed domain names; and (3) each of the disputed
names was registered and is being used in bad faith.
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 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.
The Panel finds that each of the disputed
domain names – <3mppe.biz>, <3mn95.com>, and <3mn99.com> – is confusingly
similar to the mark 3M. As noted by
Complainant, each of the domain names incorporates the 3M mark in its
entirety. The evidence further
establishes that the terms “ppe”, “n95”, and “n99” have well-known, descriptive
meanings within the relevant trade.
Thus, their use as part of the domain names does not avoid a
determination of confusing similarity. See, e.g., Kohler Co. v. Curley, FA
890812 (Nat. Arb. Forum March 5, 2007) (finding confusing similarity where
kohlerbaths.com contained complainant’s mark in its entirety adding the
descriptive term “baths”). Nor does the
addition of a generic top-level domain, such as “.biz” and “.com,” serve to
adequately distinguish the domain names from Complainant’s mark. See,
e.g., Jerry Damson, Inc. v.
The Panel further determines, based on
evidence establishing Complainant’s trademark registrations covering, and
longstanding use of, the 3M mark, that Complainant has rights in such mark. See Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007). To
the extent Respondent may be arguing that Complainant’s 3M mark and
registrations are not valid, the Panel notes that the existence of such
registrations establish a prima facie
case of a complainant’s rights in the mark for purposes of the Policy. See
Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29,
2005). Respondent has not presented any
evidence to overcome this prima facie
case.[3]
While Respondent alleges that Complainant
always puts a “space” between 3M and its products or business division, that
Complainant has never used the domain names in dispute, and that its Pall CL7
product utilizes a different method of filtration from that used by 3M, such
allegations, even if true, do not support a contrary determination on the issue
of confusing similarity.
The Panel notes that blank spaces are not
allowed in a domain name. Further, the fact that Complainant has never used the
disputed domain names is irrelevant to the outcome of this dispute. Obviously, Complainant cannot use the
disputed domain names since they are registered by Respondent. Finally, most ICANN panels, including this
one, have adopted the position that the issue of confusing similarity should be
determined based on a comparison of the Complainant’s mark and the alphanumeric
string constituting the domain names in issue; in other words, traditional
likelihood of confusion factors, such as the relatedness of the parties’ goods
and/or services, are not relevant to this element of the Policy. See,
e.g., Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000).
The Panel concludes that Complainant has
sustained its burden of proving that Respondent has no rights or legitimate
interests in any of the disputed domain names. The Respondent admits that it is not commonly
known by the domain names and has no connection with Complainant. And, despite Respondent’s contention to the
contrary, the evidence clearly establishes that Respondent is using the domain
names commercially. The disputed domain
names bring the Internet user to websites from which one may purchase products
similar in nature to that sold by Complainant.
Finally, given the confusing similarity
between the disputed domain names and Complainant’s 3M mark, as well as the
relatedness of the parties’ goods, the Panel concludes that Respondent is not
engaged in a bona fide offering of
goods or services, within the meaning of paragraph 4(c)(i) of the Policy. See,
e.g., Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006).
The Panel concludes that each of the disputed
domain names was registered and is being used in bad faith. As determined above, the disputed domain
names are confusingly similar to Complainant’s mark. Further, even if the filtration mediums used
on Complainant’s and Pall’s face masks differ, as alleged by Respondent, they
are sufficiently related so as to give rise to a likelihood of confusion. Thus,
the evidence establishes that Respondent intentionally attempted to attract,
for commercial gain, Internet users to its websites by creating a likelihood of
confusion with Complainant’s 3M mark as to source, sponsorship, affiliation, or
endorsement of such sites or of the products advertised and sold on such sites,
within the meaning of paragraph 4(b)(iv) of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mppe.biz>, <3mn95.com>, and <3mn99.com>
domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: April 13, 2009
[1] The hard copy of the Response was received on April 7, 2009. Although the Response was not in technical compliance with the Rules, the Panel has decided, in the exercise of its discretion, to consider the submission in its determination of the matter. See J.W. Spear & Sons PLC v. Fun League Mgmt, FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (where respondent submitted a timely response electronically but failed to submit a hard copy 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”).
[2] Respondent’s patent-related arguments are misguided. Complainant, in this action, is not seeking to prevent Respondent from selling any products or seeking to prevent Respondent from using the terms “PPE”, “N95”, or “N99” per se.
[3] While Respondent contends that there are 65 million references to 3M on the Internet, a majority of which do not relate to Complainant, Respondent has not presented any evidence in support of such contention.
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