3M Company v. Opalete Pty Ltd c/o Peter Kane
Claim Number: FA0902001249543
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.
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.
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 email@example.com, firstname.lastname@example.org, and email@example.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.
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.
Complainant requests that the domain names be transferred from Respondent to 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,
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
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.
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”). 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.”
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.
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.
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.
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
 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”).
 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.
 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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