3M Company v. Ravindra Bala
Claim Number: FA1001001303167
Complainant is 3M Company (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C., P.A.,
REGISTRAR
The domain name at issue is <scotchtapes.com>, registered with Godaddy.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 18, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <scotchtapes.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 January 20, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2010 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@scotchtapes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <scotchtapes.com> domain name is confusingly similar to Complainant’s SCOTCH mark.
2. Respondent does not have any rights or legitimate interests in the <scotchtapes.com> domain name.
3. Respondent registered and used the <scotchtapes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, describes itself as a “global innovator” with annual sales above $25 billion. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SCOTCH mark (e.g., Reg. No. 875,439 issued on August 26, 1969).
Respondent registered the <scotchtapes.com>
domain name
on July 4, 2004. Respondent’s disputed
domain name previously resolved to a website with third-party links to websites
offering products in competition with Complainant.
Respondent’s current use of the disputed domain name resolves to a website that advertises the sale of the disputed domain name publicly and with Respondent’s contact e-mail address listed.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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 has obtained multiple trademark registrations
for the SCOTCH mark with the USPTO (e.g.,
Reg. No. 875,439 issued on August 26, 1969).
The Panel finds that Complainant has established rights in the SCOTCH
mark for the purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum
Complainant argues that the disputed domain name <scotchtapes.com> is confusingly similar to
the SCOTCH mark because it encompasses the SCOTCH mark in its entirety and
merely adds a generic term “tapes” which is a product Complainant is widely
known for producing. The Panel finds
that a disputed domain name that uses the entire mark and simply adds the
generic term ‘tapes’ does not distinguish the disputed domain name from the
registered mark of Complainant pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298
(eResolution
Complainant also contends that the disputed domain name cannot
be distinguished from its registered mark because of the addition of the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of a gTLD is not relevant in
distinguishing the disputed domain name from the Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these
allegations. Once the Complainant has
produced a prima facie case the
burden shifts to the Respondent to show it does have rights or legitimate
interests in the disputed domain name. See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must
first make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and
then the burden shifts to [the] respondent to show it does have rights or
legitimate interests.”); see also Domtar, Inc. v. Theriault., FA
1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”). The Panel finds that the
Complainant has produced a prima facie
case. Due to the Respondent’s failure to
respond to these proceedings, the Panel may assume Respondent does not have any
rights or legitimate interests in the disputed domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant asserts that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain name. Complainant alleges that Respondent has previously used the disputed domain name to resolve to a website that offers click-through links and advertisements for Complainant’s competitors in their market. The Panel finds that Respondent’s previous use of the disputed name to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
Complainant further alleges that Respondent’s disputed domain name currently (on or before January 14, 2010) resolves to a website that has the disputed domain name listed for sale and contains the Respondent’s contact information. The Panel finds that Respondent’s current use of the website to list the disputed domain name for sale is further evidence of the Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s current use to offer the disputed domain name for sale should be construed as Respondent’s bad faith registration of the domain name pursuant to Policy ¶ 4(a)(iii). Complainant offers as evidence a screen shot showing the disputed domain name. The website says, “This Domain Name Is For Sale” and lists Respondent’s email address. The Panel finds that the offering of the disputed domain name for sale is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant also alleges that Respondent can be shown to
have registered and used the disputed domain name in bad faith by diverting
Internet users to Respondent’s website for commercial gain. Respondent presumably made money on
click-through fees that brought users to other websites in competition with
Complainant. The Panel finds that this
previous use is further evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).
See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006)
(finding that the respondent’s use of the <arizonashuttle.net> domain
name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to the respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also University of Houston Sys. v.
Salvia Corp., FA 637920 (Nat. Arb. Forum Mar.
21, 2006) (“Respondent is using the
disputed domain name to operate a website which features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. Such use for
Respondent’s own commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scotchtapes.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 23, 2010
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