3M Company v. Peter Mark
Claim Number: FA1001001303274
Complainant is 3M Company (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C., P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <scotchtape.info>, registered with Moniker.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 18, 2010.
On January 26, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <scotchtape.info> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 27, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@scotchtape.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is an international innovator and seller of numerous products with annual sales above $25 billion.
Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SCOTCH mark (including Reg. No. 805,065, issued on March 8, 1966).
Respondent registered the <scotchtape.info>
domain name
on November 25, 2004.
Respondent is not using the disputed domain name in
connection with a bona fide offering
of goods or services, nor is Respondent making a noncommercial or fair use of
the disputed domain name.
Respondent’s domain name resolves to a website displaying third party links to websites which offer products in competition with the business of Complainant.
Respondent’s <scotchtape.info>
domain name is confusingly similar to Complainant’s SCOTCH mark because it encompasses
Complainant’s SCOTCH trademark in its entirety, and merely adds the generic
word ‘tape,’ a term closely associated with Complainant’s business.
Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark.
Respondent does not have any rights to or legitimate interests in the <scotchtape.info> domain name.
Respondent registered and uses the <scotchtape.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the SCOTCH trademark 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 Apr. 17, 2006): “Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.” It is of no consequence that Complainant’s
mark is registered in the
Complainant argues that the disputed domain name <scotchtape.info> is confusingly similar to the SCOTCH trademark because it encompasses the SCOTCH mark in its entirety, and merely adds the generic word ‘tape,’ a term closely associated with Complainant’s business. We agree. A domain name that uses a complainant’s entire mark and simply adds the descriptive term ‘tape’ does not distinguish the domain name from the registered mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combined a complainant’s mark with a generic term that had an obvious relationship to that complainant’s business); 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 contained the mark of a complainant combined with a generic term).
Similarly the addition of the generic top level domain
(“gTLD”) “.info” is not enough to distinguish the disputed domain name from Complainant’s
SCOTCH mark. A gTLD is not relevant in
distinguishing the disputed domain name from Complainant’s mark because a gTLD
is required of every domain name. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (concluding that the affixation of a gTLD to a domain name is irrelevant
to a Policy ¶ 4(a)(i) analysis); see also
Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s SCOTCH trademark for purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the disputed domain name. Complainant is required to make out a prima facie case in support of its allegations. Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a “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.
Complainant has produced a prima facie case. Therefore,
owing to Respondent’s failure to respond to these proceedings, we may fairly
presume that Respondent does not have any rights to or legitimate interests in
the disputed domain name. See Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent failed to respond to the allegations of a complaint).
We will nonetheless examine the evidence of record, in light of the criteria set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has any rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making a noncommercial or fair use of the disputed domain name, because Respondent is using the disputed domain name to resolve to a website that offers click-through links and advertisements for Complainant’s competitors in their market. Respondent does not deny these assertions. We are therefore constrained to conclude that Respondent’s use of the disputed name to redirect Internet users to Complainant’s competitors, presumably for its financial gain in the form of click-through fees, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using contested domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because that respondent used the domain names to divert Internet users to a website that offered services competing with those offered by a complainant under its marks); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent was using the domain name to operate a website containing links to various commercial websites competing with the business of a complainant, which the panel found not 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 contends that Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. Again Respondent does not contest this assertion of the Complaint. Moreover, the WHOIS information for the disputed domain name identifies Respondent only as “Peter Mark.” We conclude therefore that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name).
Therefore, the Panel finds that Respondent does not have rights to or legitimate interests in the disputed domain name for purposes of Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to attract Internet users to its website by creating a likelihood of confusion between Complainant’s SCOTCH mark and the disputed domain name. Respondent presumably receives click-through fees for the links displayed on its website. This is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where that respondent gained commercially from the likelihood of confusion between a complainant’s AIM mark and the competing instant messaging products and services advertised on that respondent’s website which resolved from the disputed domain name); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
[T]he
Panel finds the respondent is appropriating the complainant’s mark in a confusingly
similar domain name for commercial gain, which is evidence of bad faith
registration and use pursuant to Policy ¶4(b)(iv).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <scotchtape.info> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 4, 2010
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