3M Company v. Bridge Port Enterprises Limited
Claim Number: FA1104001385214
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Bridge Port Enterprises Limited (“Respondent”), Antigua and Barbuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scotchbritecoupons.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2011; the National Arbitration Forum received payment on April 22, 2011.
On April 26, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <scotchbritecoupons.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@scotchbritecoupons.com. Also on April 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 holds trademark registrations for its SCOTCH-BRITE mark (including Reg. No. 677,849, issued May 5, 1959).
Complainant uses its SCOTCH-BRITE trademark in connection with the marketing of home cleaning products.
Respondent registered the disputed <scotchbritecoupons.com> domain name on October 21, 2010.
The disputed domain name resolves to a website containing hyperlinks resolving to the websites of third-parties unrelated to either Complainant or Respondent.
Respondent has been a respondent in previous UDRP cases in which disputed domain names were transferred to various complainants.
Respondent’s <scotchbritecoupons.com> domain name is confusingly similar to Complainant’s SCOTCH-BRITE mark.
Respondent is not commonly known by the disputed domain name, and Respondent does not operate a business or organization under the <scotchbritecoupons.com> domain name.
Respondent has no legitimate connection to Complainant’s SCOTCH-BRITE trademark.
Respondent is using the SCOTCH-BRITE trademark without consent from Complainant.
Respondent does not have any rights to or legitimate interests in the domain name <scotchbritecoupons.com>.
Respondent registered and uses the <scotchbritecoupons.com> 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 same 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 a 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’s registrations with a national trademark authority, the USPTO, for its SCOTCH-BRITE trademark are sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); further see KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of the respondent’s place of business, it being sufficient that a complainant have rights in a mark in some jurisdiction).
Respondent’s <scotchbritecoupons.com> domain name contains Complainant’s entire SCOTCH-BRITE mark, absent only the hyphen, and adds the generic term “coupons, which relates to an aspect of complainant’s business,” and the generic top-level domain (“gTLD”) “.com.” These alterations of Complainant’s mark in forming the contested domain name fail to distinguish the disputed domain name from the mark under the standards of the Policy. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, was confusingly similar to a complainant's mark); 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 entire mark of a complainant combined with a generic word or term); further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Consequently, the Panel holds that Respondent’s <scotchbritecoupons.com> domain name is confusingly similar to Complainant’s SCOTCH-BRITE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <scotchbritecoupons.com> domain name under Policy ¶ 4(a)(ii). Once Complainant makes out a prima facie case in support of this allegation, the burden shifts to Respondent to prove that it does have such rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
Complainant has made out a prima facie case under this head of the Policy. Therefore, and owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003):
A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, that Respondent does not operate a business or organization under the domain name <scotchbritecoupons.com>, that Respondent has no legitimate connection to Complainant’s SCOTCH-BRITE trademark, and that Respondent is using that mark without consent from Complainant. Moreover, the pertinent WHOIS information for the <scotchbritecoupons.com> domain name identifies the registrant only as “Bridge Port Enterprises Limited,” which does not resemble the domain name. On this record, we must conclude that Respondent is not commonly known by the <scotchbritecoupons.com> domain name so as to have rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and therefore had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent’s <scotchbritecoupons.com> domain name resolves to a website containing a search engine and hyperlinks that resolve to unrelated third-party websites. In the prevailing circumstances, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to those hyperlinks. This use of the domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i). 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 contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether the links resolve to competing or unrelated websites, or whether a respondent is profiting commercially from click-through fees); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used a disputed domain name to operate a website featuring links to other websites offering goods and services unrelated to the business of a complainant).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <scotchbritecoupons.com> domain name is evidently part of a pattern of bad faith registration and use of domain names. Respondent has been a respondent in previous UDRP cases in which disputed domain names were transferred to various complainants. See Morgan Stanley v. Bridge Port Enterps. Ltd., FA 1355850 (Nat. Arb. Forum Dec. 11, 2010); see also Grundfos A/S v. Bridge Port Enterps. Ltd., D2008-1263 (WIPO Nov. 25, 2008). Under Policy ¶ 4(b)(ii), this is evidence that Respondent has registered and uses the <scotchbritecoupons.com> domain name in bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use of a domain name, pursuant to Policy ¶ 4(b)(ii), where a respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith, pursuant to Policy ¶ 4(b)(ii), because a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of bad faith cyber-squatting).
In addition, Respondent uses the <scotchbritecoupons.com> domain name to resolve to a website containing links to the websites of third-parties that are unrelated to the business of Complainant. Respondent presumably benefits from the receipt of click-through fees tracing to the visits of Internet users to those links, which visits are facilitated by the fact that Respondent’s domain name is confusingly similar to Complainant’s SCOTCH-BRITE trademark. Internet users, interested in Complainant and its products and services may therefore become confused as to the possibility of Complainant’s affiliation with or sponsorship of the disputed domain name and resolving website. Respondent attempts to profit from this confusion. Respondent’s use of the disputed domain name in this manner constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to a complainant, and to generate click-through revenue from that activity, suggested bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <scotchbritecoupons.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 21, 2011
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