3M Company v. li liandou / Robinson.Zeng / Zeng Xian Yun
Claim Number: FA1110001410335
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is li liandou / Robinson.Zeng / Zeng Xian Yun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3m-privacyfilter.com>, registered with Hichina Zhicheng Technology Ltd., and <3mprivacyfilter.org>, registered with Xin Net Technology Corporation.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2011; the National Arbitration Forum received payment on October 5, 2011. The Complaint was submitted in both Chinese and English.
On October 7, 2011, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <3m-privacyfilter.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology 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 October 7, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <3mprivacyfilter.org> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 October 10, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 31, 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@3m-privacyfilter.com and postmaster@3mprivacyfilter.org. Also on October 10, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names are confusingly similar to Complainant’s 3M mark.
2. Respondent does not have any rights or legitimate interests in the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names.
3. Respondent registered and used the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant designs, markets, and sells a wide range of products, including accessories for computers and related consumer electronics, such as privacy filters, under its 3M mark. Complainant holds long standing trademark registrations for its 3M mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 767,229 registered March 24, 1964) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 7,088,304 registered December 1, 2008).
Respondent registered the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names on January 8, 2011 and January 19, 2010 respectively. The disputed domain names resolve to websites that sell counterfeit privacy filters and other competing computer-related accessories.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel has determined, based on the content of the resolving websites and the WHOIS information, that the same entity registered and controls both of the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names.
Complainant provides, as evidence of its Policy ¶ 4(a)(i) rights, proof of its trademark registrations for its 3M mark with the USPTO (e.g., Reg. No. 767,229 registered March 24, 1964) and SAIC (e.g., Reg. No. 7,088,304 registered December 1, 2008). The Panel determines that such evidence establishes Complainant’s rights in its 3M mark for the purposes of Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names contain Complainant’s entire 3M mark. The Panel finds that the disputed domain names combine Complainant’s 3M mark with one or more of the following: a hyphen, the descriptive terms “privacy” and “filter,” which describe one of Complainant’s computer accessories, and/or the generic top-level domain (“gTLD”) “.com” or “.org.” The Panel finds that these alterations do not change the fact that the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names are confusingly similar to Complainant’s 3M mark pursuant to Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant argues that Respondent has no legitimate connection with Complainant and does not have permission to use Complainant’s 3M mark. According to Complainant, Respondent does not operate any business under the 3M mark or the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names. Respondent has not contradicted any of Complainant’s allegations. The Panel finds that the WHOIS information for the disputed domain names does not indicate that Respondent is commonly known by the disputed domain names. Based on all of this evidence, the Panel holds that Respondent is not commonly known by the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent’s <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names resolve to websites that sell counterfeit privacy filters and competing computer accessories. After examining the screen shots of the resolving websites, the Panel concludes that Complainant is correct in its description of the content of the websites. Therefore, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names as a part of a pattern of bad faith registration and use. Complainant provides the Panel with a list of other domain names that incorporate Complainant’s 3M mark, and Complainant notes that it has filed UDRP proceedings for these domain names. However, as those domain names are not part of this dispute and a UDRP panel has not yet made a determination about them under the Policy, this Panel chooses to not consider the other domain names and therefore holds that there is not sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant does not make any allegations that Respondent’s registration and use of the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names disrupt Complainant’s business. However, the Panel determines that Respondent is diverting potential customers from Complainant’s computer accessories to Respondent’s competing computer accessories. As the Panel finds that such a diversion likely disrupts Complainant’s business, the Panel holds that Respondent registered and uses the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is selling counterfeit privacy filters and competing computer accessories at the websites resolving from the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names. According to Complainant and the screen shots of the resolving websites, Respondent uses Complainant’s 3M mark prominently. The Panel determines that the confusingly similar nature of the disputed domain names, Respondent’s use of the 3M mark on the resolving websites, and the sale of competing computer accessories all create confusion as to Complainant’s affiliation with the disputed domain names. As the Panel finds that Respondent profits from this confusion by selling its competing products, the Panel concludes Respondent registered and uses the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names in bad faith under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3m-privacyfilter.com> and <3mprivacyfilter.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 22, 2011
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