3M Company v. Touch Screens Inc. / Scott Tippetts
Claim Number: FA1110001411139
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Scott Tippetts, Touch Screens Inc. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3mtouch.us> and <3mmicrotouch.us>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 12, 2011. The National Arbitration Forum received a hard copy of the Complaint October 13, 2011.
On October 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <3mtouch.us> and <3mmicrotouch.us> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 17, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 2011, by which Respondent could file a Response to the Complaint was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete October 24, 2011.
On October 27, 2011, The Forum received Complainant’s timely filed Additional Submission, filed pursuant to The Forum’s Supplemental Rule #7.
On November 7, 2011, The Forum notified the Arbitrator of the filing of an untimely submission after the deadline had expired for submissions and not in compliance with Supplemental Rule 7.
On October 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant alleges that Respondent filed two domain names that contain two of Complainant’s protected marks in their entirety; and for that reason Complainant alleges, they are confusingly similar to those marks.
2. Complainant urges that Respondent has no rights to or legitimate interests in the disputed domain names containing Complainant’s protected marks; and
3. Complainant maintains that Respondent registered and used these marks in bad faith.
B. Respondent made the following relevant points in Response:
1. Respondent Touch Screens Inc. is “a legitimate 3M Microtouch reseller.”
2. Touch Screens Inc. sold Microtouch products some 17 years; and did so before 3M purchased Microtouch.
3. Respondent has made a bona fide offer of these products.
4. Touch Screen demonstrates its GOOD faith in the way in which it promotes these products to benefit Complainant.
5. Touch Screen will transfer the domain names if Complainant promises to keep using them and if 3M pays a fair price for them.
C. Complainant’s Additional Submission contained the following information:
1. That Respondent did not challenge that the disputed domain names are confusingly similar to Complainant’s protected marks.
2. That Respondent has not shown “rights to or legitimate interests” because it “admits that it uses the domain name for a website that promotes products that compete with Complainant’s 3M MICROTOUCH products…”
3. That Respondent does not have an appropriate disclaimer at the site.
4. That the volume of registrations by Respondent of domain names containing the 3M and MICROTOUCH marks suggest that “Respondent is trying to corner the market in domain names incorporating these marks.”
5. That Respondent has engaged in “typosquatting and registering domain names incorporating well-known third party marks.”
6. That Respondent registered a number of other domain names containing the 3M and MICROTOUCH marks before it completed its DST Integration Training.
7. That Respondent did not respond to Complainant’s cease and desist demand.
8. That Respondent’s bad faith is shown by the multiple registrations.
D. Respondent’s late-filed Additional Submission
Respondent restates points in its Response in the Additional Submission; and responds to Complainant’s Additional Submission but does not add new material or proof that might change the result here. Therefore, the Arbitrator does not address it point by point other than as referenced in the Decision.
Complainant established that it has rights in the marks used in the disputed domain names.
Complainant established that the domain names are confusingly similar to Complainant’s marks.
Respondent has shown no rights to or legitimate interests in the marks and domain names.
Respondent registered and used the disputed domain names 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."
Paragraph 4(a) of the Policy requires Complainant to 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant is a company based in Minnesota, USA, that offers more than 50,000 products and services in a wide variety of fields under the 3M mark. Complainant presents evidence that it owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its 3M mark, including Reg. No. 2,291,115 registered November 9, 1999, for use with computer, connector, and semiconductor products. Complainant further asserts that it acquired Microtouch Systems, Inc. in 2001, including its trademark registration with the USPTO for the MICROTOUCH mark (Reg. No. 1,282,227 registered June 19, 1984) for use with touch screen and computer display systems. The Panel finds that Complainant supplied sufficient evidence that it owns rights in the 3M and MICROTOUCH marks under Policy ¶ 4(a)(i) through its trademark holdings with the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to UDRP ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to [UDRP] ¶ 4(a)(i).”).
Complainant alleges that the <3mtouch.us> and <3mmicrotouch.us> domain names are confusingly similar to its 3M and MICROTOUCH marks. Specifically, the Panel finds that the <3mtouch.us> domain name contains Complainant’s 3M mark in addition to the generic and descriptive term “touch” and the country-code top-level domain (“ccTLD”) “.us.” The Panel also finds that the <3mmicrotouch.us> domain name contains Complainant’s 3M and MICROTOUCH marks, in addition to the ccTLD “.us.” The Panel finds that neither of the domain names contains sufficient changes to Complainant’s marks under Policy ¶ 4(a)(i) to shield it from a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Respondent made no contentions regarding the Identical or Confusingly Similar nature of the domain names; notwithstanding that it conceded that Complainant’s marks are contained within the disputed domain names in its late-filed Additional Submission.
The Panel finds that Respondent registered two domain names that are confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and once it does so, the burden of proof on the issue shifts to Respondent to show that it does have such rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Neither Complainant nor Respondent addresses whether Respondent holds any trademark or service mark registrations that deal with the <3mtouch.us> and <3mmicrotouch.us> domain names. The Panel therefore finds that Respondent does not have rights to or legitimate interests in the domain names under Policy ¶ 4(c)(i), based on the lack of evidence indicating otherwise. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant submits evidence and argument that Respondent is not commonly known by the names “3M,” “3M TOUCH,” or “3M MICRO TOUCH.” The Panel notes that the WHOIS information for the disputed domain names identifies the registrant as: “Touch Screens Inc. / Scott Tippetts,” which the Panel finds is not nominally similar to either of the domain names in question. Further, Complainant argues that Respondent is not an authorized distributor of 3M products, or any other goods under the 3M or MICROTOUCH marks. Therefore, the Panel finds that under Policy ¶ 4(c)(iii), Respondent is not commonly known by the disputed domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent’s resolving website displays several different brands of products available under a “Touch Screens” heading, including products labeled with Complainant’s trademarks, and other competing manufacturers’ products. Complainant argues that Respondent’s use of Complainant’s trademarks to sell Complainant’s goods without authorization, as well as to sell competing goods, is not a bona fide offering of goods or services. The Panel agrees and finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Respondent alleges in its Response that it is a certified 3M Microtouch DST integration facility and that it has been marketing and selling Microtouch products for over 17 years. Respondent urges that: “3M sales representatives call on us and visit to promote their products. These domain names are used in connection with bona fide offerings of genuine 3M products.” Respondent further states that it sells many brands and types of touch screen products and that all 3M products are clearly labeled as such. Complainant urges that Respondent’s activities are not a bona fide use because Respondent uses Complainant’s marks in competition with the products of others. The Panel agrees with Complainant.
The Panel finds that Respondent has shown no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. The Panel finds that under paragraph 4(a)(iii) of the usTLD Policy, the following instances of bad faith are identified pursuant to Policy ¶ 4(b):
Evidence of Registration or Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant first offers into evidence several other domain name registrations that Respondent holds that contain the 3M mark. See Complainant’s Exhibit F. Complainant notes that it has filed separate UDRP proceedings to address the other domain name registrations, as well as the ones at issue in the instant dispute. The Panel notes that, unlike the UDRP, the usTLD Policy does not explicitly require a “pattern” of domain name registration in order to find bad faith under Policy ¶ 4(b)(ii), holding instead that bad faith exists if Respondent merely “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.”
Nevertheless, the Panel finds that these other domain name registrations referenced by Complainant are not at issue in reaching a result in the present dispute. The Panel also has no information as to determinations in those cases concerning findings by the Panels of bad faith and/or as to whether they infringe on another’s trademark. Accordingly, the Panel here does not address any finding of bad faith under a Policy ¶ 4(b)(ii) evaluation.
Complainant submitted evidence and arguments that show that Respondent’s disputed domain names resolve to a website that displays and sells Complainant’s touch screen monitors and products, as well as those of Complainant’s competitors. Complainant argues that such use of the disputed domain names diverts customers away from Complainant’s website and uses Complainant’s marks, in effect, to compete with Complainant’s competitors, thereby creating a disruption in its business. The Panel finds that under a Policy ¶ 4(b)(iii) evaluation, the registration and use of the disputed domain names for such a purpose is evidence of and supports findings of bad faith. See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); 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 [UDRP] ¶ 4(b)(iii).”).
Further, Complainant contends that Respondent is profiting from its use of Complainant’s marks in the domain names. Complainant urges that Respondent’s resolving website receives higher numbers of Internet users because the domain names come up on search results when an Internet user searches for Complainant’s goods. Complainant asserts that those Internet users are then confused as to Complainant’s involvement or sponsorship with Respondent’s website and may end up purchasing products from Respondent rather than Complainant. The Panel again agrees and finds that Respondent’s registration and use of the domain name are both subject to a finding of bad faith under a Policy ¶ 4(b)(iv) analysis. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also 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.”).
The Panel, having found, no rights or legitimate interests in Respondent, does not consider Respondent’s first points in response on the issue of bad faith; however, the Panel does consider Respondent’s allegation that it registered and subsequently used the disputed domain names in good faith. Respondent states that it “actively sell[s], promote[s] and advertise[s] 3M Microtouch products in a positive manner.” Further, Respondent argues that it has drawn new customers to Complainant’s product lines, while educating its customers about Complainant’s “fine” products. Respondent reiterates that it had no bad faith motivation in mind during its ownership and use of the domain names. Respondent also states that it would be willing to sell the domain names to Complainant for a reasonable price, but that Complainant has not approached Respondent about such a deal. The Panel finds that subjective assertions of good faith intent do not outweigh objective evidence of bad faith conduct.
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mtouch.us> and <3mmicrotouch.us> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 10, 2011.
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