3M Company v. Bryan Smith
Claim Number: FA1110001411354
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Bryan Smith (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannmastercardiologystethoscope.com>, registered with Name.com LLC.
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 October 13, 2011; the National Arbitration Forum received payment on October 14, 2011.
On October 13, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <littmannmastercardiologystethoscope.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@littmannmastercardiologystethoscope.com. Also on October 14, 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 November 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <littmannmastercardiologystethoscope.com> domain name is confusingly similar to Complainant’s LITTMANN mark.
2. Respondent does not have any rights or legitimate interests in the <littmannmastercardiologystethoscope.com> domain name.
3. Respondent registered and used the <littmannmastercardiologystethoscope.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, is the owner of the registrations with the United States Patent and Trademark Office (“USPTO”) for the LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963). Additionally, Complainant owns the USPTO registration for the MASTER CARDIOLOGY mark (Reg. No. 3,253,234 registered June 19, 2007). The LITTMANN and MASTER CARDIOLOGY marks are used by Complainant in connection with a variety of products and services in the medical industry, including stethoscopes.
Respondent, Bryan Smith registered the disputed domain name on December 29, 2010. Respondent uses the <littmannmastercardiologystethoscope.com> domain name to resolve to a website which prominently displays Complainant’s logo but offers no other content.
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 argues that it has rights in the LITTMANN and MASTER CARDIOLOGY marks because of its registration of the marks with the USPTO. Complainant has provided evidence of its registration with the USPTO of the LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963) and the MASTER CARDIOLOGY mark (Reg. No. 3,253,234 registered June 19, 2007). Registration of a mark with a federal trademark authority, such as the USPTO, confers rights in a mark to the registrant within the meaning of Policy ¶ 4(a)(i).
See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). The Panel thus finds that Complainant has rights in the LITTMANN and MASTER CARDIOLOGY marks under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <littmannmastercardiologystethoscope.com> domain name is confusingly similar to its marks. Complainant asserts that Respondent has simply combined its marks, added a descriptive term, deleted a space, and added a generic top-level domain (“gTLD”) as an attempt to negate a finding of confusing similarity. The combination of marks does not achieve the goal of differentiating the disputed domain name from the Complainant’s mark. For example, in Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000), and G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002), the panels found that the combination of marks served to increase confusion because of multiple connections between the domain name and the complainant.
Respondent adds the term “stethoscope” to the domain name. A major focus of Complainant’s business conducted in connection with the LITTMANN and MASTER CARDIOLOGY marks concerns stethoscopes. The addition of a descriptive term to the complainant’s mark in the disputed domain name is not sufficient to make the domain name no longer confusingly similar to the allegedly infringed upon mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Lastly, Respondent deletes the space between words in Complainant’s MASTER CARDIOLOGY mark and adds the gTLD “.com.” The Panel finds that, as the spaces are prohibited and gTLDs are required in domain names, these changes are irrelevant for the purposes of Policy ¶ 4(a)(i). See American Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that the changes that Respondent made are insufficient to distinguish the domain name from Complainant’s marks, and thus the <littmannmastercardiologystethoscope.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <littmannmastercardiologystethoscope.com> domain name. Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also American Express Co. v. Fan 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.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <littmannmastercardiologystethoscope.com> domain name. Complainant asserts that it has not given Respondent permission to use either of its marks or any derivative of them for any purpose. Additionally, according to the WHOIS record for the <littmannmastercardiologystethoscope.com> domain name, “Bryan Smith” is listed as the domain name registrant. The Panel finds that the information available supports a finding that Respondent is not commonly known by the disputed domain name pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not making either a bona fide offering of goods or services nor a legitimate noncommercial use of the disputed domain name. The <littmannmastercardiologystethoscope.com> domain name resolves to a website which displays Complainant’s logo but has no other content. Failing to make an active use of a domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005). The Panel thus finds that Respondent has not made either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
The finding of bad faith registration and use of a disputed domain name is a required element in order for Complainant to prevail. Policy ¶ 4(b) offers a list of factors for the Panel to consider when making a determination of bad faith. However, these factors are not intended to be a complete list of circumstances which equate to bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). As such, the Panel will review all information and circumstances concerning the registration and use of the disputed domain name to determine if Respondent’s actions were done in bad faith.
Complainant argues that Respondent’s inactive use of the <littmannmastercardiologystethoscope.com> domain name demonstrates Respondent’s bad faith registration and use of the disputed domain name. Panels have found that the holding of a domain name, which resolves to an inactive website, is evidence that the domain name was registered and used in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Therefore, the Panel finds that Respondent’s holding of the inactive <littmannmastercardiologystethoscope.com> domain name is evidence of its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
The Panel finds that Complainant satisfied the elements of 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 <littmannmastercardiologystethoscope.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 15, 2011
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