national arbitration forum

 

DECISION

 

3M Company v. Koller Training and Consulting

Claim Number: FA1112001421765

 

PARTIES

Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA.  Respondent is Koller Training and Consulting (“Respondent”), Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and <littmanstethoscopeparts.com>, registered with Go Daddy.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2011; the National Arbitration Forum received payment on December 28, 2011.

 

On January 4, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and <littmanstethoscopeparts.com> domain names are registered with Go Daddy and that Respondent is the current registrant of the names.  Go Daddy has verified that Respondent is bound by the Go Daddy 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 January 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2012 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@littmancardiologyiiistethoscope.com, postmaster@littmancardiologystethoscope.com, and postmaster@littmanstethoscopeparts.com.  Also on January 6, 2012, the 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 January 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and <littmanstethoscopeparts.com> domain names are confusingly similar to Complainant’s LITTMANN mark.

 

2.    Respondent does not have any rights or legitimate interests in the <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and <littmanstethoscopeparts.com> domain names.

 

3.    Respondent registered and used the <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and <littmanstethoscopeparts.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, 3M Company, is a technology company that markets stethoscopes, among other products. Complainant owns numerous trademarks with the United States Patent & Trademark Office (“USPTO”) for its LITTMANN mark:

 

Reg. No. 751,809 registered June 25, 1963;

Reg. No. 1,115,217 registered March 20, 1979;

Reg. No.  2,683822 registered February 4, 2003;

Reg. No. 2,681,330 registered January 28, 2003; and

Reg. No. 3,619,324 registered May 12, 2009.

 

Respondent, Koller Training and Consulting, registered the <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and  <littmanstethoscopeparts.com> domain names on August 9, 2010, August 9, 2010, and July 21, 2010, respectively. The disputed domain names resolve to identical websites displaying hyperlinks to businesses in competition with Complainant’s business, as well as unrelated hyperlinks.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns numerous trademark registrations with the USPTO for its LITTMANN mark:

 

Reg. No. 751,809 registered June 25, 1963;

Reg. No. 1,115,217 registered March 20, 1979;

Reg. No.  2,683822 registered February 4, 2003;

Reg. No. 2,681,330 registered January 28, 2003; and

Reg. No. 3,619,324 registered May 12, 2009.

 

The Panel finds that Complainant has established rights in the LITTMANN mark under Policy ¶ 4(a)(i) by its multiple registrations with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant argues that the disputed domain names are confusingly similar to the LITTMANN mark and to its domain name <littmann.com>.  Complainant contends that (1) adding the descriptive terms “stethoscope,” “parts,” “cardiology,” (2) removing an “n” from “LITTMANN,” (3) adding the letters “iii,” and (4) adding the generic top-level domain (“gTLD”) “.com” render the domain names confusingly similar to Complainant’s mark and generate an unauthorized affiliation with Complainant’s business. The Panel finds that adding descriptive words, misspelling the mark, adding letters, and adding the gTLD “.com” does not sufficiently distinguish the disputed domain names from the LITTMANN mark under Policy ¶ 4(a)(i). See 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); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (finding that <xxxbarelylegal.com> domain name to be confusingly similar to the complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition); 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 that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent possesses no rights or legitimate interests in the <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and <littmanstethoscopeparts.com> domain names. Under Policy ¶ 4(a)(ii), Complainant is required to make a prima facie showing in support of these allegation. When Complainant has satisfied that requirement, the burden of proof shifts to the Respondent to demonstrate why it has rights or interests in the disputed domain name. See  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.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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.”). The Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to reply to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks 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 where the respondent fails to respond). However, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent is not commonly known by the disputed domain names, uses no business names incorporating the LITTMANN mark, and does not have permission or license to use the mark. The WHOIS information lists Respondent as “Koller Training and Consulting,” which does not suggest that Respondent is commonly known by any of the disputed domain names. The Panel concludes that, absent any conclusive evidence that Respondent is commonly known by the disputed domain name, Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant argues that Respondent’s use of the disputed domain name is not connected to any bona fide offering of goods and services and that Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). Each of the disputed domain names resolves to a website that displays links to both Complainant’s products, as well as to competitor’s products, and unrelated websites. Complainant alleges that Respondent takes advantage of the goodwill connected with Complainant’s mark and, by doing so, attracts Internet users to its own website, which generates profit from click-through fees. The Panel finds that Respondent’s use of the disputed domain name to misdirect Internet traffic to its website for commercial gain does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

The Panel notes that Complainant does not address the Respondent’s pattern of bad faith registration of multiple domain names, but, as evidenced by the three domain names at issue, Respondent’s registration of the multiple domain names within a small time frame suggests an intention to prevent the owner of the mark from registering its mark in a corresponding domain name. The Panel concludes that Respondent’s multiple registration of similar domain names amounts to a bad faith pattern, which evidences Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).

 

Complainant argues that Respondent’s use of the disputed domain names amounts to disruption of Complainant’s business in violation of Policy ¶ 4(b)(iii). The resolving websites contain hyperlinks associated with content that is both competing and unrelated to Complainant’s business. Complainant alleges that Respondent’s purpose in using the domain names is to divert sales away from Complainant’s business. The Panel finds that misdirecting Internet users to competitors’ and unrelated business websites and away from Complainant’s website constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant argues that Respondent’s use of the disputed domain name to purposely divert Internet traffic to the corresponding website for profit indicates bad faith registration and use under Policy ¶ 4(b)(iv), by attracting consumers to its website, confusing consumers as to affiliation with Complainant’s business, and commercially benefitting as a result. Complainant alleges that the disputed domain names cause confusion between Complainant’s LITTMANN mark and the disputed domain names and, as a result, Respondent makes a profit due to the pay-per-click links that are available for Internet users to click on. The Panel concludes that Respondent’s use of the disputed domain names to attract and confuse Internet users and commercially benefit from the misdirection is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see 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 the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <littmancardiologyiiistethoscope.com>, <littmancardiologystethoscope.com>, and <littmanstethoscopeparts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  February 9, 2012

 

 

 

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