national arbitration forum

 

DECISION

 

3M Company v. Kittipron Na Chiang Mai

Claim Number: FA1201001422435

 

PARTIES

Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA.  Respondent is Kittipron Na Chiang Mai (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thinsulateskigloves.info>, registered with GoDaddy.com Inc.

 

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2012; the National Arbitration Forum received payment on January 4, 2012.

 

On January 4, 2012, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <thinsulateskigloves.info> domain name is registered with GoDaddy.com Inc. and that Respondent is the current registrant of the name.  GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com Inc. 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 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 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@thinsulateskigloves.info.  Also on January 4, 2012, 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 January 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <thinsulateskigloves.info> domain name is confusingly similar to Complainant’s THINSULATE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <thinsulateskigloves.info> domain name.

 

3.    Respondent registered and used the <thinsulateskigloves.info> domain name in bad faith.

 

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

 

FINDINGS

Complainant, 3M Company, is the owner of United States Patent and Trademark Office (“USPTO”) registrations for the THINSULATE mark (e.g., Reg. No. 1,079,389 registered December 13, 1977). The mark is used in connection with thermal insulation used in a variety of products, including clothing and accessories.

 

Respondent, Kittipron Na Chiang Mai, registered the disputed domain name on September 9, 2011. The <thinsulateskigloves.info> domain name resolves to a website which displays advertisements for computer and music products unrelated to Complainant, as well as links to competing third-party websites selling ski gloves.

 

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 contends that it has rights in the THINSULATE mark. Complainant provides the Panel with evidence of its USPTO registrations for the THINSULATE mark (e.g., Reg. No. 1,079,389 registered December 13, 1977). Panels have found that registration with a federal trademark authority is enough for a complainant to demonstrate rights in mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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).”). Panels additionaly held that a complainant is not required to register a mark in the country the respondent resides or operates as long as the complainant holds a trademark registration with a national trademark authority.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  The Panel finds that Complainant has rights in the THINSULATE mark pursuant to Policy ¶ 4(a)(i).

 

Complainant next alleges that the <thinsulateskigloves.info> domain name is confusingly similar to the THINSULATE mark. The Panel finds that Respondent’s addition of the terms “ski” and “gloves,” which describe Complainant’s products, fails to distinguish the disputed domain name from the mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Additionally, the Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.info” is irrelevant for the purposes of a determination of confusing similarity. See 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <thinsulateskigloves.info> domain name is confusingly similar pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this finding and that the burden shifts now to Respondent to dispute these claims. 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel, however, is without the benefit of a Response from Respondent. Therefore, the Panel will make all inferences which are reasonable from the information available. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang 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 will still review the record for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name according to the Policy ¶ 4(c) factors.

 

Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant argues that it has not given Respondent permission to use the THINSULATE mark and that Respondent is not a licensee of Complainant. Additionally, the WHOIS record for the <thinsulateskigloves.info> domain name lists “Kittipron Na Chiang Mai” as the domain name registrant. The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), list the WHOIS record and the complainant’s arguments as illustrative factors in determining if a respondent is commonly known by a disputed domain name. The Panel finds that Respondent is not commonly known by the <thinsulateskigloves.info> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant asserts that the <thinsulateskigloves.info> domain name is used for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain name resolves to a website which displays links to third parties that compete with Complainant in the insulated clothing and accessories market, as well as advertisements to unrelated products. Panels have found that the display of advertisements and links to competing and noncompeting products and parties is not a protected use of a domain name. 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 Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s bad faith registration and use of the <thinsulateskigloves.info> domain name is evidenced by the fact that Respondent intended to disrupt Complainant’s business. Complainant provides evidence that the <thinsulateskigloves.info> domain name displays links to competing third-party websites which offer insulated ski gloves for sale.

Complainant contends that Respondent’s website is aimed at taking customers away from Complainant’s website. Panels have previously held that the display of competing links is disruptive and indicative of bad faith. 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Therefore, the Panel finds that Respondent’s registration and use of the <thinsulateskigloves.info> domain name is disruptive, revealing bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

Complainant contends that Respondent’s registration and use is also intended to take advantage, for commercial gain, of Internet users’ mistakes. The <thinsulateskigloves.info> domain name is confusingly similar to Complainant’s THINSULATE mark. Therefore, some of the Internet users seeking Complainant may instead find Respondent and become confused as to whether Complainant is the source of the disputed domain name. Upon entering the disputed domain name’s resolving website, Internet users are able to view Respondent’s use of the THINSULATE mark multiple times on the website with advertisements to unrelated products and links to related products. As a result, their confusion as to the source of the <thinsulateskigloves.info> domain name will increase. The Panel infers that Respondent is compensated for displaying the advertisements and links on its <thinsulateskigloves.info> domain name. The Panel thus finds that Respondent registered and used the disputed domain name in order to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).

 

 

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

 

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 <thinsulateskigloves.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  February 9, 2012

 

 

 

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