3M Company v. Bui Chee Leong
Claim Number: FA1201001425613
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Bui Chee Leong (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannstethoscopeclassicii.com>, registered with Go Daddy.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2012; the National Arbitration Forum received payment on January 19, 2012.
On January 20, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <littmannstethoscopeclassicii.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. 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 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@littmannstethoscopeclassicii.com. Also on January 23, 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 February 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <littmannstethoscopeclassicii.com> domain name is confusingly similar to Complainant’s LITTMANN mark.
2. Respondent does not have any rights or legitimate interests in the <littmannstethoscopeclassicii.com> domain name.
3. Respondent registered and used the <littmannstethoscopeclassicii.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, uses its LITTMANN mark in connection with its stethoscopes and related products. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963).
Respondent, Bui Chee Leong, registered the <littmannstethoscopeclassicii.com> domain name on November 2, 2011. The disputed domain name resolves to a website that contains a promotional video produced by Complainant and hyperlink advertisements that resolve to third-party websites that sell competing stethoscopes.
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.
In order to establish that it owns rights in its LITTMANN mark, Complainant submits copies of its trademark registrations with the USPTO for its LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels found that a USPTO trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels concluded that a complainant is not required to register a mark within the country that a respondent resides or operates in order to own rights in a mark. Therefore, the Panel holds that Complainant owns rights in its LITTMANN mark pursuant to Policy ¶ 4(a)(i), regardless of the fact that Respondent resides or operates in Malaysia.
Complainant argues that Respondent’s <littmannstethoscopeclassicii.com> domain name is confusingly similar to its LITTMANN mark. Complainant contends that Respondent simply adds the descriptive terms “stethoscope” and “classic ii,” which relate to Complainant’s products. In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), and Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panels held that the addition of a descriptive term in a domain name did not adequately distinguish the disputed domain name from a complainant’s mark. The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panels held that a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because all domain names require a top-level domain. Based on this precedent, the Panel finds that Respondent’s <littmannstethoscopeclassicii.com> domain name is confusingly similar to Complainant’s LITTMANN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <littmannstethoscopeclassicii.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <littmannstethoscopeclassicii.com> domain name. Complainant claims that Respondent does not own a license to use Complainant’s LITTMANN mark and that Respondent owns no statutory or common law trademark rights in the LITTMANN mark. The WHOIS information identifies “Bui Chee Leong” as the registrant of the <littmannstethoscopeclassicii.com> domain name. Respondent did not respond to this case and, thus, did not refute any of Complainant’s claims. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels held that a respondent is not commonly known by a disputed domain name if the WHOIS information does not indicate such a fact and the complainant did not give the respondent permission to use its mark. Consequently, the Panel concludes that Respondent is not commonly known by the <littmannstethoscopeclassicii.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s <littmannstethoscopeclassicii.com> domain name resolves to a website entitled “Littmann Stethoscope Classic II.” Complainant asserts that Respondent placed a copy of Complainant’s promotional video on the resolving website. Complainant argues that the title and the video create the impression that Complainant is affiliated with the disputed domain name and resolving website. Complainant contends that Respondent attempts to take advantage of that impression by hosting hyperlinks advertisements that redirect Internet users to third-party websites that sell competing stethoscopes. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panels determined that the hosting of competing hyperlinks was evidence that the respondent made neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. The Panel agrees with this holding and determines that Respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <littmannstethoscopeclassicii.com> domain name.
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent’s registration and use of the <littmannstethoscopeclassicii.com> domain name disrupts Complainant’s business by redirecting potential customers away from Complainant and to Complainant’s competitors. Complainant claims that Respondent’s <littmannstethoscopeclassicii.com> domain name resolves to a website that hosts advertisement hyperlinks that redirect Internet users to third-party websites selling competing stethoscopes. In David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), and Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), the panels found that the hosting of competing hyperlinks disrupts a complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Thus, the Panel holds that Respondent registered and uses the <littmannstethoscopeclassicii.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
As noted above, Complainant avers that the website resolving from the <littmannstethoscopeclassicii.com> domain name is entitled “Littmann Stethoscope Classic II,” which is the name of one of Complainant’s stethoscope products. According to Complainant, the resolving website also contains a promotional video that Complainant created for its stethoscope product. Complainant argues that Respondent’s confusingly similar disputed domain name, the website title, and the promotional video all demonstrate Respondent’s attempt to create confusion as to Complainant’s affiliation with the disputed domain name. Complainant contends that Respondent attempts to profit from this confusion by hosting the aforementioned advertisement hyperlinks and receives click-through fees each time an Internet user clicks on one of the advertisements. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), and BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the panels concluded that the hosting of competing hyperlinks to profit from Internet user confusion indicated bad faith registration and use under Policy ¶ 4(b)(iv). Therefore, the Panel holds that Respondent registered and uses the <littmannstethoscopeclassicii.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the LITTMANN mark. Complainant argues that the title of the resolving website and the promotional video indicate that Respondent had actual knowledge of Complainant's mark and rights. In Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007), the panel found that constructive notice to be insufficient for a finding of bad faith. However, in Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007), the panel held that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name." Thus, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmannstethoscopeclassicii.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 1, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page