3M Company v. Domain Name Proxy Service, Inc., Direct Privacy ID 17416
Claim Number: FA1201001426613
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domain Name Proxy Service, Inc Direct Privacy ID 17416 (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmanstethoscope.org>, registered with DirectNIC, LTD (R48-LROR).
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 January 25, 2012; the National Arbitration Forum received payment on January 25, 2012.
On January 26, 2012, DirectNIC, LTD (R48-LROR) confirmed by e-mail to the National Arbitration Forum that the <littmanstethoscope.org> domain name is registered with DirectNIC, LTD (R48-LROR) and that Respondent is the current registrant of the name. DirectNIC, LTD (R48-LROR) has verified that Respondent is bound by the DirectNIC, LTD (R48-LROR) 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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@littmanstethoscope.org. Also on January 27, 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 21, 2012, 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 <littmanstethoscope.org> domain name is confusingly similar to Complainant’s LITTMANN mark.
2. Respondent does not have any rights or legitimate interests in the <littmanstethoscope.org> domain name.
3. Respondent registered and used the <littmanstethoscope.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, owns the LITTMANN family of trademarks used with products and services in the medical industry. Complaint has registered the LITTMANN mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 751,809 registered June 25, 1963;
Reg. No. 1,115,217 registered March 20, 1979; &
Reg. No. 2,683,822 registered February 4, 2003.
Respondent, Domain Name Proxy Service, Inc., Direct Privacy ID 17416, registered the <littmanstethoscope.org> domain name on February 3, 2006. The disputed domain name resolves to a directory website featuring a listing of pay-per-click links advertising competing medical products and supplies under link titles, such as “Littman Stethoscopes,” “3M Littmann Stetoscopes,” and “Scrubs & Hospital Apparel,” etc.
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.
Complaint has registered the LITTMANN mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 751,809 registered June 25, 1963;
Reg. No. 1,115,217 registered March 20, 1979; &
Reg. No. 2,683,822 registered February 4, 2003.
The Panel finds that these USPTO trademark registrations conclusively prove Complainant’s rights in the LITTMANN mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark 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 Respondent’s <littmanstethoscope.org> domain name is confusingly similar to Complainant’s LITTMANN mark. The disputed domain name begins with the LITTMANN mark, minus the final letter “n,” and adds the descriptive term “stethoscope” and the generic top-level domain (“gTLD”) “.org.” The Panel determines that removing a single letter from Complainant’s mark is insufficient to remove the disputed domain name from the realm of confusing similarity. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel also concludes that adding a descriptive term and a gTLD are not distinguishing changes 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 Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel accordingly holds that Respondent’s <littmanstethoscope.org> domain name is confusingly similar to Complainant’s LITTMANN mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Because Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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”); 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 elects, however, to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent has not received permission, or been licensed, to use the LITTMANN mark in any way. Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name identifies the registrant as “Domain Name Proxy Service, Inc., Direct Privacy ID 17416,” a name which makes no reference to the domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) and consequently does not have rights and legitimate interests in the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Complainant contends, and the evidence it has adduced shows, that Respondent’s <littmanstethoscope.org> domain name resolves to a directory website advertising competing medical products and goods via pay-per-click links with titles like “Littmann Stethoscopes,” “3M Littman ® Stethoscope,” “Scrubs on Sale,” “Lift Chair Rental,” etc. The Panel infers that Respondent receives click-through revenue from these links and holds that using Complainant’s mark in this way does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant also contends that Respondent’s registration of the <littmanstethoscope.org> domain name constitutes typosquatting. The Panel finds, however, that in addition to the removal of a single letter from Complainant’s mark, the disputed domain name also adds the term “stethoscopes” to the mark. The Panel determines a disputed domain name is only considered to be typosquatting where it differs by a single letter, and nothing more, from Complainant’s mark. The Panel thus declines to make a finding of typosquatting under Policy ¶ 4(a)(ii) or Policy ¶ 4(a)(iii).
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
Complainant asserts that Respondent uses its <littmanstethoscope.org> domain name to divert consumers seeking Complainant to Respondent’s own website which advertises a variety of pay-per-click links to competing third-party websites. The Panel finds that this diversion disrupts Complainant’s business, which is evidence of bad faith 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 12, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent registered the <littmanstethoscope.org> domain name in order to convey the commercial impression of Complainant’s LITTMANN mark and trade on Complainant’s goodwill in the mark. Complainant argues that Respondent uses the disputed domain name to resolve to its website which contains advertising and links to third parties. Complainant therefore alleges that Respondent uses the disputed domain name to attract and confuse consumers in order to subsequently profit by generating traffic that clicks on the links and is diverted to third parties. The Panel agrees with Complainant and finds that Respondent’s actions indicate bad faith registration and use of the <littmanstethoscope.org> domain name according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).”).
Complainant alleges that Respondent had notice of Complainant’s rights in the LITTMANN mark at the time it registered the disputed domain name because of Complainant’s USPTO trademark registrations. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that the evidence establishes that Respondent had actual notice of Complainant’s mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”); see also Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain names in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has proven 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 <littmanstethoscope.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 27, 2012
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