3M Company v. Paul Lin
Claim Number: FA1204001437611
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Paul Lin (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <filtretepro.com> and <filtretepro.net>, registered with GoDaddy.com.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 2, 2012.
On April 2, 2012, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <filtretepro.com> and <filtretepro.net> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@filtretepro.com, postmaster@filtretepro.net. Also on April 3, 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.
An untimely Response was received and determined to be deficient on April 25, 2012.
On May 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
I. Jurisdictional Basis for the Administrative Proceeding
The dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy. The domain name was registered on October 11, 2011.
In addition, in accordance with the Policy, Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name was registered in bad faith and is being used in bad faith.
II. Factual and Legal Grounds
This Complaint is based on the following grounds:
(a) 3M is the owner of the well-known FILTRETE mark. 3M commenced use of the FILTRETE mark and name at least as early as 1977 in connection with home filtration products. Since that time, 3M has continuously used the FILTRETE mark and name in commerce in the United States. 3M sells its FILTRETE products around the world.
(b) Over the past 30-plus years, 3M has expanded its use of the FILTRETE mark and presently manufactures and sells air filters, air purifiers, water filters, and water filtration systems in connection with the FILTRETE mark. 3M’s FILTRETE line of products includes the FILTRETE “Pro Series” of HVAC filters. 3M markets its products and services under the FILTRETE mark and name through its websites at http://www.filtrete.com and <http://www.3m.com> and other channels. 3M registered the domain name filtrete.com in 1999.
(c) 3M owns four United States registrations for the FILTRETE mark and over 40 registrations for the FILTRETE mark worldwide in over 25 countries. These registrations are valid, subsisting and enforceable and some are incontestable pursuant to 15 U.S.C. §1065.
(d) The domains names <filtretepro.com> and <filtretepro.net> are confusingly similar to the FILTRETE mark. See Policy ¶ 4(a)(i).
(1) ICANN panels have found that, when a domain name incorporates a distinctive mark in its entirety, that creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-0430 (WIPO Aug. 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN); Minnesota Mining & Manufacturing v JonLR, D2001-0428 (WIPO June 18, 2001) (finding 3mcare.com confusingly similar to 3M). Here, Respondent has incorporated the entirety of Complainant’s FILTRETE mark in the disputed domain name.
(2) Furthermore, the addition of the common descriptive term “pro” and the “.com” or “.net” TLD to an identical version of Complainant’s famous registered FILTRETE mark does not negate the confusing similarity between the domain name and the FILTRETE mark under Policy ¶ 4(a)(i). See 3M Company v. Oleg Boyarsky c/o LAT, FA1066746 (NAF October 15, 2007) (finding that the addition of “library,” which was descriptive of one of Complainant’s product lines, to the distinctive 3M mark did nothing to dispel confusion created by 3mlibrary.com domain name); AHAVA NA, LLC v. Beauty Rose a/k/a Mark Hirsch, FA462441 (NAF May 31, 2005) (finding that the addition of hyphen and “usa” was not sufficient to overcome finding of confusing similarity between AHAVA mark and ahava-usa.com domain name). Here, the common term “pro” creates an association with the products offered by Complainant under its FILTRETE mark by giving the appearance that the domain name is intended to refer to Complainant’s “Pro Series” line of FILTRETE products.
(3) Respondent uses the domain names <filtretepro.com> and <filtretepro.net> to display a website containing sponsored advertisements. When the user clicks on the links he or she is connected immediately to the website of one of 3M’s competitors web sites on which competing goods are sold. Like in the 3mlibrary.com and ahava-usa.com decisions, the term “pro” cannot negate the confusing similarity between the FILTRETE mark and the <filtretepro.com> and <filtretepro.net> domain names, particularly where Respondent’s website offers links designed to redirect consumers to websites where they can purchase competing products.
(e) Respondent has no rights or legitimate interest in the domain name. See Policy ¶ 4(a)(ii).
(1) Respondent is not commonly known by the name “Filtrete” or “Filtrete Pro,” nor does Respondent operate a business or other organization under such a mark or name. See Policy ¶ 4(c)(ii);
(2) Respondent has no legitimate connection to Complainant’s famous FILTRETE mark. There is no plausible explanation for Respondent’s use of the FILTRETE mark or the domain name other than a desire to trade on the fame and goodwill of Complainant and create confusion. Such use of a domain name does not constitute a bona fide offering of goods and services. AltaVista Co. v. Geoffrey Fairbairn, D2000-0849 (WIPO Oct. 13, 2000) (use that intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods or services).
(3) Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain, and is instead using the domain name to misleadingly divert consumers for commercial gain. See Policy ¶ 4(c)(iii).
First, Respondent is using the FILTRETE mark without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in the FILTRETE mark through Complainant’s U.S. trademark registrations. Therefore, Respondent knowingly used the FILTRETE mark in violation of Complainant’s rights in the mark.
Second, Respondent operates the websites <filtretepro.com> and <filtretepro.net> for commercial gain. This website contains sponsored advertisements for competing products. Upon information and belief, Respondent receives compensation each time a searcher clicks on one of the links.
Third, Respondent’s use cannot be characterized as fair use. See Homer, TLC Inc. v. Kang, FA573872 (NAF November 22, 2005) (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”). Respondent’s use of the domain name misleadingly diverts consumers with intent for commercial gain. Searchers of Complainant’s FILTRETE goods who used the domain names <filtretepro.com> and <filtretepro.net> would think they were visiting a FILTRETE website until they discovered that they had been redirected to websites with competing goods, and even then may believe that the product listings are offered or endorsed by Complainant. Such use cannot be considered fair.
(f) Respondent registered and is using the domain name in bad faith. See Policy ¶ 4(a)(iii).
(1) Respondent is intentionally using a the FILTRETE Mark in its domain name to attract Internet searchers for commercial gain. See Policy ¶ 4(b)(iv); Kang, FA573872; Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 6, 2000); Baylor University v. Kevin Daste, FA1082272 (Nov. 9, 2007).
In Kang, the respondent registered the domain name <hamptonbay.com>, which was identical to Complainant’s HAMPTON BAY Mark. Kang, FA573872. The domain name led to a search directory website with links to searches for identical goods to those offered by Complainant in connection with its HAMPTON BAY Mark. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial websites through these search links and found that respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶ 4(b)(iv). Id.
In Daste, the respondent registered and used the domain names “baylorhospitals.com” and “bayloredu.com” which contained links to various third party websites in competition with complainant. Daste, FA1082272. The Panel found that the respondent was commercially benefiting through the various click-through links on the websites and was, thus, capitalizing on the likelihood that users, presumably seeking complainant’s services, would be confused as to the complainant’s affiliation with the disputed domain. Id. The panel found that such use constituted bad faith under the policy. Id.
Upon information and belief, as noted above, Respondent
receives monetary compensation for driving traffic to the websites in the
sponsored advertisements on the <filtretepro.com> and <filtretepro.net>
domains. Just as in Kang, the Respondent is capitalizing and
commercially benefiting on the likelihood that users seeking Complainant will
be confused when they reach the <filtretepro.com> and <filtretepro.net>
websites and will thus generate income for Respondent. Such use constitutes
bad faith under the policy
(2) Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the domain names <filtretepro.com> and <filtretepro.net>. See Countrywide Financial Corp. v. Web Domain Names, FA708909 (finding that respondent’s use of a disputed domain to divert Internet users to third-party websites created a likelihood of confusion as to the affiliation between the complainant and the disputed domain). And even if searchers discover they are not at Complainant’s site, they may be led to believe that Complainant endorsed, sponsored or affiliated themselves with the goods and services offered via the <filtretepro.com> and <filtretepro.net> websites.
(3) Finally, Respondent had actual knowledge or reasonably should have had knowledge of Complainant’s prior use and registration of the FILTRETE mark, as the mark is famous. Respondent also had constructive notice of Complainant’s rights in the FILTRETE mark as a result of Complainant’s ownership of numerous trademark registrations for the FILTRETE Mark with the USPTO. Respondent’s constructive and actual knowledge of Complainant’s rights in the FILTRETE mark at the time of the registration of the Domain Name demonstrates its bad faith in registering the names. See The Prudential Insurance Company of America v. Domains2000.com, FA298227 (NAF September 2, 2004) (holding that Respondent’s registration of a domain name that incorporates Complainant’s famous registered mark in its entirety, and deviates only with the addition of a term that describes a part of Complainant’s business, suggests that Respondent had knowledge of Complainant’s rights in the well-known mark).
B. Respondent
Although it was late, Respondent provided the following response:
“To Whom This May Concem,
In response to 3M Company's April 12, 2012 complaint, FA1204001437611, here are the following details as to why the domains <filtretepro.com> and <filtretepro.net> were registered in good faith.
Drill Spot, LLC has been in business since November 4, 2005. I, Paul Lin, am the owner of the company. On July 7, 2006, Drill Spot, LLC joined True Value Company. As part owner of True Value Company, Drill Spot, LLC was approved as an authorized 3M distributor/retailer. This includes the 3M Filtrete branded products. In all, Drill Spot, LLC sells 816 items from 3M, of which 84 items are branded Filtrete. Chris Norvath with 3M is my sales contact. We purchase Filtrete products from Chris on a regular basis. Sheri Hunter with Fulbright, the attorney for 3M is aware that we are 3M resellers, "while we note that you may be selling 3M products" (fourth paragraph). There is no confusion that Drill Spot, LLC is an authorized reseller of 3M and 3M Filtrete. 3M issued the trademark rights to Drill Spot, LLC (True Value Company) in July 2006 so that we can sell their products. This is current as of April 2012.
Drill Spot, LLC operates DriiiSpot.com. Our core market are professionals/contractors. As noted by Google for the keyword search "drillspot", Google suggests "grainger", "mcmaster can", and "fastenal". The products sold on DriiiSpot.com is closely related to these billion dollar plus companies; products for the professionals.
As a natural progression to sell 3M products to the professionals, I registered on Filtretepro.com and Filtretepro.net so that Drill Spot, LLC can sell into these markets. •pro", short for "professionals". The registration of these domains were registered in good faith so that we can expand our sales with 3M Filtrete.”
Despite the fact the Response was late, the Panel will consider it.
C. Additional Submission
Complainant submitted an additional submission on April 25, 2012, which hread as follows:
Respondent Does Not Challenge That Complainant Meets Policy ¶ 4(a)(i).
Respondent does not challenge that the domain names <filtretepro.com> and <filtretepro.net> are confusingly similar to the 3M mark. In fact, Respondent’s statements regarding Complainant’s FILTRETE mark indicates Respondent’s awareness of Complainant’s trademark rights.
Respondent’s Allegations Do Not Support a Finding of Rights or Legitimate Interest under Policy ¶ 4(a)(ii).
Respondent argues that because it is the owner of a company that operates as reseller of Complainant’s FILTRETE brand products, among many competing products, it can register domain names incorporating Complainant’s FILTRETE mark. But while Respondent may have some connection to a reseller, this connection does not confer upon Respondent any rights to use the FILTRETE mark in connection with domain name registrations.
In particular, to support his contention that Complainant somehow authorized his registration of the infringing domain names, Respondent submits a document, identifying Respondent as registered agent for Drill Spot, LLC., and another document listing Drill Spot, LLC as an owner of shares on 12/31/2006 in True Value Company. Respondent also attaches a document as a “Truserv vendor directory” identifying the Truserv “sales agent” at 3M Company (identifying a former 3M employee). However, the purported fact that Respondent is affiliated with a company (Drill Spot) which is purportedly one of hundreds (or thousands) of affiliates of one of Complainant’s customers True Value Company, does not constitute authorization from Complainant for Respondent to register and use domain names containing Complainant’s FILTRETE mark (or its 3M mark). Complainant has not authorized True Value Company or any of its affiliated members to register domain names containing Complainant’s trademarks.
Moreover, Respondent does not meet the well-established requirements to demonstrate that it has rights or legitimate interest, as a reseller, in the domain names at issue. “A reseller or authorized dealer of trademarked merchandise may legitimately use a domain name incorporating the trademark if (1) the reseller is actually offering the merchandise for sale; (2) the reseller uses the domain name for a website that promotes only the trademarked merchandise; (3) the website accurately discloses the reseller’s relationship with the trademark owner; and (4) the reseller does not try to corner the market in domain names incorporating the trademark.” Jandy Industries, Inc. v. Jurtin, FA1230025 (NAF Dec. 9, 2008) (citing ITT Mfg. Enters., Inc. v. Nicoll, D2008-0936 (WIPO Nov. 7, 2008)).
Here, Respondent does not meet requirements 1, 2, or 3. First, Respondent is using the domain names in connection with a pay-per-click website offering links to competing products; he is not actually offering any merchandise for sale in connection with the <filtretepro.com> and <filtretepro.net> domain names.
Next, Respondent states that he intends to use the <filtretepro.com> and <filtretepro.net> domain names in connection with the company Drill Spot, LLC, which sells products from a wide variety of brands, including directly competitive products. In fact, if a consumer searches for “Filtrete” at the drillspot.com website, the first link that appears, labeled “Pleated Air Filters,” takes the consumer to a listing of 447 different products, most of which are third party products which compete with Complainant’s FILTRETE products.
Finally, Respondent’s pay-per-click website displays no disclaimer stating his relationship with Complainant. Due to Respondent’s use of the subject domain names, as described above, Respondent cannot establish rights or legitimate interest as a reseller of Complainant’s products.
Respondent’s Allegations Do Not Negate His Bad Faith under Policy ¶ 4(a)(iii).
Respondent alleges that because it could use the domain names in the future to advertise Complainant’s products, along with competitors’ products, that it is demonstrating good faith in registering and using the domain names. Respondent’s argument is mere postulation and does not negate his clear bad faith activities.
Complainant has operated a website at http://www.filtrete.com since 1999, and has prominently used that website address in its advertising. Respondent has taken advantage of this fact by registering domain names incorporating the FILTRETE mark and misdirecting consumers to a pay-per-click website offering links to competitors’ products.
Respondent registered the <filtretepro.com> and <filtretepro.net> domain names over 6 months ago, and during that time, has only used the domain names in connection with a pay-per-click website. Respondent’s activities, making no legitimate use of the domain names for over 6 months, further demonstrate Respondent’s bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (NAF Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The mere fact that Respondent may be affiliated with a company that is a reseller of products manufactured by Complainant does not negate his bad faith. Particularly when Respondent engages in the exact patterns of activity for which the UDRP is needed – registration of domain names confusingly similar to a famous trademark, then holding them for use as a pay-per-click website and making no legitimate use of the domain names.
Further, Respondent attached to his Response a letter from Complainant’s outside counsel. In response to that letter, Respondent stated, “As you are aware, my registration of Filtretepro.com/.net is not violating trademarks. Please make an offer if you're interested.” Note that Respondent made no mention of any of the allegations raised in his Response.
Complainant’s outside counsel then made an offer of $50 for the two domain names, representing out-of-pocket costs for the registrations. Respondent did not respond to this correspondence, necessitating this UDRP filing. Respondent’s offer to sell the domains to Complainant, but unwillingness to do so for his out-of-pocket costs, further demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(i). See e.g., World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (NAF Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”);
After considering all of the evidence, the Panel concludes:
(1) the domain names 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 names; and
(3) the domain names have been registered and are being used in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order 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 provides the Panel with copies of its USPTO trademark registration certificates for its FILTRETE mark (e.g., Reg. No. 1,363,908 registered October 8, 1985). Based on the evidence submitted by Complainant, the Panel finds Complainant’s USPTO trademark registrations are sufficient evidence Complainant holds rights in its FILTRETE mark for the purposes of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant claims Respondent’s <filtretepro.com> and <filtretepro.net> domain names are confusingly similar to Complainant’s FILTRETE mark. Complainant claims the disputed domain names contain Complainant’s entire mark, the descriptive term “pro,” and the generic top-level domain names (“gTLDs”) “.com” and “.net.” Respondent essentially admits these allegations. The Panel finds adding a descriptive term and a gTLD to a complainant’s mark does not adequately distinguish a disputed domain name from a mark. 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Therefore, the Panel concludes Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the disputed domain names and was not given consent to use the disputed domain names. The Panel notes the WHOIS information lists “Paul Lin” as the registrant of the <filtretepro.com> and <filtretepro.net> domain name. Prior panels have concluded a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name and a respondent has not been authorized to use the disputed domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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). This Panel agrees and holds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(i). Respondent impliedly admits not to be commonly known by the domain names.
Complainant claims Respondent is not using the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends the disputed domain names resolve to a website containing sponsored advertisements for Complainant’s competitors’ goods. Past panels have found the offering of goods or services that compete with Complainant is evidence Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain names. See 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). This Panel agrees Respondent’s use of the disputed domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel is not persuaded by Respondent’s arguments that he has rights to the domain name because his company sells Complainant’s products. Regardless of what Respondent’s company does (and has authority to do), it is a different “person” than Respondent under the law. Therefore, those arguments are not persuasive.
Even if Respondent and his company were considered the same juridical person, Respondent is not actually using the domain names to sell Complainant’s products. It links to web sites that sell competing products. This argument is not persuasive because Respondent is not actually doing what he suggests he might be doing…using the domain names to sell Complainant’s products.
Finally, Respondent could argue he is preparing to use the domain names to sell Complaint’s products. Aside the fact Respondent didn’t actually make this argument, Respondent submitted no proof this was true. Therefore, the Panel does not find this hypothetical argument convincing based upon the facts of this case.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant argues Respondent registered and is using the <filtretepro.com> and <filtretepro.net> domain names for the purpose of attracting Internet users for commercial gain. Complainant contends Respondent’s use of the disputed domain names will likely confuse Internet users into believing Complainant sponsors or is affiliated with the disputed domain names. Complainant then claims Respondent receives monetary compensation for driving traffic to the websites featured in the advertisements hosted at the disputed domain names. Complainant claims Respondent is therefore commercially benefitting from Internet users’ confusion. Past panels have found that using Complainant’s mark to attract Internet users to a website featuring pay-per-links to Complainant’s competitors is evidence of bad faith 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 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).”). This Panel agrees Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(b)(iv).
Complainant also claims, in light of the fame and notoriety of Complainant's FILTRETE mark, it is inconceivable Respondent could have registered the <filtretepro.com> and <filtretepro.net> domain names without actual and constructive knowledge of Complainant's rights in the mark. The Panel finds arguments of bad faith based on constructive notice are not persuasive because UDRP case precedent declines to find bad faith solely as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and this constitutes adequate evidence of bad faith under Policy ¶4(a)(iii). See 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 name 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)."
In this case, Respondent clearly knew about Complainant’s marks because Respondent’s company sells Complainant’s merchandise. That small connection does not prevent a finding of bad faith registration and use.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <filtretepro.com> and <filtretepro.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 7, 2012
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