national arbitration forum

 

DECISION

 

3M Company v. David Johnson

Claim Number: FA1204001440170

 

PARTIES

Complainant is 3M Company (“Complainant”), represented by Tyson Smith, Texas, USA.  Respondent is David Johnson (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <just-post-it.net>, <justpost-its.com>, <justpost-its.net>, <just-post-its.net>, and <just-post-its.com>, 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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2012; the National Arbitration Forum received payment on April 19, 2012.

 

On April 23, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <just-post-it.net>, <justpost-its.com>, <justpost-its.net>, <just-post-its.net>, and <just-post-its.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  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 April 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@just-post-it.net, postmaster@justpost-its.com, postmaster@justpost-its.net, postmaster@just-post-its.net, and postmaster@just-post-its.com.  Also on April 26, 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 May 21, 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. 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

3M Company (referred to herein as “Complainant” or “3M”) is one of the world’s most diversified companies, offering more than 50,000 products and services in a wide variety of fields.  3M products, including its POST-IT repositionable adhesive notes, are sold throughout the world.  Since introducing its revolutionary POST-IT Notes over three decades ago, 3M has extensively used and promoted the POST-IT mark in connection with a number of highly successful consumer and office products.  The POST-IT mark is now among the most famous in the United States, with very high brand awareness levels.

 

3M uses its famous POST-IT mark extensively (1) on its websites located at www.postit.com and www.post-it.com, and (2) in advertising and promotional materials.  3M also owns the domain name just-post-it.com, which redirects to www.3m.com.  In addition to its common law trademark rights resulting from decades of use, 3M also owns numerous U.S. registrations, many of which are incontestable, for the famous POST-IT mark.  See, e.g., U.S. Reg. Nos. 1,046,353; 1,198,694; 2,012,212; 2,371,084; and 2,372,832.

 

            FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds:

 

a.         The domain names at issue are identical or confusingly similar to Complainant’s famous POST-IT mark.  Indeed, the disputed domain names each incorporate Complainant’s POST-IT mark in its entirety, merely combining it with the generic term “just” and some of the names adding an “s” to the mark.  Consequently, consumers are highly likely to associate the disputed domain names with Complainant and its products and services.  Further, the disputed domain names are nearly identical to Complainant’s domain name just-post-it.com, with each disputed domain name merely adding an “s,” changing the top-level domain, and/or removing a hyphen from Complainant’s just-post-it.com domain name.

 

b.         Respondent has no rights or legitimate interests in the domain name.

 

          i.          Respondent has not used, nor made any demonstrable preparations to use, the domain name at issue or a name corresponding to that domain name in connection with a bona fide offering of goods or services.  3M’s attorneys sent Domains By Proxy, Inc., the privacy service through which Respondent registered the domain names at issue, a cease-and-desist letter on December 20, 2011 regarding the domain names just-post-its.net, just-post-its.com, and just-post-it.net,^[1] which Domains By Proxy apparently forwarded to Respondent.  However, Respondent has not ceased the infringing activities.  Instead, Respondent (1) refused an offer from 3M to reimburse Respondent’s out-of-pocket registration costs for these domain names in exchange for transfer of these domain names to 3M, (2) indicated the domain names are for sale, and (3) invited 3M to make an offer to buy the domain names.  Respondent has also exchanged numerous emails and placed several phone calls with Complainant’s attorneys, including emails initially denying ownership of just-post-its.com and just-post-it.net.  Respondent also denied refusing to transfer the domain names, notwithstanding the refusal to accept 3M’s offer to reimburse out-of-pocket registration expenses incurred in registering the domain names.

 

Further, Respondent has continued using the domain names in connection with pay-per-click parking pages displaying links with titles likely to be associated with Complainant or its products and services, such as “Custom Post-it Notes,” “Sticky Notes,” and “Personalized Note Pads,” among others.  Instead, these links divert Internet users to third-party websites that are not affiliated with Complainant. 

 

            ii.          Respondent is not commonly known by the domain names at issue.

 

            iii.         Respondent is not making a legitimate noncommercial or fair use of the domain names.  Instead, Respondent is using the domain names in connection with parking pages displaying links with titles likely to be associated with Complainant or its products and services (e.g., “Custom Post-it Notes,” “Sticky Notes,” and “Personalized Note Pads”), but which divert Internet users to third-party websites not affiliated with Complainant.^[2] 

 

iv.        An offer to sell the domain name at issue is evidence of a lack of legitimate interest in the name.  As detailed above, Respondent indicated the domain names are for sale, invited 3M to make an offer to buy the domain names, and refused to transfer the names in exchange for the Respondent’s out-of-pocket costs.

 

v.         The inclusion of “POST-IT” in the plural form (i.e. with an “s”) indicates Respondent’s clear intention to reference Complainant’s famous mark, and is indefensible as a fair use.  In other words, the term “Post-its” would likely be understood by consumers to refer to Complainant’s POST-IT brand products. This is further evidence that Respondent lacks a legitimate interest in the domain names.  

 

c.         Respondent registered the domain names in bad faith.

 

i.          Respondent presumably is paid a fee or commission when Internet users visit the websites located at the disputed domain names, click on the various links likely to be associated with Complainant, and are diverted to third-party websites.  Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the POST-IT mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites and/or the links displayed on Respondent’s websites.^[3]

 

            ii.          Respondent has refused 3M’s demands and continued the infringing activity despite being given notice of 3M’s trademark rights. 

 

            iii.         Respondent refused an offer from 3M to reimburse the out-of-pocket registration costs incurred in registering these domain names in exchange for transfer of these domain names to 3M, indicated the domain names are for sale, and invited 3M to make an offer to buy the domain names.  This is further evidence of registration and use in bad faith. 

 

iv.        Not only are the domain names themselves highly likely to cause confusion, but Respondent displays link titles on the websites found at the domain names that are clear references to 3M and its goods and services.

 

            vi.        Respondent’s bad faith also is evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain names; the domain names do not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain names in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s POST-IT mark in a site accessible under the domain names; and Respondent’s domain names incorporate the highly distinctive and famous POST-IT mark.  See 15 U.S.C. §1125(d)(1)(B)(i).

 

B. Respondent

On May 23, 2012, Respondent sent an email (which did not constitute a formal response to the complaint) which read:

 

“…[A]s we have never used any of these domains since we purchased them through GoDaddy, and would not have purchased them if we had known this would be an Issue and we could not use them, we are only asking to be reimbursed for our expenses. We feel this is a reasonable request. Please advise.

Thank you,

David Johnson”

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

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."

 

Paragraph 4(a) of the Policy requires Complainant to 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 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.”).

 

Identical and/or Confusingly Similar

Complainant owns the POST-IT mark and uses the mark to sell its POST-IT re-positional adhesive notes throughout the world.  Complainant claims it owns numerous trademark registrations with the USPTO for its POST-IT mark (e.g., Reg. No. 1,046,353 registered August 17, 1976) and provided the Panel with evidence of its trademark registrations.  Proof of trademark registration is adequate proof Complainant has rights in the POST-IT mark for the purposes of Policy ¶4(a)(i).  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. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶4(a)(i)).

 

Complainant claims Respondent’s <just-post-it.net>, <justpost-its.com>, <justpost-its.net>, <just-post-its.net>, and <just-post-its.com> domain names differ from Complainant’s POST-IT mark by the additions of the letter “s,” the term “just,” the generic top-level domain (“gTLD”) “.com,” and, in some of the domain names, a hyphen.  In addition, some of Respondent’s domain name names are identical to Complainant’s domain names (except for the top level domain reference).  In particular, Respondent’s just-post-it.net is identical to Complainant’s just-post-it.com (with the exception of the gTLD). The additions of a letter and a generic term both fail to adequately distinguish a disputed domain name from a complainant’s mark.  See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)).  The addition of a hyphen and a gTLD are irrelevant to a Policy ¶4(a)(i) analysis.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); 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).  In light of these conclusions, Respondent’s <just-post-it.net>, <justpost-its.com>, <justpost-its.net>, <just-post-its.net>, and <just-post-its.com> domain names are confusingly similar to Complainant’s POST-IT mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied. 

 

Rights or Legitimate Interests

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.  Respondent’s inadequate response does not make this claim (nor did Respondent make a formal response).  The original registration was a privacy service, which is obviously not known by the domain name.  After the issue was raised with the privacy service, Respondent’s name was disclosed.  In examining the evidence in the record, the Panel notes the subsequently disclosed WHOIS information, which lists “David Johnson” as the registrant of the disputed domain names, does not suggest Respondent is known by the domain names.  Based on this evidence, Respondent is not commonly known by the <just-post-it.net>, <justpost-its.com>, <justpost-its.net>, <just-post-its.net>, and <just-post-its.com> domain names under Policy ¶4(c)(ii).  See 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 the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant claims Respondent uses the disputed domain names in connection with pay-per-click parking pages displaying hyperlinks that divert Internet users to third-party websites unaffiliated with Complainant.  Complainant notes the resolving websites contain hyperlinks entitled “Sticky Notes,” “Custom Post-it Notes,” “Recycled Post-It Notes,” as well as hyperlinks entitled “Promotional Hand Sanitizer,” “Service Desk Software,” “Local Weather Forecast,” and “Jiffy Lube Coupon,” among others.  After examining the screen shots provided by Complainant, the Panel finds Respondent uses the disputed domain name to host hyperlinks that resolve to competing and non-competing websites. Complainant argues Respondent receives pay-per-click fees from the hyperlinks.  The Panel finds Respondent’s use of the disputed domain names to host competing and noncompeting hyperlinks is evidence Respondent is making neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)).

 

Complainant also argues Respondent offered to sell the domain names.  Based upon the record provided by Complainant, this conclusion is not clear.  Respondent was clearly “playing it cute” and Complainant failed to put the question directly to Respondent (or, if it did, failed to provide evidence of that fact to the Panel).  The Panel cannot conclude based upon the evidence provided that Respondent offered to sell the domain names.

 

While Respondent appears to ask for its actual costs in its “unofficial” response, the Panel does not find any such request before this proceeding was instituted.  Respondent never asked Complainant for its actual out of pocket costs.  Respondent did not document its out of pocket costs (to either Complainant or to this Panel).  Therefore, the Panel also cannot conclude Respondent offered to transfer the domain names at issue solely for the reimbursement of Respondent’s out of pocket costs.

 

The Panel notes in passing Respondent has admitted it never used the domain names in question.  Therefore, it is impossible for Respondent to have acquired any rights to the domain names by using them.

 

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

 

Registration and Use in Bad Faith

Complainant claims Respondent intentionally attempts to attract, for commercial gain, Internet users to the websites resolving from the <just-post-it.net>, <justpost-its.com>, <justpost-its.net>, <just-post-its.net>, and <just-post-its.com> domain names by creating confusion as to Complainant’s affiliation with the disputed domain names.  Complainant claims Respondent uses the disputed domain names in connection with pay-per-click parking pages displaying hyperlinks that divert Internet users to competing, third-party websites.  Complainant argues Respondent attempts to create confusion by providing hyperlinks that may appear to be associated with Complainant.  Complainant further claims Respondent commercially benefits from the disputed domain names by receiving pay-per-click fees.  Based on this evidence, the Panel concludes Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

Respondent registered the domain names at issue with a privacy service.  This means title to the domain name was held by a bare trustee for the benefit of an undisclosed principal to hide the real owner’s name.  As this panel has held numerous times, there is no bona fide reason to register a domain name in this manner in a commercial context (although there might well be a bona fide reason to do so in a personal context).  Registration in this context essentially amounts to providing false or misleading WHOIS information, which raises the rebuttable presumption of bad faith registration and use.  Respondent has presented no evidence to rebut this presumption.

 

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

 

DECISION

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

 

Accordingly, it is Ordered the <just-post-it.net>, <justpost-its.com>, <justpost-its.net>, <just-post-its.net>, and <just-post-its.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Friday, May 25, 2012