3M Company v Jason E. Johns c/o Jason Johns
Claim Number: FA1207001452354
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Jason E. Johns c/o Jason Johns (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmancardiologyiii.com>, registered with eNom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2012; the National Arbitration Forum received payment on July 9, 2012.
On July 10, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <littmancardiologyiii.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@littmancardiologyiii.com. Also on July 11, 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 August 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <littmancardiologyiii.com> domain name is confusingly similar to Complainant’s LITTMANN and CARDIOLOGY III marks.
2. Respondent does not have any rights or legitimate interests in the <littmancardiologyiii.com> domain name.
3. Respondent registered or used the <littmancardiologyiii.com> domain name in bad faith.
B. Respondent filed no response in these pleadings.
1. Complainant 3M was founded in 1902 and has grown into a technology company offering products and services to communities worldwide.
2. Complainant began marketing stethoscopes under the LITTMANN brand name in 1967 when it acquired Cardiosonics, Inc., which was founded by David Littmann, M.D. Dr. Littmann patented a new stethoscope with improved acoustics.
3. Complainant has sold a certain line of LITTMANN brand stethoscopes, known for their uniquely shaped chest pieces, under the CARDIOLOGY III mark since June of 1987.
4. Complainant’s LITTMANN brand has had a strong reputation since 1942 in connection with medical products and Complainant has expended a large sum of money in marketing products under the LITTMANN mark to maintain its reputation.
5. Complainant provides evidence of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LITTMAN mark (e.g., Reg. No. 751,809 registered June 25, 1963) and its CARDIOLOGY III mark (Reg. No. 3,619,324 registered May 12, 2009). See Exhibits 1A and 1E.
6. Respondent registered the <littmancardiologyiii.com> domain name on June 1, 2012.
7. Respondent has no statutory or common law trademark rights or legitimate interests in Complainant’s LITTMANN or CARDIOLOGY III mark or in the <littmancardiologyiii.com> domain name.
8. Complainant has not authorized Respondent to use either the LITTMANN or the CARDIOLOGY III marks in any way.
9. Respondent registered a domain name that is confusingly similar to Complainant’s marks.
10. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
11. Respondent’s registration and use of the disputed domain name is in bad faith because Respondent profits from the confusion it creates by using a confusingly similar domain name to Complainant’s marks.
12. Respondent diverts traffic away from Complainant’s website and to its own website.
13. Respondent had actual knowledge and constructive knowledge of Complainant’s rights in the LITTMANN and CARDIOLOGY III marks.
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 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 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.”).
Complainant alleges that it owns rights in the LITTMANN mark through its registration with the USPTO (e.g., Reg. No. 751,809 registered June 25, 1963). The Panel determines that Complainant’s USPTO trademark registration is sufficient to demonstrate its rights in the LITTMANN mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that its USPTO registration for the CARDIOLOGY III mark demonstrates its rights in the mark. In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panel stated that the complainant established rights in its mark through registration with the USPTO. The Panel concludes that Complainant owns rights in its CARDIOLOGY III mark via its USPTO registration, pursuant to Policy ¶ 4(a)(i).
Complainant claims that the <littmancardiologyiii.com> domain name is confusingly similar to its LITTMANN and CARDIOLOGY III marks. Complainant contends that the disputed domain name incorporates both marks and omits one letter “n” from the LITTMANN mark in the domain name. The Panel also observes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel determines that, because the domain name includes Complainant’s entire CARDIOLOGY III mark, a misspelled version of Complainant’s LITTMANN mark, and a gTLD, the <littmancardiologyiii.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks).
Complainant must first make a prima facie case that 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 does have 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 argues that Respondent’s lack of rights and legitimate interests in the <littmancardiologyiii.com> domain name is demonstrated by Respondent’s lack of permission from Complainant to use either the LITTMANN or the CARDIOLOGY III marks. The Panel observes that the WHOIS information for the disputed domain name identifies “Jason E. Johns” as the registrant. See Exhibit 4. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel stated that the respondent was not commonly known by the disputed domain name where the WHOIS information did not show that the respondent was commonly known by the domain name and the complainant claimed not to have authorized the respondent’s use of its marks to register a domain name. The Panel concludes that the WHOIS information, as well as Respondent’s lack of permission to use the LITTMANN or CARDIOLOGY III marks, demonstrate that Respondent is not commonly known by the <littmancardiologyiii.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <littmancardiologyiii.com> domain name to “trick” consumers into visiting its website rather than Complainant’s website and forwards Internet users to a third-party product page. Complainant alleges that Respondent’s resolving website prominently uses the LITTMANN and CARDIOLOGY III marks and uses the website in connection with Google advertising and Amazon.com affiliate networking, which Complainant claims is commercial in nature and not a bona fide use. The Panel notes that Complainant submits evidence showing a screenshot of the resolving webpage, which contains information regarding a “Privacy Policy,” and a page that allows website visitors to fill out boxes to contact Respondent. See Exhibit 6. As Complainant does not specify whether the products are competing or noncompeting, the Panel chooses to treat the hyperlinks as unrelated. The Panel determines that Respondent’s use of the disputed domain name to link Internet users to a third-party product page 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). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Complainant argues that Respondent diverts consumers from Complainant’s website and regards Respondent as a competitor under Policy ¶ 4(b)(iii). Complainant alleges that Respondent competes for the same consumers who search for Complainant’s products under the LITTMANN mark and Respondent benefits from the diversion by generating “click-through” revenue related to the advertisements appearing on its website. The panel in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), stated that the respondent’s utilization of the disputed domain name to host a website to competing hyperlinks establishes Respondent’s registration and use in bad faith. The Panel concludes that Respondent registered and uses the <littmancardiologyiii.com> domain name in bad faith under Policy ¶ 4(b)(iii) due to its use of Complainant’s mark to divert potential consumers and disrupt Complainant’s business.
Complainant contends that Respondent attempts to attract Internet users to its website in order to make a commercial profit by creating confusion with Complainant’s mark. Complainant claims Respondent’s bad faith is shown by Respondent’s registration of the <littmancardiologyiii.com> domain name in order to make a profit from its improper association with the LITTMANN and CARDIOLOGY III marks. The Panel concludes that, by registering a confusingly similar domain name in order to attract Internet traffic to its website and generate a profit from “click-through” links, Respondent’s registration and use of the <littmancardiologyiii.com> domain name is in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant argues that Respondent had actual and constructive knowledge of its LITTMANN mark and CARDIOLOGY III mark at the time it registered the <littmancardiologyiii.com> domain name. Complainant alleges that Respondent’s constructive knowledge is shown by Complainant’s trademark rights in its LITTMANN marks (including its CARDIOLOGY III mark) through the USPTO. Complainant contends that Respondent’s actual knowledge of Complainant’s marks are demonstrated by Respondent’s registration of two unique marks belonging to Complainant and that there would be no reason to register a combination of the two marks other than to trade on Complainant’s rights. The Panel determines that constructive knowledge alone is inadequate to make a finding of bad faith registration and use; however the Panel determines that Respondent’s use of two of Complainant’s marks in the <littmancardiologyiii.com> domain name demonstrates that Respondent had actual knowledge of Complainant’s marks, demonstrating bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmancardiologyiii.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 15, 2012
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