3M Company v. ZengXianYun / XianYun Zeng
Claim Number: FA1207001452413
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is ZengXianYun / XianYun Zeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mprivacyfilter.net>, registered with Name.com LLC.
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 9, 2012; the National Arbitration Forum received payment on July 9, 2012.
On July 9, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <3mprivacyfilter.net> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@3mprivacyfilter.net. Also on July 9, 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 1, 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 <3mprivacyfilter.net> domain name is confusingly similar to Complainant’s 3M mark.
2. Respondent does not have any rights or legitimate interests in the <3mprivacyfilter.net> domain name.
3. Respondent registered or used the <3mprivacyfilter.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 is established its rights in the 3M mark by registering with the USPTO (e.g., Reg. No. 1,275,187 registered April 24, 1984) and the SAIC (e.g., Reg. No. 138,324 registered July 5, 1980). Complainant submits multiple trademark certificates issued by both authorities, which the Panel notes identify Complainant as the owner of the duly registered marks. See Complainant’s Exhibit C. Therefore, the Panel concludes that Complainant established its rights in the 3M mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant also alleges that Respondent’s <3mprivacyfilter.net> domain name is confusingly similar to Complainant’s 3M mark. The Panel notes that the disputed domain name includes the entire 3M mark, while adding the generic top-level domain (“gTLD”) “.net,” and the descriptive terms “privacy filter.” Complainant states that the terms “privacy filter” are descriptive because Complainant sells a privacy shield for computers, which Complainant claims also happens to be one of the products sold by Respondent from its website. Thus, the Panel finds that Respondent’s <3mprivacyfilter.net> domain name is confusingly similar to Complainant’s 3M mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also 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).
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 asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “ZengXianYun / XianYun Zeng.” The Panel also notes that Respondent failed to offer any evidence to support a finding that it is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 also asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the disputed domain name resolves to a website offering counterfeit versions of Complainant’s products for sale alongside the products of Complainant’s competitors. The Panel notes that the screenshot provided by Complainant identifies a website offering privacy shields for computer monitors for sale, some which bear Complainant’s 3M mark. Therefore, the Panel concludes that Respondent is not making a bona fide offering of goods or services Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant posits that Respondent has developed a pattern of infringing registration based upon past UDRP proceedings. Complainant states that it and Respondent have been opposing parties in disputes before the Forum, wherein the disputed domain names were transferred from Respondent to Complainant. See 3M Company v. YunYao Technology Co., Ltd / XianYun Zeng / Xiankai Zeng, FA 1403241 (Nat. Arb. Forum Sept. 28, 2011); see also 3M Company v. XianYun Zeng/ ZengXianYun, FA 1405103 (Nat. Arb. Forum Oct. 11, 2011); see also 3M Company v. li liandou / Robinson Zeng / Zeng Xian Yun, FA 1410335 (Nat. Arb. Forum Nov. 22, 2011). Based upon the previous cases, the Panel finds that Respondent has engaged in a pattern of infringing registrations, which the Panel concludes indicates bad faith registration and use under Policy ¶ 4(b)(ii) in the present matter.
Complainant contends that Respondent intentionally attempts to attract, for commercial gain, Internet searchers to its website, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant states that the disputed domain name resolves to a website offering counterfeit versions of Complainant’s own products, as well as products that compete directly with Complainant’s legitimate offerings. The Panel finds that Respondent is attempting to commercially gain by confusing Internet users into purchasing goods from it rather than Complainant, and the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant also contends that Respondent had knowledge of Complainant and its rights in the 3M mark when it registered the disputed domain name. Complainant claims that Respondent’s sale of competing and counterfeit goods indicate a modicum of actual knowledge of the value of using Complainant’s mark in the domain name. Complainant also claims that because Respondent was previously a party to adverse UDRP proceedings against Complainant that Respondent was well aware of Complainant’s rights in the 3M mark. While constructive knowledge is not sufficient to support a finding of bad faith registration and use, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the 3M mark when it registered the disputed domain name, and the Panel concludes that Respondent did so in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <3mprivacyfilter.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 14, 2012
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