3M Company v Tony
Claim Number: FA1209001464840
Complainant is 3M Company (“Complainant”), represented by Tyson Smith, Texas, USA. Respondent is Tony (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personalizedpostitnotes.net>, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2012; the National Arbitration Forum received payment on September 27, 2012.
On September 28, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <personalizedpostitnotes.net> 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 October 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@personalizedpostitnotes.net. Also on October 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant is the owner of the POST-IT mark, used in connection with repositional adhesive notes. Complainant also offers personalization of these notes. The POST-IT mark (e.g., Reg. No. 1,046,353 registered August 17, 1976) is registered with the United States Patent and Trademark Office (“USPTO”). Complainant argues that the <personalizedpostitnotes.net> domain name is confusingly similar to the POST-IT mark given that the disputed domain name is simply made up of Complainant’s mark without the hyphen, the terms “personalized” and “notes” and the generic top-level domain (“gTLD”) “.net.”
Respondent does not have rights or legitimate interests in the <personalizedpostitnotes.net> domain name. Respondent is not commonly known by the disputed domain name and the <personalizedpostitnotes.net> domain name resolves to a parked websites with links to third-party websites offering goods or services related to those offered by Complainant.
Respondent registered and uses the <personalizedpostitnotes.net> domain name in bad faith. Respondent receives compensation for its display of links to competing third-party goods via the disputed domain name. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the POST-IT mark as to the source, sponsorship, affiliation, or endorsement of the <personalizedpostitnotes.net> domain name. With notice of Complainant’s rights in the POST-It mark, Respondent registered and uses the <personalizedpostitnotes.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its POAT-IT mark.
2. Respondent’s <personalizedpostitnotes.net> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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 contends that it is the owner of the POST-IT mark, used in connection with repositional adhesive notes, including personalized notes. Complainant asserts that it owns the POST-IT mark (e.g., Reg. No. 1,046,353 registered August 17, 1976) registrations with the USPTO. Panels have found that the registration of a mark, regardless of the location of the parties, is evidence of having rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the POST-IT mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <personalizedpostitnotes.net> domain name is confusingly similar to the POST-IT mark given that the disputed domain name is simply made up of Complainant’s mark without the hyphen, the terms “personalized” and “notes” and the gTLD “.net.” In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel held that changes of punctuation and gTLD additions are irrelevant to a Policy ¶ 4(a)(i) analysis. In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel found that the addition of generic and descriptive terms does not bar a panel from holding a domain name to be confusingly similar to the mark within it. Therefore, the Panel finds that Respondent’s <personalizedpostitnotes.net> domain name is confusingly similar to the POST-IT mark under Policy ¶ 4(a)(i).
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 does not have rights or legitimate interests in the <personalizedpostitnotes.net> domain name as Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record for the <personalizedpostitnotes.net> domain name lists “Tony” as the domain name registrant. Panels have previously held that the WHOIS record is often determinative of whether a respondent is found to be commonly known by a 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). Therefore, the Panel finds that Respondent is not commonly known by the <personalizedpostitnotes.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the disputed domain name further demonstrates its lack of rights and legitimate interests. Complainant asserts that the <personalizedpostitnotes.net> domain name resolves to a parked website with links to third-party websites offering goods or services related to those offered by Complainant. The Panel refers to Complainant’s Exhibit E which has a screenshot of the <personalizedpostitnotes.net> domain name’s resolving website, demonstrating that the links are displayed through headings such as “Custom Sticky Notes” and “Bic Sticky Note BOGO SALE.” Therefore, the Panel finds that Respondent’s use of the <personalizedpostitnotes.net> domain name 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. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant contends that Respondent registered and uses the <personalizedpostitnotes.net> domain name in bad faith. Complainant alleges that Respondent receives compensation for its display of links to competing third-party goods via the disputed domain name. Complainant thus argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the POST-IT mark as to the source, sponsorship, affiliation, or endorsement of the <personalizedpostitnotes.net> domain name. Therefore, the Panel finds that Respondent registered and is using the <personalizedpostitnotes.net> domain name in bad faith under 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).
Complainant asserts that, with notice of Complainant’s rights in the POST-It mark, Respondent registered and continues to use the <personalizedpostitnotes.net> domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <personalizedpostitnotes.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 12, 2012
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