3M Company v. Dimitri Karneris
Claim Number: FA1210001467621
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Dimitri Karneris (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannclassiciisestethoscope.com>, registered with KEY-SYSTEMS GMBH.
The undersigned certifies he has acted independently and impartially and to the best of his 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 October 16, 2012; the National Arbitration Forum received payment on October 17, 2012.
On October 17, 2012, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <littmannclassiciisestethoscope.com> domain name is registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. KEY-SYSTEMS GMBH has verified that Respondent is bound by the KEY-SYSTEMS GMBH 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 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@littmannclassiciisestethoscope.com. Also on October 18, 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 November 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
3M Company (hereafter “3M”) is the owner of the LITTMANN family of trademarks used with a variety of products and services in the medical industry. 3M and its predecessor in interest have used the LITTMANN mark in commerce continuously since at least as early as 1942. Additionally, 3M is the owner of numerous registrations for the marks LITTMANN in the United States. In particular, 3M is the owner of the following marks:
Mark Goods/Services Reg. No. Country
LITTMANN Stethoscopes 751809 USA
LITTMANN Ear tips for stethoscopes 1115217 USA
LITTMANN Full line of stethoscopes 2683822 USA
[Design] Full line of stethoscopes 2681330 USA
3M also owns the common law trademark rights to the trademark CLASSIC II S.E.:
Mark Goods/Services Reg. No. Country
CLASSIC II S.E. Stethoscopes Common law Various
The foregoing LITTMANN marks are hereinafter jointly referred to as 3M’s “LITTMANN Marks.” 3M also uses its mark in connection with several websites, some of which are identified below:
Domain Name Creation Date
littmann.com 8/5/1997
littmannscopes.com 4/29/2003
littmannparts.com 10/11/2003
3m-littmann.com 3/27/2003
littmannstethoscopes.com 5/16/2007
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix). NAF Supp. Rule 4(a).
3M has a principal place of business in St. Paul, Minnesota. 3M was founded in 1902. It has grown into a diversified technology company serving customers and communities worldwide with thousands of innovative products and services. 3M first began marking stethoscopes under the LITTMANN brand in 1967 when it acquired Cardiosonics Inc., a company founded by David Littmann, M.D. Dr. Littmann was a noted cardiologist, Harvard Medical School professor, researcher, and inventor who patented a revolutionary new stethoscope with greatly improved acoustics.
3M’s LITTMANN Marks are distinctive, widely recognized trademarks. LITTMANN branded stethoscopes have become the paragon in the medical industry against which all other stethoscopes are measured. Since 1942, the LITTMANN brand has enjoyed strong customer recognition, as documented by its proprietary marks used in connection with the sale of medical products in commerce. 3M and its LITTMANN Marks enjoy a strong reputation among consumers for offering quality, well-respected name brand stethoscope as shown on its website, littmann.com.
3M has invested substantial sums of money in developing and marketing its products and services under its LITTMANN Marks and has developed substantial goodwill and customer loyalty under said marks. As a result, consumers throughout the world recognize the LITTMANN Marks as an indicator of 3M's stethoscope products.
The Respondent, Dimitri Karneris, has registered the domain name LITTMANNCLASSICIISESTETHOSCOPE.COM. Upon information and belief, Respondent registered the domain name on May 24, 2012. The domain is currently registered with the Registrar Key-Systems GMBH. (“Key-Systems”) under Key-Systems’ domain name registration policy. Respondent set up a website located at http://www.littmannclassiciisestethoscope.com that prominently uses the mark LITTMANN to attract consumers to the site. The website prominently displays the LITTMANN mark in a manner consumers would expect to see it on 3M’s own website.
Additionally, Respondent linked the commercial website with Amazon.com’s associate program. Respondent has associated the website with various Amazon.com product links that are directed to third parties who sell stethoscopes. Respondent has used the LITTMANN mark to attract consumers to the site and earn money from confusing the public. Respondent also associates its website with Google advertisements, again to profit off of 3M’s LITTMANN Marks. A user that clicks on one of the ads is taken to Google site that shows additional advertisements for 3M’s competitors.
In addition to the commercial advertising on Respondent’s site, Respondent has also taken one of 3M’s promotional videos and placed that video on its website, which gives the appearance that Respondent’s website is affiliated, associated, connected to or endorsed by 3M.
Respondent does not have a license to use the LITTMANN mark in connection with the sale of any products. Indeed, Respondent has no statutory or common law trademark rights or any other right or legitimate interest to LITTMANN, the mark LITTMANN, spelling variations of those marks, or in the infringing domain name LITTMANNCLASSICIISESTETHOSCOPE.COM. 3M has not authorized or licensed Respondent to use LITTMANN or any derivative mark for any purpose. 3M’s rights in the LITTMANN mark date back to at least as early as 1942, which is prior to Respondent’s registration of the accused domain name. As such, there is no controversy as to the fact that 3M has priority over Respondent.
The Respondent has registered and used a domain name that is confusingly similar to the LITTMANN mark in bad faith. There is no evidence the domain name was registered for a legitimate reason. Rather, the evidence shows that the Respondent registered and has used the domain name LITTMANNCLASSICIISESTETHOSCOPE.COM primarily for the purpose of commercial gain through use of 3M’s trademarks.
Respondent is using the domain name LITTMANNCLASSICIISESTETHOSCOPE.COM to lure unsuspecting consumers seeking to find 3M to a commercial website that advertises and promotes third-party websites. As such, the Respondent’s registration and use of the accused domain name that is identical and confusingly similar to the marks of 3M is likely to cause consumers to mistakenly believe that the LITTMANNCLASSICIISESTETHOSCOPE.COM website is sponsored or affiliated with 3M in violation of 3M’s rights.
a. The Domain Name LITTMANNCLASSICIISESTETHOSCOPE.COM is identical to the LITTMANN Marks.
The domain name LITTMANNCLASSICIISESTETHOSCOPE.COM is confusingly similar to 3M’s LITTMANN Marks pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy ¶4(a)(i). The domain name uses 3M’s LITTMANN mark, combines that mark with 3M’s CLASSIC II S.E. mark, and ads the descriptive term stethoscope. The addition of the term “stethoscope” increases the likelihood of confusion between the disputed domain name and 3M’s LITTMANN Marks because of the term’s obvious relationships to Complainant’s stethoscope business. E.g., Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“(t)he additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed Domain Name confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i)); Board of Trustees of the Leland Stanford Junior University v. Computer Product Information a/k/a Richard Leeds, FA 146571 (Nat. Arb. Forum March 28, 2003) (descriptive additions to a trademark highlight the confusion created by the incorporation of the complainant’s trademark and gives the false appearance of an affiliation between complainant and respondent). Also, the addition of .com to a mark is not a distinguishing feature. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that the addition of the suffix .com does not detract from the overall impression of the dominant part of the name). Therefore LITTMANNCLASSICIISESTETHOSCOPE.COM is confusingly similar to the LITTMANN Marks.
b. The Respondent
Does Not Have Any Right or Legitimate Interest in the Domain Name
LITTMANNCLASSICIISESTETHOSCOPE.COM.
Respondent does not have any right or legitimate interest in LITTMANNCLASSICIISESTETHOSCOPE.COM. The registration of domains for the purpose of redirecting Internet users interested in another’s products is not a bona fide offering of goods pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy[1] ¶4(c)(i). Moreover, Respondent has no legitimate right to the name pursuant to Policy ¶4(c)(ii) in that it has not received permission to use the mark and is offering the domain name for sale. Furthermore, Respondent is not using the mark for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent uses the sites for commercial purposes. 3M incorporates the conduct described above into this section.
1. Respondent has not used the Domain Name in Connection with a Bona Fide Offering of Goods or Services in that the Intent was to Cause Unsuspecting Consumers to Veer away from 3M’s Site.
A respondent’s use of a domain name to trick consumers into visiting its website instead of the trademark owner’s site is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i)”). Indeed, the use of a domain name to forward Internet users to a third party product page does not constitute a bona fide use of a domain name. Seiko Epson Corporation and Epson America, Inc. v. H.M., LLC, FA1008001341798 (Nat. Arb. Forum, Oct. 5, 2010) (holding use of amazon.com links to third parties who sold complainant’s goods was not a bona fide offering of goods or services under Policy ¶4(c)(i)); Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
Respondent does not have a bona fide interest in the domain name pursuant to Policy ¶4(c)(i) in that its intent in registering the domain name was to divert traffic away from 3M. The evidence shows that Respondent registered a domain name that has the commercial impression of the LITTMANN Marks. Consumers seeing that domain name in search results are likely to believe that the domain name and website are affiliated with 3M. Unsuspecting consumers attempting to visit 3M’s website are likely to visit Respondent’s website because of the confusing name. When they arrive at Respondent’s website, they are confronted with a website header that prominently uses 3M’s LITTMANN marks. Respondent, in turn, profits off the confusion by forwarding users to third parties without 3M’s permission. Respondent’s use of the domain name cannot be bona fide in that its intent is to cause confusion. See 3M v. Bui Chee Leong, FA1425613 (Nat. Arb. Forum, Mar. 1, 2012) (finding no legitimate rights or bona fide use under nearly identical fact pattern where respondent used 3M’s promotional video (same as in this case) and links to Amazon.com (same as here) on website using combination of LITTMANN and CLASSIC II marks).
2. Respondent has no Legitimate Right in the Domain Name because 3M has not Granted Registrant Permission to use the Name.
Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the mark and has not received permission from 3M to use the mark. Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name. Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent.” Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Nat. Arb Forum March 29, 2005).
Respondent does not have a legitimate interest in the domain name LITTMANNCLASSICIISESTETHOSCOPE.COM. 3M has not licensed its LITTMANN Marks to Respondent. 3M’s prior rights to the trademark LITTMANN dating back to at least as early as 1942 precede Respondent’s domain name registration. Additionally, Respondent is not commonly known by the name LITTMANN or CLASSIC II SE. Indeed, the WHOIS report shows that Respondent is “Dimitri Karneris”. The domain name LITTMANNCLASSICIISESTETHOSCOPE.COM clearly does not refer to Respondent.
3. Respondent’s Diversion of Traffic to a Website Offering Commercial Products is not a Legitimate Use.
Respondent is also not using the domain name for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the name is used commercially to compete against 3M. By offering advertisements to competitive products, Respondent directly competes against 3M. Further, by offering 3M’s products without permission, Respondent diverts consumers away from 3M’s own websites. 3M loses a portion of each sale associated with any product that is sold through a third party as opposed to going directly through 3M. Respondent does not have permission to use 3M’s marks. Moreover, Respondent’s use of the LITTMANNCLASSICIISESTETHOSCOPE.COM domain name misappropriates 3M’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding 3M and its branded products and services.
c. The Domain Name Has Been Registered and Used In Bad Faith
Respondent’s registration of a domain name in association with 3M’s LITTMANN Marks shows the registration was in bad faith. Respondent’s registration of a domain name with the constructive knowledge of 3M’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii). Because Respondent’s website associated with the LITTMANNCLASSICIISESTETHOSCOPE.COM domain name is aimed at taking customers away from 3M, thereby disrupting 3M’s business, Respondent has also acted in bad faith pursuant to Policy ¶4(b)(iii). Respondent’s intentional attempt to attract Internet users to its website by using a name that is confusingly similar to LITTMANN is also in violation of Policy ¶4(b)(iv). 3M incorporates the conduct described above into this section.
1. Respondent
Registered the Domain Name in Bad Faith Knowing of 3M’s Trademark Rights in
that Brand.
Respondent’s registration of the LITTMANNCLASSICIISESTETHOSCOPE.COM domain name was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent knew of 3M’s rights. “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Regardless of actual knowledge, a respondent should have conducted a trademark search prior to the registration of the domain name. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case D2001-1319 (Feb 1, 2002) (holding the failure to conduct a trademark search considered an element of bad faith).
The evidence shows Respondent had actual knowledge of 3M’s trademarks at the time the domain name was registered. First, 3M’s trademark rights in the LITTMANN Marks date back to at least as early as 1942. 3M’s domain name littmann.com was registered on August 5, 1997 and has prominently displayed the LITTMANN mark on that website. Further, Respondent’s domain name incorporates two of 3M’s trademark along with the generic term “stethoscopes” that describes the products associated with 3M’s trademarks. Additionally, the content of Respondent’s website shows that it had actual knowledge of 3M’s ownership of the LITTMANN mark before it registered the LITTMANNCLASSICIISESTETHOSCOPE.COM domain name. There was no basis for Respondent to register the domain name other than to infringe on 3M’s rights and take advantage of 3M’s goodwill. That is bad faith.
2. Respondent Acted in Bad Faith when It Diverted Customers from 3M.
Respondent’s competitive diversion of traffic from 3M’s own website also shows bad faith pursuant to Policy ¶4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business). Bad faith intent to divert traffic has been presumed in cases where a respondent and a complainant were in the same line of business in the same market area. Lubbock Radio Paging v. Venture Tele‑Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000).
Respondent’s use of the disputed domain name is to divert traffic away from 3M’s own website to Respondent’s website and 3M’s competitors. Respondent placed 3M’s promotional video on its website and then provides Amazon.com and Google links to products that divert traffic again to third parties. Respondent benefits from that diversion by obtaining click-through revenue related to the advertisements on its website. Such use of the domain names is bad faith. See 3M v. Bui Chee Leong, FA1425613 (Nat. Arb. Forum, Mar. 1, 2012) (finding bad faith under Policy ¶4(b)(iii) under nearly identical fact pattern where respondent used 3M’s promotional video (same as in this case) and links to Amazon.com (same as here)). Additionally, Respondent benefits from the use of 3M’s marks because its site associated with the domain name increases in search engine popularity, increasing the value of the site.
3. Respondent Acted in Bad Faith by Intentionally Attempting to Attract Internet Users to Its Website for Commercial Gain by Creating a Likelihood of Confusion with 3M’s Mark.
Bad faith intent pursuant to Policy ¶4(b)(iv) can be inferred from Respondent’s choosing to use a designation that it knows to be similar to another’s trademark in order to attract consumers to its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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).
Bad faith is shown because Respondent registered the domain name in order to trade on 3M’s goodwill associated with its LITTMANN mark by creating a likelihood of confusion as to the source of the website. Le Dauphin Pirate Sarl v. Reto Stossel, FA0609000788274 (Nat. Arb. Forum, Oct. 18, 2006) (holding that the registration of a domain name and placement of duplicate content on that site is bad faith).
Here, Respondent registered a domain name that has the commercial impression of 3M’s LITTMANN Marks and placed advertising and links to third parties via Amazon.com’s Associate program and Google’s AdWords program. Respondent uses the domain name and the confusingly similar content to attract consumers to its website. Respondent then profits from that content by generating traffic who click on the links and are forwarded to third party products. Respondent is not licensed to use the LITTMANN mark. Respondent has acted and continues to act in bad faith.
B. Respondent
Respondent failed to submit a response.
(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.
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 cancelling or transferring a domain name:
(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 is the owner of the LITTMANN mark which is used with a variety of products in the medical industry. Complainant registered the LITTMANN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 751,809 registered June 25, 1963). Previous panels have found that evidence of a registration with the USPTO is sufficient to establish rights in a given mark and this Panel concurs. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). It does not matter whether a complainant has registered its trademark in the country in which a respondent resides; only that it can establish rights in some jurisdiction. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Based on this evidence, the Panel finds Complainant has rights in the LITTMANN mark pursuant to Policy ¶4(a)(i).
Complainant does not need to provide evidence of a government registration for the CLASSIC II S.E. mark in order to have common law rights in it. Previous panels have found a trademark does not need to be registered by a governmental authority for rights to exist. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant claims common law rights for the CLASSIC II S.E. mark. Complainant submits a history of 3M Littmann Stethoscopes stating the CLASSIC II S.E. stethoscope was introduced in May of 1996 and used in commerce ever since. While Complainant does not provide any advertising or similar evidence regarding the use of this mark, the Panel finds this sufficient proof Complainant has common law rights in the CLASSIC II S.E. mark.
Complainant argues the <littmannclassiciisestethoscope.com> domain name is confusingly similar to Complainant’s LITTMANN mark pursuant to Policy ¶4(a)(i). Complainant claims the <littmannclassiciisestethoscope.com> domain name combines Complainant’s LITTMAN mark with Complainant’s CLASSIC II S.E. mark and adds the descriptive term “stethoscope.” The addition of the gTLD “.com” and removal of the spaces in the CLASSIC II S.E. mark is immaterial because of the required domain character set. These variations are insufficient in distinguishing a disputed domain name from a registered mark. See 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); 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); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). Based on Complainant’s allegations and previous panel decisions, this Panel finds Respondent’s <littmannclassiciisestethoscope.com> domain name is confusingly similar to Complainant’s LITTMANN and CLASSIC II S.E. marks.
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). 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 contends Respondent has no rights or legitimate interests in the <littmannclassiciisestethoscope.com> domain name and is not commonly known by the LITTMANN or CLASSIC II S.E. mark. Complainant apparently has not licensed Respondent to use any of its marks. Complainant provides the WHOIS information which shows the owner of the <littmannclassiciisestethoscope.com> domain name is “Dimitri Karneris” and was registered May 24, 2012. Complainant claims the <littmannclassiciisestethoscope.com> domain name does not refer to Respondent in any way. Based upon this evidence, the Panel concurs and finds Respondent is not commonly known by the <littmannclassiciisestethoscope.com> domain name under Policy ¶4(c)(ii). 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).
Complainant claims Respondent is not using the <littmannclassiciisestethoscope.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). Complainant claims Respondent is using the domain name to forward Internet users to a third party product page instead of Complainant’s site. By doing this, Respondent is profiting off the confusion of Internet users searching for Complainant’s products. Complainant further points out Respondent is using the disputed domain name to commercially compete with Complainant. Respondent advertises competing products and diverts consumers away from Complainant’s website. These actions do not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also 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). Based upon this evidence, Respondent has not made a bona fide offering of goods or services or made a legitimate noncommercial fair use of the <littmannclassiciisestethoscope.com> domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent is disrupting Complainant’s business by diverting customers from Complainant’s business and to Respondent’s website and Complainant’s competitors in violation of Policy ¶4(b)(iii). Respondent put one of Complainant’s promotional videos on its website and provides links to <amazon.com> store pages selling competing goods. Diverting Internet users to a competitor of a complainant constitutes bad faith registration and use. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)).
Complainant further argues Respondent is using the <littmannclassiciisestethoscope.com> domain name to attract Internet users to Respondent’s commercial website. Complainant claims Respondent registered the <littmannclassiciisestethoscope.com> domain name to trade on Complainant’s goodwill associated with its registered marks, creating a likelihood of confusion as to the source of the website. Complainant further claims Respondent is attracting consumers to its website to profit from the generated traffic and pay-per-click and affiliate links displayed on Respondent’s page. Previous panels have found that such actions can constitute bad faith pursuant to Policy ¶4(b)(iv) when a respondent uses a confusingly similar domain name to attract Internet users to a commercial website and this Panel concurs. 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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)). The Panel finds Respondent registered and is using the <littmannclassiciisestethoscope.com> domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent must have had constructive knowledge of Complainant's rights in the LITTMANN mark when Respondent registered the disputed domain name. Complainant further argues the advertisements for stethoscopes, which are the same types of products offered by Complainant, indicate Respondent had actual knowledge of Complainant and its rights. The Panel does not accept Complainant's arguments concerning constructive knowledge because constructive knowledge alone is not sufficient evidence of bad faith. 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."). The Panel concurs with Complainant’s conclusion regarding Respondent's actual knowledge from the evidence presented. This means Respondent registered the <littmannclassiciisestethoscope.com> domain name in bad faith according to Policy ¶4(a)(iii). See 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").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <littmannclassiciisestethoscope.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: November 28, 2012
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