3M Company v. Website c/o paul sanfira
Claim Number: FA1210001469429
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Website c/o paul sanfira (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannstethoscopesz.com>, registered with Launchpad, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2012; the National Arbitration Forum received payment on October 29, 2012.
On October 30, 2012, Launchpad, Inc. confirmed by e-mail to the National Arbitration Forum that the <littmannstethoscopesz.com> domain name is registered with Launchpad, Inc. and that Respondent is the current registrant of the name. Launchpad, Inc. has verified that Respondent is bound by the Launchpad, 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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@littmannstethoscopesz.com. Also on October 30, 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 December 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a. Complainant contends that it has rights in the LITTMANN mark, which it uses in connection with stethoscopes. The <littmannstethoscopesz.com> domain name is confusingly similar to Complainant’s LITTMANN mark.
b. Respondent is not commonly known by the disputed domain name. Respondent has no statutory or common law trademark rights in the LITTMANN mark or in the <littmannstethoscopesz.com> domain name. Complainant has not authorized or licensed Respondent to use Complainant’s LITTMANN mark or any derivative mark for any purpose.
c. The disputed domain name resolves to a website where Respondent uses the LITTMANN mark in connection with the display of links to third-party websites.
d. The <littmannstethoscopesz.com> domain name is disruptive to Complainant’s business. The <littmannstethoscopesz.com> domain name is aimed at taking customers away from Complainant. Respondent created a press release to divert consumers from Complainant’s website to the disputed domain name.
e. Respondent registered the <littmannstethoscopesz.com> domain name with knowledge of Complainant’s rights in the LITTMANN mark. Respondent had actual knowledge of Complainant’s rights as evidence by Respondent’s use of the descriptive term “stethoscopes” in the disputed domain name and Respondent’s use of headers on the <littmannstethoscopesz.com> domain name’s resolving website prominently displaying the LITTMANN mark. Complainant’s long-standing trademark registrations for the LITTMANN mark gave Respondent constructive knowledge of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LITTMANN mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <littmannstethoscopesz.com> domain name, and that Respondent registered and uses 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 has rights in the LITTMANN mark. Complainant asserts that the mark is used in connection with stethoscopes. Complainant provides the Panel with evidence of Complainant’s USPTO registrations for the LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963). Regardless of the location of the parties to a dispute, panels have held that registration of a mark with a federal trademark office is evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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 LITTMANN mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <littmannstethoscopesz.com> domain name is confusingly similar to Complainant’s LITTMANN mark. Complainant contends that Respondent merely added the descriptive term “stethoscopes,” the letter “z,” and the gTLD “.com” to the LITTMANN mark. Additions to marks of descriptive terms and a letter do not distinguish the domain name from the mark within it. See 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 Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Additionally, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the addition of a gTLD is irrelevant to a determination of confusing similarity. Therefore, the Panel finds that Respondent’s <littmannstethoscopesz.com> domain name is confusingly similar to Complainant’s LITTMANN mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent lacks rights and legitimate interests in the <littmannstethoscopesz.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. According to Complainant, Respondent has no statutory or common law trademark rights in the LITTMANN mark or in the <littmannstethoscopesz.com> domain name, and Complainant has not authorized or licensed Respondent to use Complainant’s LITTMANN mark or any derivative mark for any purpose. The Panel notes that the WHOIS record for the <littmannstethoscopesz.com> domain name lists “Website c/o paul sanfira” as the domain name registrant. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant alleges that Respondent has neither rights nor legitimate interests in the <littmannstethoscopesz.com> domain name and that this is clear from Respondent’s use of the disputed domain name. Complainant notes that the disputed domain name resolves to a website where Respondent uses the LITTMANN mark in connection with the display of links to third-party websites. The use of a disputed domain name to display links to various third-party websites is not a use protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). 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)). Therefore, the Panel finds that Respondent’s use of the <littmannstethoscopesz.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <littmannstethoscopesz.com> domain name in bad faith. Complainant asserts that the <littmannstethoscopesz.com> domain name is disruptive to Complainant’s business. According to Complainant, Respondent created a press release to divert consumers from Complainant’s website to the disputed domain name, and the <littmannstethoscopesz.com> domain name is aimed at taking customers away from Complainant. A disputed domain name displaying third-party competing links is disruptive to a Complainant’s business. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and is using the <littmannstethoscopesz.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s bad faith is also evident as the disputed domain name was registered and is used to trade upon the goodwill associated with Complainant’s LITTMANN mark. Complainant notes that Respondent’s use of the <littmannstethoscopesz.com> domain name to display and promote third-party websites through links misappropriates Complainant’s goodwill and misleads consumers into clicking on Respondent’s website when they think they will see information regarding Complainant and its branded products and services. The Panel infers that Respondent presumably benefits from the displayed third-party links in the form of pay-per-click fees or some other manner. Therefore, the Panel finds that Respondent registered and is using the <littmannstethoscopesz.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) in order to attract consumers and create confusion for Respondent’s own commercial gain. 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).
Finally, Complainant contends that Respondent registered the <littmannstethoscopesz.com> domain name with knowledge of Complainant’s rights in the LITTMANN mark. Complainant states that Respondent had actual knowledge of Complainant’s rights as evidenced by Respondent’s use of the descriptive term “stethoscopes” in the disputed domain name and Respondent’s use of headers on the <littmannstethoscopesz.com> domain name’s resolving website prominently displaying the LITTMANN mark. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name 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 Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied 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 <littmannstethoscopesz.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: December 10, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page