3M Company v. aalisoy / aalisoy poaalisoy
Claim Number: FA1211001470879
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is aalisoy / aalisoy poaalisoy (“Respondent”), Tanzania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannstethoscoperepair.com>, registered with Register.com.
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 November 12, 2012; the National Arbitration Forum received payment on November 12, 2012.
On November 13, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <littmannstethoscoperepair.com> domain name is registered with Register.com and that Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com 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 November 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@littmannstethoscoperepair.com. Also on November 13, 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 14, 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.
i. Respondent is not commonly known by the disputed domain name and has not received permission to use the mark. The WHOIS information identifies “Aalisoy Poaalisoy” as the domain name registrant.
ii. Respondent is using the disputed domain name to forward Internet users to a website which prominently displays the LITTMANN mark while also linking with <amazon.com>’s associate program. See Complainant’s Exhibit 7. Such links go to individuals and companies selling stethoscopes, including Complainant. Such direction to competing companies and products is evidence that Respondent is not using the disputed domain name for 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).
i. Respondent’s registration and use of the disputed domain name shows that Respondent had knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
ii. Respondent has engaged in a pattern of registering third-party mars as domain names, giving the false impression that the domain names are associated with the brand holders.
iii. Respondent’s use of the disputed domain name to divert Internet users to <amazon.com> affiliate sites selling competing goods.
iv. Respondent has registered the disputed domain name in order to attract consumers to its website by creating a likelihood of confusion with Complainant’s marks while profiting from its diversionary scheme in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its LITTMANN mark.
2. Respondent’s <littmannstethoscoperepair.com> 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 asserts that it owns the LITTMANN family of trademarks that it uses to market and sell a variety of products and services in the medical industry, including for stethoscopes. Complainant contends that it owns several trademark registrations with the USPTO for the LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963). See Complainant’s Exhibit 1A. Despite Respondent’s location in Australia, the Panel finds that Complainant’s trademark registrations with the USPTO for the LITTMANN mark are sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Further, Complainant argues that Respondent’s <littmannstethoscoperepair.com> domain name is confusingly similar to Complainant’s LITTMANN mark, as the domain name combines that LITTMANN mark with the descriptive term “stethoscope” and the generic term “repair” fail to adequately distinguish the disputed domain name from the mark. Further, the addition of the “.com” to a mark is not a distinguishing feature. The Panel agrees and finds that the <littmannstethoscoperepair.com> domain name is confusingly similar to Complainant’s LITTMANN mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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 is not commonly known by the disputed domain name and has not received permission to use the mark. Complainant notes that the WHOIS information identifies “Aalisoy Poaalisoy” as the domain name registrant. The Panel accepts this information and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Further, Complainant argues that Respondent is using the disputed domain name to forward Internet users to a website which prominently displays the LITTMANN mark while also linking with <amazon.com>’s associate program. See Complainant’s Exhibit 7. Complainant argues that the links and advertisements go to individuals and companies selling stethoscopes, including Complainant. Complainant argues that such re-direction to competing companies and products is evidence that Respondent is not using the disputed domain name for 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), and the Panel agrees. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant asserts that Respondent has engaged in a pattern of registering third-party mars as domain names, giving the false impression that the domain names are associated with the brand holders. The Panel notes that Complainant’s only evidence on this issue involves one domain name registration that is purportedly registered by Respondent, but Complainant only provides hyperlinks to a WHOIS page in its page nine footnote. Therefore, the Panel declines to make a bad faith finding under Policy ¶ 4(b)(ii).
Complainant also asserts that Respondent’s use of the disputed domain name to divert Internet users to <amazon.com> affiliate sites selling competing stethoscope products disrupts its business in bad faith. The Panel agrees and finds as such under Policy 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant asserts that Respondent has registered the disputed domain name in order to attract consumers to its website by creating a likelihood of confusion with Complainant’s marks while profiting from its diversionary scheme in bad faith. As noted above, Respondent’s disputed domain name contains links and advertisements to <amazon.com> affiliate websites selling stethoscope goods in competition with Complainant. The Panel finds that Respondent has indeed violated Policy ¶ 4(b)(iv), by creating a likelihood of confusion with Complainant’s LITTMANN mark for commercial gain through its registration and use of the <littmannstethoscoperepair.com> domain name. 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).
Lastly, Complainant argues that Respondent’s registration and use of the disputed domain name shows that Respondent had knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. Complainant points specifically to the content of the <amazon.com> sites and links in estimating that Respondent had actual knowledge of the LITTMANN mark prior to registering the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmannstethoscoperepair.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 27, 2012
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