3M Company v. RESARCO c/o RESARCO
Claim Number: FA1302001484648
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is RESARCO c/o RESARCO (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <littmannca.com> and <littmanca.com>, registered with Encirca, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2013; the National Arbitration Forum received payment on February 11, 2013.
On February 12, 2013, Encirca, Inc. confirmed by e-mail to the National Arbitration Forum that the <littmannca.com> and <littmanca.com> domain names are registered with Encirca, Inc. and that Respondent is the current registrant of the names. Encirca, Inc. has verified that Respondent is bound by the Encirca, 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 February 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2013 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@littmannca.com, postmaster@littmanca.com. Also on February 13, 2013, 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 March 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 issues 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i):
Policy ¶ 4(a)(ii):
Policy ¶ 4(a)(iii):
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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 claims that it owns trademark registrations for the LITTMANN mark with the USPTO. See e.g., Reg. No. 751,809 registered on June 25, 1963. The Panel agrees that USPTO registration satisfies Complainant’s showing of rights under Policy ¶ 4(a)(i), even though Respondent dwells in Costa Rica. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant next contends that both of the <littmannca.com> and <littmanca.com> domain names are confusingly similar to the LITTMANN mark. Complainant notes and rejects the significance of the fact that each of the domain names adds the gTLD “.com” to the mark in forming the domain name. Complainant further points out that both of the domain names also add the suffix “ca,” which Complainant finds to be a designation for the country of Canada. Complainant finally notes that the <littmanca.com> domain name also features the misspelling of the LITTMANN mark by the deletion of one of the instances of the letter “n.” Complainant avers that none of these alterations are meaningful in any way that defeats confusing similarity. The Panel agrees that gTLDs are not meaningful distinctions under the Policy. See 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). The Panel further agrees that the addition of the term “ca,” whether referring to a country such as Canada or a state such as California, fails to pierce through the confusing similarity of these domain names. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). The Panel agrees that Respondent’s removal of a single letter “n” in the <littmanca.com> domain name does nothing to distinguish this domain name from the LITTMANN mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Therefore the Panel finds that both of the <littmannca.com> and <littmanca.com> domain names are confusingly similar to the LITTMANN mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends that Respondent is not commonly known by the disputed domain names. Complainant avows that it has not licensed or authorized Respondent’s use of its LITTMANN mark in connection with Respondent’s sale of products. Complainant points out that Respondent has listed “RESARCO” as the registrant of the domain names. The Panel agrees that based upon this record there is nothing to show that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant next argues that Respondent’s <littmannca.com> domain name resolves to a website that prominently features the LITTMANN mark to attract Internet users to the website. Complainant notes that the domain name’s resolving website also features other products designed by Complainant. Complainant Respondent’s attempt to trick Internet users into believing this website is Complainant’s under the assumption the domain name is in fact Complainant’s domain name illustrates neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the domain name. Complainant further adds that Respondent added more content to this disputed domain name’s website following its receipt of Complainant’s cease and desist letter. The Panel notes that the <littmannca.com> domain name resolves to a website featuring Complainant’s products and LITTMANN mark in conjunction with a Spanish language prompt asking the Internet user for their personal information. The Panel further notes that after the issuance of the cease and desist letter the domain name’s website was updated to include three tabs, each descriptive of products sold by Complainant in its business. The Panel agrees that whether the domain name is being used to sell Complainant’s own products without authorization, or to sell counterfeits of Complainant’s own products, neither instance gives rise to a Policy ¶ 4(c)(i) bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
Complainant also argues that Respondent’s decision to make no active use of the <littmanca.com> domain name illustrates that Respondent lacks rights and legitimate interests in the domain name. Complainant claims that the domain name resolves to a website that is “not available.” Complainant avows that there is no other evidence suggesting that Respondent has prepared or is preparing to make a use of this domain name. Complainant finds that such an inactive use illustrates that there is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. The Panel notes that the record supports the assertion that the <littmanca.com> domain name fails to resolve to an active website. The Panel agrees that when Respondent has made no active use of the <littmanca.com> domain name and there is no evidence suggesting that Respondent is planning to make an active use of the domain name in the future, the continuous inactivity of the domain name constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods and services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant has proven this element.
Complainant argues that Respondent seeks to mislead consumers away from Complainant’s legitimate websites to these disputed domain names in an attempt to disrupt Complainant’s business in bad faith. In particular, Complainant argues that each sale that Respondent makes on its <littmannca.com> domain name is one less sale made legitimately through Complainant. Complainant argues that this behavior illustrates that Respondent is directly competing with Complainant in a way that is disrupting Complainant’s business in bad faith. The Panel again notes that the <littmannca.com> domain name has at all times focused on providing information, purportedly concerning Complainant’s products, in the Spanish language. The Panel agrees that as it pertains to the <littmannca.com> domain name, Respondent has registered and used this domain name in bad faith under Policy ¶ 4(b)(iii) by competing with Complainant through the unauthorized sale of Complainant’s own products, or in the alternative, the sale of counterfeit products. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant also argues that Respondent is using the domain name to pass itself off as Complainant in an attempt to confuse Internet users into believing that the <littmannca.com> domain name’s content is endorsed or supported by Complainant. Complainant claims that Respondent is attempting to mimic Complainant’s websites in order to bolster the credibility behind an Internet user’s faulty assumption that it will be doing business with Complainant. The Panel notes that the <littmannca.com> domain name resolves to a website featuring images of Complainant’s products on a website bearing the LITTMANN mark. The Panel agrees that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith use and registration of this domain name because the resolving website makes use of Complainant’s marks and products in a way that greatly enhances the likelihood that Internet users will confuse Complainant as the source of the information, and mistakenly provide Respondent with an unintended commercial gain. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent’s failure to make an active use of the <littmanca.com> domain name can in itself be evidence of bad faith registration and use. Complainant notes that Respondent has now left this domain name devoid of content for over two months. The Panel agrees that Respondent’s Policy ¶ 4(a)(iii) bad faith in the use and registration of the <littmanca.com> domain name arises from this period of non-use of the domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant also argues that Respondent is also using the <littmannca.com> domain name to request and obtain the personal information of Internet users in bad faith. Previous panels have found that bad faith use and registration can arise when a respondent intends to “phish” the personal information of Internet users in providing the users some good or services, or by merely purporting to offer some good or service. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates). The Panel agrees and concludes that Respondent is using the <littmannca.com> domain name in a Policy ¶ 4(a)(iii) act of bad faith use and registration through the phishing of personal information.
Complainant finally argues that Respondent had knowledge of Complainant’s rights in the LITTMANN mark at the time of registration of the domain names. Complainant notes that Respondent not only registered confusingly similar domain names, Respondent explicitly included images and text referencing LITTMANN-branded products on the domain name’s resolving website. The Panel agrees with Complainant regarding Respondent's actual knowledge and conclude that Respondent registered the domain names in bad faith according to Policy ¶ 4(a)(iii). See 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).").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <littmannca.com> and <littmanca.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 22, 2013
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