3M Company v. NTC
Claim Number: FA1303001489089
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is NTC (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <littmannclassic-store.com>, <littmann-store.com>, <littmann-classic.com>, <littmannclassicshop.com>, and <littmannclassic.com>, registered with Godaddy.Com, LLC.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2013; the National Arbitration Forum received payment on March 8, 2013.
On March 11, 2013, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <littmannclassic-store.com>, <littmann-store.com>, <littmann-classic.com>, <littmannclassicshop.com>, and <littmannclassic.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, LLC 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 March 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@littmannclassic-store.com, postmaster@littmann-store.com, postmaster@littmann-classic.com, postmaster@littmannclassicshop.com, postmaster@littmannclassic.com. Also on March 12, 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.
A timely Response was received and determined to be complete on March 31, 2013.
A timely Additional Submission from Complainant was received and determined to be complete on April 4, 2013.
On April 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
· Complainant, the 3M Company, holds certificates of trademark registration for the LITTMANN mark with the United States Patent & Trademark Office (“USPTO”), which it uses in the sale of stethoscopes. See Reg. No. 751,809 registered on June 25, 1963.
· Complainant has common law rights for the CLASSIC II mark, which is used in connection a particular line of its LITTMANN stethoscopes. Complainant uses this name in commerce.
· Respondent registered all of the domain names on August 10, 2012.
· Respondent’s domain names are all confusingly similar to the LITTMANN mark and CLASSIC II mark. The domain names all add the generic terms “store” or “shop” to the distinct LITTMANN and CLASSIC II marks. The addition of “.com” to a mark is not a distinguishing feature.
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
· Complainant has not licensed, authorized, or permitted Respondent’s use of the LITMANN or CLASSIC II marks in connection with the sale of goods. The WHOIS information shows that Respondent is known as “NTC.”
· The <littmannclassic-store.com>, <littmann-classic.com>, <littmannclassicshop.com>, and <littmannclassic.com> domain names fail to resolve to a website or server. The only content available to Internet users on these domain name’s is a warning: “Server not found.” There is no evidence that Respondent made any demonstrable preparations to use these domain names in connection with a bona fide offering of goods or services, or for some legitimate noncommercial or fair use.
· The <littmann-store.com> domain name resolves to a website that competes with Complainant. Respondent’s use of the domain name to trick consumers into visiting a confusingly similar domain name that has no affiliation with Complainant is not a bona fide offering of goods or services under Policy ¶4(c)(i). Consumers seeing this domain name in search results are prone to believe that the contents of the website are hosted by, or endorsed by, Complainant. The domain name’s resolving makes liberal usage of the LITTMANN mark in its masthead. Internet users are therefore further mislead into believing they will buy products authorized by Complainant. Because the offerings on this domain name’s website are commercial in nature, Policy ¶ 4(c)(iii) is clearly inapplicable.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
· Respondent has engaged in a pattern of bad faith use and registration. Respondent’s bad faith is apparent by the fact that it registered multiple infringing domain names in this proceeding.
· Respondent’s diversion of web traffic from Complainant’s legitimate business to its own unauthorized, and unsanctioned business at the <littmann-store.com> domain name is evidence of bad faith use and registration. Internet users who buy products through the <littmann-store.com> domain name constitute sales taken from Complainant in bad faith.
· Respondent is using Complainant’s marks to confuse Internet users and attract them to its own business at the <littmann-store.com> domain name for a commercial gain. Respondent has made the <littmann-store.com> domain name’s resolving website bear the LITMANN mark, which amplifies the likelihood that Internet users will be confused as to the source of the products offered on the website.
· Respondent’s failure to make an active use of the <littmannclassic-store.com>, <littmann-classic.com>, <littmannclassicshop.com>, and <littmannclassic.com> domain names for over six months is evidence of its bad faith.
· Respondent had actual knowledge of Complainant’s rights in the LITTMANN mark. Respondent’s actual knowledge is evident from the fact that it registered multiple domain names that infringe on the LITTMANN mark. Respondent also offers goods of the same type as those offered by Complainant under the LITTMANN mark.
B. Respondent
Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests
· Respondent is a legitimate reseller of Complainant’s products.
· Respondent seeks to use the domain names in its business, “Casa del Medico.” Respondent has sold LITTMANN products for decades. Respondent buys goods through Complainant’s distributors. Respondent embedded the LITTMANN mark in its domain names to gain an advantage in selling its goods over its competitors. Respondent desires to keep the <littmann-store.com> domain name because it is the preferred domain name to ensure it sells an entire range of all LITTMANN models. Respondent’s resale of goods distributed by Complainant constitutes a bona fide offering of goods and services. Respondent claims that the domain name’s website clarifies the relationship between Respondent and Complainant.
· Respondent is a trade partner of Complainant. Complainant’s products are only sold in Italy through a scheme in which the goods go to a distributor to retailers such as Respondent. All products sold bear the full warranty of Complainant.
Policy ¶ 4(a)(iii): Respondent Lacks Bad Faith
· Respondent had no intent to generate confusion. Respondent explicitly states on its domain name that it is an independent LITTMANN reseller. Respondent admits that he used a font (Sans Serif) that is similar to Complainant’s font (Serif).
C. Additional Submissions
· Respondent has agreed to transfer the <littmannclassic-store.com>, <littmann-classic.com>, <littmannclassicshop.com>, and <littmannclassic.com> domain names, so the Panel should dispense with the traditional UDRP analysis and transfer these domain names to Complainant.
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Respondent is not authorized or licensed to sell Complainant’s LITTMANN brand products. See Complainant’s Additional Submission Ex. 14.
· Respondent’s claim under the Jandy Indus., Inc. decision that it has rights to use the LITTMANN mark are defeated on several grounds. First, Respondent openly promotes competing stethoscopes on the <littmann-store.com> domain name’s website. Second, Respondent does not fully and honestly disclose that it has no relationship with Complainant, and instead includes such statements vaguely and in areas where an Internet user is unlikely to see them. Third, Respondent plainly states its purpose for registering these domain names was its hope to gain an advantage in selling LITTMANN goods and attracting Internet users by making use of the LITTMANN mark explicitly in its unauthorized resale of Complainant’s goods.
Policy ¶4(a)(iii): Respondent’s Bad Faith Is Clear
· Respondent makes it clear that he knew of the LITTMANN brand when he registered the domain name, as evidenced by Respondent’s own claim that “the exclusive intent… [was] to gain traffic from customers looking for Littmann products.” Respondent admits to his plan to trick Internet users into buying unauthorized goods from his business when these users are hoping to buy authorized, legitimate, LITTMANN goods.
· Respondent’s contention that it placed some disclaimer on the website does not mitigate a finding of bad faith.
Complainant registered its LITTMANN mark with the U.S. Patent and Trademark Office in 1963. Complainant has used the mark in marketing its brand of popular stethoscopes bearing the LITTMANN name. Through use of its Classic II mark over the years in marketing stethoscopes, Complainant acquired common law rights in that mark. Respondent NTC is administered by an individual who is associated with his family’s retail medical equipment supply business located in Pisa, Italy. NTC registered the disputed domain names in connection with establishing a website for marketing the sale of LITTMANN stethoscopes online by the individual’s family business.
Even though Respondent listed different geographic regions in its registrations, all list “NTC” as the registrant and “Niccolo Tucceri Cimini” as the administrative contact. In its response, Respondent makes it clear that the disputed domain names are controlled by the family business, which is a single entity. The business acquires LITTMANN stethoscopes through purchase from Complainant’s distributors.
]Respondent acknowledges Complainant’s rights in its marks and has expressed willingness to have the domain names <littmannclassicshop.com>, <littmannclassic-store.com>, <littmann-classic.com>, and <littmannclassic.com> transferred to Complainant because it has determined it does not intend to use them. Respondent defends its registration of the <littmann-store.com> domain name by arguing that the website is used for the retail sale of LITTMANN stethoscopes lawfully acquired by purchase from Complainant’s distributors. Respondent, however, is not an authorized reseller of LITTMANN stethoscopes and lacks authority to use Complainant’s marks in marketing them. Respondent identifies on its website the availability of stethoscopes of Complainant’s competitors and does not clearly disclose on the website that it is not an authorized 3M reseller. Respondent registered the disputed names to trade on the value of Complainant’s mark and logo to give an air of legitimacy to its online marketing of Complainant’s products.
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."
Two preliminary issues need to be addressed.
One is whether the record sufficiently shows the disputed domain names are controlled by the same entity, which is operating under aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy permits a complaint to address more than one disputed domain name, provided that they are registered by the same domain name holder. Here, the domain names all list “NTC” as the registrant and Niccolo Tucceri Cimini as the administrative contact. The requirement of paragraph 3(c) of the rules is plainly satisfied here.
The second preliminary issue relates to Respondent’s consent to transfer the <littmannclassic-store.com>, <littmannclassic.com>, <littmannclassicshop.com> and <littmann-classic.com> domain names to Complainant. Because Respondent agrees to transfer those domain names to Complainant, the Panel concludes that no necessity exists to address the elements of UDRP Policy regarding those domain names, and those domain names will be ordered transferred to Complainant without analysis under the Policy. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the <littmann-store.com> 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.
Complainant’s USPTO registration of its LITTMANN mark demonstrates its rights in the mark even though Respondent’s business is in Italy. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010). Moreover, the disputed domain name <littmann-store.com> merely adds the hyphen, the gTLD “.com,” and the word “store” to the LITTMANN mark. These features do not sufficiently distinguish the domain name from Complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005). The domain name thus is confusingly similar to the LITTMANN mark within the meaning of Policy ¶4(a)(i).
Neither Respondent nor its family business, which operates under the commercial name “Casa del Medico” is commonly known by the disputed domain name. The burden is on Respondent to establish that it has rights and legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The <littmann-store.com> domain name resolves to a website that offers stethoscopes for sale, including but not limited to those of Complainant. Moreover, the website purports to give an air of legitimacy to Respondent’s use of the LITTMANN mark and logo, whereas Respondent lacks authorization for such use. Respondent’s use of the domain name to market Complainant’s products and its competitor’s products for personal gain, without authorization, is not a bona fide offering of goods or services. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002). Moreover, Respondent’s website does not clearly disclose that it has no relationship with Complainant and is not an authorized reseller of its products. These circumstances show that Respondent lacks rights or legitimate interests in the LITTMANN mark within the meaning of Policy ¶4(a)(ii). See Vapor Blast Mfg. Co. v. R & S Techs., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001).
Respondent’s use of the LITTMANN mark and logo on his website constitutes an effort to create an impression that Respondent is either an affiliate of Complainant or an authorized reseller of Complainant’s products. Internet users searching for Complainant’s products are misled by Respondent’s use of Complainant’s mark and logo. Respondent created a likelihood of confusion with Complainant by using Complainant’s mark to sell Complainant’s products for personal gain. Respondent’s conduct establishes its bad faith registration and use of the <littmann-store.com> domain name within the meaning of Policy ¶4(a)(iii). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000)
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmannclassic-store.com>, <littmann-store.com>, <littmann-classic.com>, <littmannclassicshop.com>, and <littmannclassic.com> domain names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: April 24, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page