3M Company v. George Washere
Claim Number: FA1304001496489
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is George Washere (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmann-stethoscopes-online.com>, registered with ENOM, INC.
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 April 25, 2013; the National Arbitration Forum received payment on April 25, 2013.
On April 25, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <littmann-stethoscopes-online.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 May 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@littmann-stethoscopes-online.com. Also on May 2, 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 May 31, 2013, 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 mark and has not received Complainant’s permission to use the mark.
ii. 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.
i. Respondent’s offer to sell the domain name constitutes bad faith.
ii. Respondent acted in bad faith when it diverted customers from Complainant.
iii. 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 Complainant’s mark.
iv. Respondent registered the domain name in bad faith knowing of Complainant’s trademark rights in the LITTMANN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its LITTMANN mark.
2. Respondent’s <littmann-stethoscopes-online.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, 3M Company, asserts that it first began marking stethoscopes under the LITTMANN brand in 1967 when it acquired Cardiosonics Inc., a company founded by David Littmann, M.D. Complainant contends that it is the owner of trademark registrations with the USPTO for the LITTMANN mark (e.g., Reg. No. 751,809, registered June 25, 1963). See Exhibit 1A-1D. The Panel notes that although Respondent appears to operate in Panama, the Panel finds that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent operates and all that matters is that Complainant register its mark 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). Accordingly, the Panel determines that Complainant’s registration of the LITTMANN mark with the USPTO sufficiently evidences its rights in the mark pursuant to Policy ¶ 4(a)(i). 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)).
Complainant alleges that Respondent’s <littmann-stethoscopes-online.com> is confusingly similar to Complainant’s LITTMANN mark as the domain name merely consists of Complainant’s LITTMANN mark combined with the generic terms “stethoscopes” and “online.” The Panel determines that Respondent’s addition of generic or descriptive terms to a domain name does not differentiate the domain name from Complainant’s 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)). The Panel notes that Respondent adds two hyphens and a generic top-level domain (“gTLD”) to the domain name. The Panel finds that the addition of punctuation such as hyphens and a gTLD does not negate confusing similarity under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s <littmann-stethoscopes-online.com> is confusingly similar to Complainant’s LITTMANN mark pursuant to Policy ¶ 4(a)(i).
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 alleges that Respondent is not commonly known by the mark and has not received Complainant’s permission to use the mark. Complainant argues that a domain name registrant is presumed not to have a legitimate interest in a domain name where Respondent is not a licensee of Complainant, Complainant’s prior rights in the domain name precede Respondent’s registration, and Respondent is not commonly known by the domain name. The Panel notess that the WHOIS record identifies “George Washere” as the registrant of the domain name. In addition, Complainant asserts that there is no evidence Respondent is known by the name LITTMANN. Thus, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to 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 claims that 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. Complainant argues that Respondent’s intent in registering the domain name was to divert traffic away from Complainant and to commercially benefit from the confusion by having consumers click on third-party advertising. Complainant alleges that Respondent profits off the confusion by serving third-party links that are connected with advertising. The Panel notes that Respondent’s domain name resolves to a hyperlink directory with links titled “LITTMAN STETHOSCOPES,” “3M LITTMAN STETHOSCOPES,” “Cheapest Stethoscopes,” and others. See Exhibit 6. Complainant argues that unsuspecting consumers attempting to visit Complainant’s website are likely to visit Respondent’s website because of the confusing name and when they arrive at Respondent’s website, they are confronted with a website prominently using the LITTMAN marks. The Panel holds that Respondent’s use of the domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant contends that Respondent’s offer to sell the domain name constitutes bad faith. Complainant alleges that Respondent has listed the domain name for sale on Buydomains.com for $799, an amount exceeding any expenses related to the domain name purchase. See Exhibits 4 and 7. The Panel finds that Respondent’s offer to sell the domain name constitutes bad faith use and registration under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Complainant argues that Respondent acted in bad faith when it diverted customers from Complainant. Complainant claims that both Complainant and Respondent compete for the same consumers who are searching for products / services under the LITTMAN marks. Complainant asserts that Respondent directly competes against Complainant for Internet traffic. Complainant contends that it has harmed through Respondent’s diversion of traffic away from Complainant’s own websites. Thus, the Panel determines that Respondent’s disruption of Complainant’s business demonstrates bad faith use and registration pursuant to 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).”).
Complainant contends that 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 Complainant’s mark. Complainant argues that Respondent registered a domain name that has the commercial impression of Complainant’s LITTMANN marks and placed a heading and links on the site that made the site appear as though it was affiliated with or connected with Complainant and its LITTMANN brand products. Complainant claims that Respondent then profits by generating traffic to the website with the goal of having that traffic click through the commercial ads. Accordingly, the Panel holds that Respondent’s registration and use of the domain name was in bad faith under Policy ¶ 4(b)(iv). 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).
Complainant alleges that Respondent registered the domain name in bad faith knowing of Complainant’s trademark rights in the LITTMANN mark. Complainant contends that the evidence shows Respondent had actual knowledge of Complainant’s trademark rights in its LITTMANN marks. Complainant argues that there would be no reason to register a domain name that combines the trademark LITTMANN with “stethoscopes” other than to trade on Complainant’s trademark rights. Further, Complainant asserts that Respondent had constructive knowledge of Complainant’s rights in its LITTMANN marks prior to the registration of the domain name. Complainant claims that its LITTMANN marks were registered with the USPTO at the time the domain name was registered. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmann-stethoscopes-online.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 14, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page