3M Company v. Frand Longo
Claim Number: FA1308001514259
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Frand Longo (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmanninfosite.com>, registered with 1 & 1 Internet AG.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2013; the National Arbitration Forum received payment on August 12, 2013.
On August 14, 2013, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <littmanninfosite.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 August 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@littmanninfosite.com. Also on August 20, 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 September 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s < littmanninfosite.com> domain name, the domain name at issue, is confusingly similar to Complainant’s LITTMANN mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the LITTMANN mark in connection with a variety of products and services in the medical industry. Complainant has registered the LITTMANN mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 751,809 registered on June 25, 1963).
Respondent has registered the <littmanninfosite.com> domain name, which adds the generic phrase “info site” to the LITTMANN mark and is confusingly similar.
Respondent is not known by this domain name. Complainant has not authorized, permitted, licensed, or otherwise approved of Respondent’s use of the LITTMANN mark. Respondent has failed to make any use of the domain name for well over a year. Respondent seeks to attract consumers to this inactive website by creating the likelihood of confusion between the domain name and the LITTMANN mark. Respondent’s failure to make an active use of this domain name shows bad faith. Non-use of the <littmanninfosite.com> domain name for over a year illustrates this bad faith. Respondent registered the domain name with knowledge of Complainant’s registration and use of the LITTMANN mark in commerce. The LITTMANN portion of the domain name is the dominant portion, yet the LITTMANN mark has no meaning outside its use in identifying the source of Complainant’s goods. Furthermore, Complainant’s trademark rights through USPTO registration put Respondent on constructive notice of Complainant’s rights.
Respondent registered the <littmanninfosite.com> domain name on May 10, 2012.
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 uses the LITTMANN mark in connection with a variety of products and services in the medical industry and has registered the LITTMANN mark with the USPTO (e.g., Reg. No. 751,809 registered on June 25, 1963). The USPTO registration sufficiently establishes Complainant’s Policy ¶ 4(a)(i) rights in the mark, especially when Respondent resides in the United States. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Respondent has registered the confusingly similar <littmanninfosite.com> domain name, which adds the generic phrase “info site” to the LITTMANN mark. The addition of the generic top-level domain (“gTLD”) “.com" is irrelevant to the analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The terms “info” and “site” are sufficiently generic so as to not mitigate the confusing similarity of the domain name. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel concludes that the <littmanninfosite.com> domain name is confusingly similar to the LITTMANN mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not known by the <littmanninfosite.com> domain name. Complainant has not authorized, permitted, licensed, or otherwise approved of Respondent’s use of the LITTMANN mark. The WHOIS information for the <littmanninfosite.com> domain name lists “Frand Longo” as the registrant. There is no basis in the record that allows for a finding that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent has failed to make any use of the domain name for well over a year. The only content available through the <littmanninfosite.com> domain name is a message stating “Account Suspended” and another message likewise stating that “This Account Has Been Suspended.” In Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), the panel declined to find that a respondent had made a demonstrable preparation to make a bona fide offering of goods or services when the domain name had sat in relative inactivity for a period of time. Respondent’s inactive use of the <littmanninfosite.com> domain name since August of 2012 suggests that there is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use associated with this domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent seeks to attract consumers to this inactive website by creating a likelihood of confusion between the domain name and the LITTMANN mark. The Panel notes that the domain name is indeed inactive, beyond a message indicating that the owner’s account has been suspended, The Panel believes there was some commercial interest on behalf of Respondent in registering the disputed domain name. See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Respondent’s failure to make an active use of this domain name in itself shows bad faith. The non-use of the <littmanninfosite.com> domain name for over a year illustrates this bad faith. In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel agreed that non-use of a domain name for a period of three months was enough time to warrant a finding of bad faith under Policy ¶ 4(a)(iii). The Panel here finds that Respondent’s failure to put the <littmanninfosite.com> domain name to an active use for over a year is evidence of Policy ¶ 4(a)(iii) bad faith use and registration.
Respondent registered the <littmanninfosite.com> domain name with knowledge of Complainant’s registration and use of the LITTMANN mark in commerce. The LITTMANN portion of the domain name is the dominant portion, however the LITTMANN mark has no meaning outside of its use in identifying the source of Complainant’s goods. Respondent could not unknowingly stumble into the creation of this confusingly similar domain name. Complainant further contends that its trademark registrations through the USPTO put Respondent on constructive notice of Complainant’s rights. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmanninfosite.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 15, 2013
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