3M Company v Wildlife At Risk
Claim Number: FA1406001565794
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota. Respondent is Wildlife At Risk (“Respondent”), <<PARTYLOCATION>>.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <decal3m.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2014; the National Arbitration Forum received payment on June 20, 2014.
On June 20, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <decal3m.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2014 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@decal3m.com. Also on June 23, 2014, 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 July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant is a diversified technology company serving customers and communities worldwide with thousands of innovative products and services.
2. Complainant promotes its products and services, including its decals and stickers under the 3M mark. Complainant is the registered proprietor of numerous trademark registrations for the 3M marks (e.g. trademark registered number 1725649 for 3M registered with the United States Patent and Trademark Office (“USPTO”) on October 20, 1992.
3. Prior to the registration of the disputed domain name, Complainant, through its subsidiary 3M Vietnam Limited entered into a distribution agreement with Seven November Co., Ltd. The distribution agreement did not authorize Seven November Co., Ltd or Respondent to register or maintain the disputed domain name.
4. The disputed domain name was registered in the name of Respondent on December 10, 2011.
5. On or about July 3, 2013, Thoai Hoang of Seven November Co., Ltd offered to sell the domain name to Complainant for $500,000.
6. Complainant terminated the distribution agreement on December 31, 2013.
7. The disputed domain name is confusingly similar to the 3M marks as it uses the 3M mark combined with the generic word “decal” which describes one of the products of Complainant.
8. Respondent has no rights or legitimate interests in the domain name because:
(a) it had no permission to use the 3M mark in a domain name or to cause the domain name to be registered;
(b) is not commonly known by the domain name;
(c) It has offered to sell the domain name; and
(d) It has not used the domain name for a bona fide offering of goods or services as it has used the domain name to divert customers to a website offering competing goods and services and nor has it used the domain name for a legitimate noncommercial or fair use.
9. The disputed domain name has been registered and used in bad faith because it has been offered for sale, the Respondent knew of Complainant’s 3M Marks at the time of registration of the domain name, Respondent has diverted internet traffic from Complainant’s website and Respondent has caused confusion with the 3M mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a famous United States company that is engaged in diversified technology activities serving customers and communities worldwide with thousands of innovative products and services.
2. Complainant promotes its products and services, including its decals and stickers under the 3M mark. Complainant is the registered proprietor of numerous trademark registrations for the 3M mark (e.g. trademark registered number 1725649 for 3M registered with the United States Patent and Trademark Office (“USPTO”) on October 20, 1992 (collectively referred to as “the 3M mark”).
3. Respondent registered the disputed domain name on December 10, 2011.
4. The domain name resolves to a website that prominently uses the 3M mark to attract customers and to promote competing 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."
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it is the owner of many trademark registrations for the 3M mark and the Panel accepts the evidence adduced by Complainant to that effect. See Complainant’s Exhibits 1A-C. One of those trademarks is No. 1725649, registered with the USPTO for 3M, registered on October 20, 1992 .The Panel finds that Complainant’s USPTO registrations of the 3M mark ( collectively “the 3M mark”) sufficiently show that it has rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second issue that arises is whether the disputed <decal3m.com> domain name is identical or confusingly similar to Complainant’s 3M mark. Complainant submits that the domain name is confusingly similar to Complainant’s registered 3M trademark as it incorporates the 3M mark in its entirety and includes the generic expression “decal” which is a well known range of products of Complainant and integrally associated with the trademark and Complainant’s business and therefore conveys to the internet user the notion that the domain name relates to the decal products of Complainant. The Panel agrees with that submission. The Panel holds that the addition of a generic expression such as “decal” does not detract from confusing similarity that is otherwise present, as it is in the present case. See AOL Inc. v. Tech Helpdesk 247, FA1311001532064 (Nat. Arb. Forum Dec.31, 2013) where the trademark was AOL and the registrant of the domain name had added “tech support” to the trademark, making the domain name <aol-tech-support.com>. The panel found in that case that there was confusing similarity between the domain name and the trademark and observed, in remarks equally applicable to the present case:
” The Panel determines that Respondent’s addition of a generic phrase to Complainant’s mark does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA <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 also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the mark in the disputed domain name. The Panel finds that Respondent’s addition of the gTLD to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys. FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
For these reasons, the Panel finds that the <decal3m.com> domain name is confusingly similar to Complainant’s 3M mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s 3M mark and to use it in its domain name and has added the generic word “decal” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the decal products of Complainant;
(b) Respondent registered the disputed domain name on December 10, 2011;
(c) The domain name resolves to a website that prominently uses the 3M mark to attract customers;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts. The Panel therefore finds that Respondent registered and is responsible for the use that has been made of the domain name and that this occurred without the permission or authority of Complainant;
(e) Complainant also argues that Respondent is not commonly known by the domain name. The Panel notes that the registrant of the disputed domain name is listed as “Wildlife At Risk” in the WHOIS record for the domain name. The Panel also notes that Respondent has not provided any evidence showing that it is known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <decal3m.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names).
(f) Complainant also submits that Respondent via Seven November Co., Ltd offered to sell the Domain Name for nearly $500,000 more than it cost to register and the Panel accepts the evidence adduced to that effect. That evidence and Complainant’s submission show Respondent is seeking to profit from the sale of the domain name which is not a legitimate use. As Complainant submits, a respondent’s offering to sell the domain name shows its lack of rights or legitimate interests in the domain name. See the cases cited by Complainant, Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests in a disputed domain name where a respondent registered the domain name with the intention of selling it) and Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s conduct purporting to sell a contested domain name suggested it had no legitimate use for the domain); and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii));
(g) Complainant submits that the evidence is such that it must be assumed that Respondent has used the domain name to trick internet users to visit its website instead of Complainant’s site and that this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See the cases cited by Complainant, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i)”) and Toyota Jidosha Kabushiki Kaisha v. Double Time Jazz, FA 113316 (Nat. Arb. Forum July 10, 2002) (“Respondent cannot use Complainant’s trademark in a domain name when the Respondent, even though selling Complainant’s goods, has no permission to use the trademark as the domain name”);
(h) Complainant also submits that the use of a domain name to direct consumers to a commercial website that displays the goods and services of competitors as well as those of a complainant is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel accepts the submission of Complainant that the evidence adduced supports that conclusion on the facts of the present case and so finds. 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).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s offer to sell the <decal3m.com> Domain Name at a very high price constitutes bad faith. The Panel finds that there is evidence to support that submission and that Respondent therefore acted in bad faith pursuant to Policy ¶ 4(b)(i). That conclusion is supported by numerous prior decisions including those cited by Complainant, namely Nintendo of Am., Inc. v. Lizmi, FA394329 (Nat. Arb. Forum Apr. 24, 2000) (inferring bad faith from Respondent’s attempt to sell domain name); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the Disputed Domain Name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); and Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Secondly, the Panel finds that Respondent registered and is using the disputed domain name with actual knowledge of Complainant’s rights in the long-standing, well-known 3M mark. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008). Respondent’s website makes it plain that Respondent had actual knowledge of Complainant’s 3M mark and the products associated with it. Such knowledge is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website).
Thirdly, Complainant argues that Respondent’s <decal3m.com> domain name resolves to a website offering competing goods and services to those offered by Complainant. The Panel accepts the evidence and submissions of Complainant to that effect and agrees with Complainant that its submission is supported by several prior UDRP decisions. Those decisions have determined that a respondent’s use of a domain name to provide links to competing products and services disrupts complainant’s business and shows bad faith under Policy ¶ 4(b)(iii). As the Panel finds that Respondent has used the domain name in the manner alleged, this constitutes bad faith 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).”). It is also bad faith under Policy ¶ 4(b)(iii) to divert internet traffic from Complainant’s own website through the confusing similarity between the domain name and the 3M marks.
Fourthly, the Panel finds that the facts of the case bring it squarely within the provisions of Policy ¶4 (b) (iv). Respondent used a domain name that it must have known was confusingly similar to the famous 3M mark, had it resolve to a commercial website that internet users would confuse with Complainant and its products, especially because Respondent used Complainant’s trademark and logos on its website and in effect passed itself off as Complainant. All of the elements of Policy ¶4 (b) (iv) are present.
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed<decal3m.com> domain name using the 3M mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <decal3m.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 5, 2014
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