3M Company v. Shahram Vaziri / Peyke draya co.ltd
Claim Number: FA1506001623411
Complainant is 3M Company (“Complainant”), represented by Andrea Shannon of Fulbright & Jaworski LLP, Texas, USA. Respondent is Shahram Vaziri / Peyke draya co.ltd (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3m-iran.com>, registered with Realtime Register B.V..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2015; the Forum received payment on June 8, 2015.
On June 10, 2015, Realtime Register B.V. confirmed by e-mail to the Forum that the <3m-iran.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2015 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@3m-iran.com. Also on June 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant has rights in the 3M mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,315,763, registered on January 22, 1985).
2. Respondent’s <3m-iran.com> domain name is confusingly similar to Complainant’s 3M mark because it is differentiated by only the additions of a hyphen, the word “iran,” and the generic top-level domain (“gTLD”) “.com.”
3. The <3m-iran.com> domain name was created on January 13, 2013.
4. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists “Shahram Vaziri” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s 3M mark.
5. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to either sell counterfeit goods or Complainant’s goods without authorization.
6. Additionally, Respondent is attempting to pass itself off as Complainant.
7. Respondent uses the resolving website to capitalize on the confusion of Internet users in order to profit commercially by selling either counterfeit goods or Complainant’s goods without authorization.
8. Respondent used the disputed domain name in order to pass itself off as Complainant.
9. Respondent registered the <3m-iran.com> domain name with actual knowledge in Complainant’s rights in the 3M mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the 3M mark. Respondent’s domain name is confusingly similar to Complainant’s 3M mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <3m-iran.com> domain name, and that Respondent registered and uses 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 alleges that Respondent’s <3m-iran.com> domain name is confusingly similar to Complainant’s 3M mark because it is differentiated by only the additions of a hyphen, the word “iran,” and the gTLD “.com.” Hphens and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Moreover, neither generic nor geographic modifiers are sufficient to differentiate a domain name and a mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Therefore, the Panel finds that Respondent’s <3m-iran.com> domain name is confusingly similar to Complainant’s 3M mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Shahram Vaziri” as Registrant; Respondent has failed to provide any evidence to indicate being commonly known by the disputed domain name. Moreover, Complainant has shown that Respondent is not authorized to use Complainant’s 3M mark. Such a lack of evidence is sufficient to show that a respondent is not commonly known by a 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, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <3m-iran.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the resolving website to sell goods that are either counterfeit versions of goods sold by Complainant, or else they are genuine goods of Complainant being resold without authorization. These circumstances show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
Complainant also alleges that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent uses the resolving website to pass itself off as Complainant. The use of a disputed domain to pass itself off as a complainant shows a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Because Complainant’s evidence is sufficient to show that Respondent is attempting to pass itself off as Complainant, the Panel finds Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <3m-iran.com> domain name to sell products that are either counterfeit versions of those sold by Complainant, or else they are genuine products of Complainant’s, but being resold without authorization from Complainant. This amounts to bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Complainant alleges that Respondent uses the resolving website to pass itself off as Complainant. Complainant argues that Respondent uses the disputed domain name in a way intended to mislead Internet users into believing that the <3m-iran.com> domain name is either operated by, or authorized by Complainant. Complainant argues that the resolving website is designed to look almost identical to websites that Complainant does operate. This constitutes bad faith under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the 3M mark. Complainant argues that because of the alleged counterfeit, or unauthorized sale, and attempted passing off described above, Respondent must have been aware of Complainant’s rights in the 3M mark. When a respondent has actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3m-iran.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 20, 2015
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