3M Company v. Mohammed Kapadia
Claim Number: FA1512001652554
Complainant is 3M Company ("Complainant"), represented by Andrea Shannon of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Mohammed Kapadia ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3msafetyproduct.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2015; the Forum received payment on December 15, 2015.
On December 16, 2015, GoDaddy.com, LLC confirmed by email to the Forum that the <3msafetyproduct.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 December 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@3msafetyproduct.com. Also on December 16, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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.
The Forum received various email messages from Respondent, the contents of which are described below.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant uses 3M trademark and trade name in connection with a wide variety of products and services, including respirators, protective eyewear, ear plugs, and other personal safety products. Complainant has used the 3M mark since at least as early as 1906. Complainant has operations in over 70 countries and sells its products in over 200 countries. Complainant owns thousands of trademark registrations for the 3M mark worldwide, and asserts that the mark is famous.
Complainant contends that the disputed domain name <3msafetyproduct.com>, registered by Respondent in 2013, is confusingly similar to its 3M mark; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent has no relationship with Complainant nor any authorization to use its 3M mark, and that Respondent has never been commonly known by the domain name or the mark. Complainant states further that the domain name is being used for a website containing Complainant's mark and an imitation of its 3M logo, and a layout that imitates that of Complainant's own <3msafety.com> website. The website offers what it describes as Complainant's products along with products manufactured by Complainant's direct competitors.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. In email correspondence with the Forum, Respondent identified himself as a web developer who had registered the disputed domain name and developed the corresponding website on behalf of a client, Ink Drops Printing of Dubai. In a subsequent message, Respondent stated that "my client is not willing to take up any claims because I own the domain and website as he has not paid my remaining amount which is due to him."
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.").
The disputed domain name incorporates Complainant's registered mark 3M, adding the generic term "safety product," which describes Complainant's products, and the ".com" top-level domain. These additions do not diminish the similarity between the domain name and Complainant's mark. See, e.g.,
3M Co. v. Glass Coating Specialist, Inc., FA 1409686 (Nat. Arb. Forum Nov. 1, 2011) (finding <3msafetyfilm.com> confusingly similar to 3M). The Panel therefore considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name combines Complainant's mark with terms that describe Complainant's products, and has been used for a website that imitates Complainant's site and sells products that compete directly with Complainant's products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Bop, LLC v. Xideyi, FA 1645992 (Forum Dec. 7, 2015); Homer TLC, Inc. v. Samson Lepcha / Lepcha LLC, FA 1645023 (Forum Nov. 25, 2015). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name is being used for a website that closely imitates Complainant's site and sells directly competing products, and presumably was registered for this purpose, clearly evincing bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv). See, e.g., Bop, LLC, supra; Homer TLC, Inc., supra.
Respondent states that he registered the domain name and developed the corresponding website on behalf of a client. However, a domain name registrant is responsible for the use to which the domain name is put. See Metropolitan Washington Airports Authority v. Vikas Rao, FA 1344360 (Nat. Arb. Forum Oct. 21, 2010) (imputing client's bad faith to web developer).
The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3msafetyproduct.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 7, 2016
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