3M Company v. Mavrodi Sergey / MMM
Claim Number: FA1603001667744
Complainant is 3M Company (“Complainant”), represented by Andrea Shannon of Norton Rose Fulbright US LLP, Texas, United States. Respondent is Mavrodi Sergey / MMM (“Respondent”), Minnesota, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <3m.company>, <3m.email>, <3mlife.info>, <3mlife.org>, <3mphp.info>, and <3mphp.org>, registered with Godaddy.Com, Llc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2016; the Forum received payment on March 29, 2016.
On March 29, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <3m.company> and <3m.email> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. On April 4, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <3m.company>, <3m.email>, <3mlife.info>, <3mlife.org>, <3mphp.info>, and <3mphp.org> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 April 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2016 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.company, postmaster@3m.email, postmaster@3mlife.info, postmaster@3mlife.org, postmaster@3mphp.info, and postmaster@3mphp.org. Also on April 11, 2016, 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 May 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the owner of the 3M mark and trade name. It commenced use of the 3M mark and name at least as early as 1906. Since that time, it has continuously used the 3M mark and name in commerce in the United States. Since 1978, it 3M company has used its iconic red 3M logo. Over the past century, Complainant has expanded its use of the 3M mark and at present offers over 50,000 products and services in a wide variety of fields under the 3M mark, including a number of products and software systems designed for use in the financial sector. Complainant currently has operations in over 60 countries and sells its products in over 200 countries. Complainant has registered the 3M mark in the US, with rights dating back to 1999, and elsewhere around the world. The mark is famous.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s 3M mark as they wholly incorporate the mark and merely add the generic terms “life” or “php,” and the generic top-level domains “.company,” “.email,” “.info,” or “.org.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent’s <3m.company> and <3m.email> domains resolve to websites where Respondent appears to offer business consultation and financial services; these resolving websites also feature a red 3M logo that closely resembles Complainant’s logo. Respondent fails to make any active use of the <3mlife.info> domain. Finally, Respondent’s <3mlife.org>, <3mphp.info>, and <3mphp.org> domains feature a modified 3M logo and a login system requiring credentials in Chinese. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has registered and is using the disputed domain names in bad faith. First, Respondent uses its <3m.company> and <3m.email> domains to offer services unrelated to Complainant, in violation of Policy ¶ 4(b)(iv). Second, Respondent uses the domains in an attempt to pass itself off as Complainant. Third, Respondent makes no active use of the <3mlife.info> domain. Finally, because Respondent provided a fictitious phone number and location on the WHOIS pages for its <3m.company> and <3m.email> domains, it is clear that Respondent registered the domains with actual knowledge of Complainant’s prior rights in the 3M mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark 3M and uses it to market a wide variety of products around the world. The mark is famous.
Complainant’s registration of its mark dates back to at least 1992.
The disputed domain names were registered in 2015. The WHOIS information for some of the disputed domain names is misleading.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
One of the disputed domain names is not being used. A privacy service was used for the registration of that domain name.
Some of the other disputed domain names point to web sites where Respondent appears to offer services unrelated to Complainant; these resolving websites also feature a red 3M logo that closely resembles Complainant’s logo. The other disputed domain names point to web sites that feature a modified 3M logo and a login system requiring credentials in Chinese.
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(f), 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 names are confusingly similar to Complainant’s 3M mark as they wholly incorporate the mark and merely add generic terms like “life” or “php,” and/or the generic top-level domains “.company,” “.email,” “.info,” or “.org.” Previous panels have held that the addition of a generic term to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a 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)). Previous panels have also found that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent has no license or authorization to use Complainant’s mark. Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. The Panel notes that the WHOIS information merely lists “Mavrodi Sergey / MMM” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Respondent’s <3m.company> and <3m.email> domains resolve to websites where Respondent appears to offer services unrelated to Complainant; these resolving websites also feature a red 3M logo that closely resembles Complainant’s logo. Respondent fails to make any active use of the <3mlife.info> domain. Finally, Respondent’s <3mlife.org>, <3mphp.info>, and <3mphp.org> domains feature a modified 3M logo and a login system requiring credentials in Chinese. Previous panels have held that a respondent’s use of a domain to offer products and/or services unrelated to those of a complainant does not constitute 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). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Previous panels have also determined that a respondent lacks rights and legitimate interests where it either fails to make any active use of a domain, or where it uses a domain in an attempt to pass itself off as a complainant. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Respondent uses its <3m.company> and <3m.email> domains to offer services unrelated to Complainant for commercial gain. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Indeed, past panels have found that a respondent’s use of a domain to divert Internet users from the website of a complainant to that of the respondent for the purpose of commercial gain violates Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). For this reason, the Panel finds that Respondent registered and is using the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Further, Respondent uses the domains in an attempt to pass itself off as Complainant. Specifically, Respondent’s use of a 3M logo that is similar in color, font, and stylization to that of Complainant’s red 3M logo is evidence of bad faith registration and use. Previous panels have determined that a respondent’s use of a domain to pass itself of as a complainant violates 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”). As such, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Respondent makes no active use of the <3mlife.info> domain. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:
“[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, the disputed domain name which is not actively used was registered through a privacy service that hid Respondent’s identity and contact details. That is, Respondent concealed his identity. There has been no response to the Complaint. The same person registered all of the disputed domain names. Given the bad faith use of the other disputed domain names, and the circumstances mentioned above, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name <3mlife.info> is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Finally, because Respondent uses a fictitious location on its <3m.company> and <3m.email> domains, and because Respondent uses a fictitious phone number on its <3m.company> domain, it is clear that Respondent registered the domains with actual knowledge of Complainant’s prior rights in the 3M mark. Specifically, Respondent lists the “St. Paul, MN” location and the +1.01651651651 phone, which are similar to Complainant’s actual headquarters location, St. Paul, Minnesota, and its phone number, which uses a “651” area code. Past panels have held that a respondent demonstrates bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See 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). Accordingly, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark, thereby violating 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.company>, <3m.email>, <3mlife.info>, <3mlife.org>, <3mphp.info>, and <3mphp.org> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 4, 2016
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