3M Company v. zhengyonghong
Claim Number: FA1807001795262
Complainant is 3M Company (“Complainant”), represented by Andrea Shannon of Norton Rose Fulbright US LLP, Texas, USA. Respondent is zhengyonghong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usa-3m.com>, registered with Guangdong JinWanBang Technology Investment Co., Ltd.
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 Forum electronically on July 3, 2018; the Forum received payment on July 3, 2018.
On July 5, 2018, Guangdong JinWanBang Technology Investment Co., Ltd. confirmed by e-mail to the Forum that the <usa-3m.com> domain name is registered with Guangdong JinWanBang Technology Investment Co., Ltd. and that Respondent is the current registrant of the name. Guangdong JinWanBang Technology Investment Co., Ltd. has verified that Respondent is bound by the Guangdong JinWanBang Technology Investment Co., Ltd. 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 July 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2018 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@usa-3m.com. Also on July 9, 2018, 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 August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Supported Language Request
Complainant requests that the language of this administrative proceeding be the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likelihood that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be conducted in the English Language.
A. Complainant
Complainant made the following contentions
Complainant, 3M Company, is a famous company that sells products in over 200 countries and has operations in over 70 countries. Complainant has rights in the 3M mark based upon its registration of the mark with the United States Patent and Trademark Office ("USPTO”) (e.g., Reg. No. 3,398,329 registered Mar. 18, 2008). See Compl. Ex. D. Respondent’s <usa-3m.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire 3M mark in the domain name plus a hyphen and the generic geographic term “usa.”
Respondent lacks rights and legitimate interests in the <usa-3m.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in order to sell counterfeit versions of Complainant’s goods, advertise unauthorized listings of authentic 3M goods, and feature links to a competing website.
Respondent registered and uses the <usa-3m.com> domain name in bad faith. Respondent demonstrates a pattern of bad faith registration when it registered domain names incorporating famous marks. Additionally, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website which features Complainant’s 3M mark in order to pass off as Complainant. Respondent also uses the disputed domain name to directly compete with Complainant and divert users to competing, third party websites. Further, Respondent had actual knowledge of Complainant’s rights in the 3M mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the provision of a broad range of goods and services, including water treatment and filtration products and related goods and services.
2. Complainant has established its trademark rights to the 3M mark, by virtue of its registration of the mark with the United States Patent and Trademark Office ("USPTO”) (e.g., Reg. No. 3,398,329 registered Mar. 18, 2008).
3. Respondent registered the <usa-3m.com> domain name on September 15, 2012.
4. Respondent uses the disputed domain name to pass itself off as Complainant in order to sell counterfeit versions of Complainant’s goods, advertise unauthorized listings of authentic 3M goods, and feature links to a competing website.
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 (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 question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the 3M mark based upon its registration of the mark with the USPTO. Registration with the USPTO is sufficient to establish complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides two of its registrations with the USPTO (e.g., Reg. No. 3,398,329 registered Mar. 18, 2008). See Compl. Ex. D. Therefore, the Panel finds that the Complainant has rights in the 3M mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 3M mark. Complainant argues that Respondent’s <usa-3m.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the mark in its entirety plus a generic geographic term, a hyphen and a gTLD in the domain name. The addition of a geographic terms is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Furthermore, the addition of a hyphen and gTLD to a complainant’s mark is also insufficient. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Here, Respondent incorporates Complainant’s mark in its entirety plus the geographic term “usa,” a hyphen, and a “.com” gTLD. Consequently, the Panel finds that Respondent’s <usa-3m.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 trademark and to use it in its domain name, adding only the generic geographic term “usa”;
(b) Respondent registered the <usa-3m.com> domain name on September 15, 2012;
(c) Respondent uses the disputed domain name to pass itself off as Complainant in order to sell counterfeit versions of Complainant’s goods, advertise unauthorized listings of authentic 3M goods, and feature links to a competing website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <usa-3m.com> domain name. Specifically, Complainant submits that Respondent is not authorized or permitted to use Complainant’s 3M mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies the Respondent as “zhengyonghong,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way. See Compl. Ex. B. Accordingly, the Panel concludes that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant further submits that Respondent fails to use the <usa-3m.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant submits that Respondent uses the disputed domain name to pass itself off as Complainant in order to divert internet users to Respondent’s webpage to offer goods that compete directly with Complainant. Use of a domain name to divert internet traffic to a webpage that competes directly with a complainant may not show rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business 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).”). Complainant provides screenshots of webpages associated with the disputed domain name, with which Complainant claims Respondent attempts to trick users into believing there is an association between Complainant and Respondent. See Compl. Exs. E and F. Complainant argues that this user confusion disrupts its business because it diverts 3M customers to a website selling competing goods and featuring a link to another site offering goods of a 3M competitor. Id. Therefore, the Panel concludes that the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant contends Respondent uses the <usa-3m.com> domain name to sell counterfeit and/or genuine, unauthorized versions of 3M goods. Use of a confusingly similar domain name to sell counterfeit goods or a complainant’s actual goods/services may demonstrate a lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots of the disputed domain name’s resolving website to support its submissions. See Compl. Ex. E. Therefore, the Panel finds Respondent’s selling of counterfeit and/or unauthorized products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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 argues that Respondent exhibits a pattern of bad faith registration of domain names incorporating famous marks. Specifically, Respondent submits that Respondent also registered <usa-pentair.com> and that Pentair is a 3M competitor. Registering domain names which incorporate famous, third-party marks may support a finding for a pattern of bad faith under Policy ¶ 4(b)(ii). See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). Here, Complainant provides a partial reverse WHOIS search showing Respondent’s registration of the <usa-pentair.com> domain name. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant submits Respondent registered and uses the <usa-3m.com> domain name in bad faith. Specifically, Complainant submits that Respondent uses the disputed domain name to disrupt Complainant’s business and attract users for commercial gain. Complainant argues Respondent does this by attempting to pass off as Complainant and offer competing, counterfeit and/or unauthorized versions of Complainant’s goods. Use of a domain name to pass off as complainant in order to provide competing goods or services may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides screenshots of the disputed domain name’s resolving website and submits this features Complainant’s mark in connection with counterfeit or unauthorized products and a links to a competing website. See Compl. Ex. E. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the 3M mark prior to Respondent’s registration of the <usa-3m.com> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Here, Complainant provides screenshots of the webpages associated with the disputed domain name and submits Respondent displays the 3M mark in connection with photographs of counterfeit or unauthorized 3M products. See Compl. Ex. E. Therefore, the Panel concludes that the Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the 3M mark and in view of the conduct that Respondent has engaged in when using the disputed 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 <usa-3m.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: August 5, 2018
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