3M Company v. Ying ter Wang Ju Le Bu Ltd.
Claim
Number: FA0501000397553
Complainant is 3M Company (“Complainant”), represented
by Joel D. Leviton, of Fish & Richardson P.C., P.A., 60 South Sixth Street, Suite 3300, Minneapolis, MN 55402. Respondent is Ying ter Wang Ju Le Bu Ltd. (“Respondent”), 60-262, Dong-lu-yuan,
Jiao-wang-zhuang, Tongzhou, Beijing 101101, CHINA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <postitafrica.com>, registered with Go
Daddy Software, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
5, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 7, 2005.
On
January 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <postitafrica.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 31, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@postitafrica.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
February 3, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <postitafrica.com>
domain name is confusingly similar to Complainant’s POST-IT mark.
2. Respondent does not have any rights or
legitimate interests in the <postitafrica.com> domain name.
3. Respondent registered and used the <postitafrica.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, 3M
Company, develops and markets a variety of products that serve a diverse field
of customers throughout the world.
Complainant introduced the now famous POST-IT brand of adhesive backed
paper and stationery notes approximately thirty years ago. Since that time, Complainant has used the
POST-IT mark in connection with a variety of products including, without
limitation, note pads, printed notes, trays for holding stationery paper,
adhesive tape, cover-up tape, tape flags, computer software, easel pads and paper,
bulletin boards, glue sticks and paper and cardboard sheets containing adhesive
coatings.
Complainant
sells its POST-IT brand products on six continents in hundreds of countries
worldwide. Through its subsidiaries in
Egypt, Kenya, Morocco, South Africa and Zimbabwe, Complainant offers an array
of products, including POST-IT brand products, to many nations within the
African continent.
Complainant has
numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the POST-IT mark (Reg. Nos. 1,046,353 issued August 17, 1976;
1,198,694 issued June 22, 1982; 1,208,297 issued September 14, 1982). Additionally, Complainant has registered the
POST-IT mark with trademark authorities throughout the world, including
Respondent’s home country, China (Reg. Nos. 317768 issued June 30, 1988; 785258
issued October 21, 1995; 802744 issued December 28, 1995).
Respondent
registered the <postitafrica.com> domain name on October 21,
2003. Respondent’s domain name resolves
to a website located at the <smutlist.com> domain name that features
pornographic material as well as links and advertisements for various
commercial pornographic websites.
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."
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.
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.
Complainant has
established rights in the POST-IT mark through registration with the USPTO and
various trademark authorities worldwide as well as through continuous use of
the mark in commerce. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <postitafrica.com> domain name is
confusingly similar to Complainant’s POST-IT mark because Respondent’s domain
name incorporates the mark in its entirety and merely adds the geographic term
“africa.” Combining a
geographic term with Complainant’s registered marks does not circumvent
Complainant’s rights in the mark nor avoid the confusing similarity aspect of
Policy ¶ 4(a)(i). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly
similar to Complainant’s CMGI mark); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000)
(finding that Respondent’s registration of the domain name
<net2phone-europe.com> is confusingly similar to Complainant’s mark . . .
"the combination of a geographic term
with the mark does not prevent a domain name from being found confusingly
similar").
Furthermore,
Respondent’s addition of the generic top-level domain “.com” and the omission
of the hyphen between the words in Complainant’s POST-IT mark is not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see
also Nat’l Cable
Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that
the domain name <cspan.net>, which omitted the hyphen from the trademark
spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton
Hotel Co. v. Club Car Executive
Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a
hyphen in the domain names is not sufficient to differentiate the domain names
from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations set forth in
the Complaint as true and accurate. See
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.”); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts).
Additionally,
the Panel may interpret Respondent’s failure to respond to the Complaint as an
admission that Respondent lacks rights and legitimate interests in the <postitafrica.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name); see
also Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent is
not using the disputed domain name in connection with 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) because Respondent’s domain name is
identical to Complainant’s mark and diverts Internet users to a commercial
website featuring explicit and pornographic material. See ABB Asea Brown Boveri Ltd. v. Quicknet,
D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the
disputed domain name in connection with pornographic images and links tarnishes
and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or
legitimate interests in the disputed domain name); see also Target Brands, Inc.
v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002)
(“Misdirecting Internet traffic by utilizing Complainant’s registered mark [in
order to direct Internet users to an adult-oriented website] does not equate to
a bona fide offering of goods or services . . . nor is it an example of
legitimate noncommercial or fair use of a domain name . . . Respondent was
merely attempting to capitalize on a close similarity between its domain name
and the registered mark of Complainant, presumably to gain revenue from each
Internet user redirected to the pornographic website.”).
Furthermore, nothing
in the record establishes that Respondent is commonly known by the <postitafrica>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s POST-IT mark. Therefore,
the Panel concludes that Respondent lacks rights and legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is capitalizing on
the goodwill of the POST-IT mark by using the disputed domain name to divert
Internet users to a commercial pornographic website. Since the disputed domain name contains Complainant’s mark, a
consumer searching for Complainant would become confused as to Complainant’s
affiliation with the resulting website.
Therefore, Respondent’s opportunistic use of the disputed domain name
represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain).
Furthermore, Respondent’s
tarnishing use of the <postitafrica.com>
domain name to redirect Internet
users to an adult-oriented website is further evidence of bad faith pursuant to
Policy ¶ 4(a)(iii). See MatchNet
plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association
of a confusingly similar domain name with a pornographic website can constitute
bad faith); see also Ty, Inc. v.
O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary
evidence, linking the domain names in question to graphic, adult-oriented
websites is evidence of bad faith).
Moreover, Respondent had
actual or constructive knowledge of Complainant’s rights in the POST-IT mark
due to Complainant’s registration of the mark with the USPTO and with the
trademark authority of Respondent’s home country as well as due to the immense
international fame associated with Complainant’s mark. Thus, the Panel concludes that Respondent’s
registration of the <postitafrica.com> domain name with actual or
constructive knowledge of Complainant’s rights in the POST-IT mark is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <postitafrica.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
February 17, 2005
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