national arbitration forum

 

DECISION

 

3M Company v. B K Jeong

Claim Number:  FA0506000505494

 

PARTIES

Complainant 3M Company (“Complainant”) is represented by Joel D. Leviton of Fish & Richardson P.C., P.A., 60 South Sixth Street, Suite 3300, Minneapolis, MN, 55402.  Respondent is B K Jeong (“Respondent”) #602 105-Dong Chunggu-Jeonwon Apt., Siji-Dong Suseong-Gu, Daegu, 706779, KR.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <3mcuno.com>, registered with Cydentity, Inc. d/b/a Cypack.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically June 24, 2005; the National Arbitration Forum received a hard copy of the Complaint June 27, 2005.  The Complaint was submitted in both Korean and English.

 

On June 27, 2005, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the domain name <3mcuno.com> is registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the current registrant of the name.  Cydentity, Inc. d/b/a Cypack.com verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 7, 2005, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 27, 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@3mcuno.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 August 2, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <3mcuno.com>, is confusingly similar to Complainant’s 3M mark.

 

2.      Respondent has no rights to or legitimate interests in the <3mcuno.com> domain name.

 

3.      Respondent registered and used the <3mcuno.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, 3M Company, develops and markets innovative products and solutions that serve a diverse field of customers throughout the world.  Since it was founded in 1902, Complainant has become a global company with milestones including the development of the world’s first waterproof sandpaper in the early 1920s, the invention of masking tape in 1925, the development of Scotch brand cellophane tape in the late 1920s, and the development of Post-it Notes in the 1970s.  In 2004, Complainant’s sales topped $20 billion.

 

In 1906, Complainant adopted a logo containing the designation of 3M CO.  Since then, the 3M mark has appeared on variety of products.  Complainant also holds nearly 300 trademark registrations for marks comprising or containing the 3M mark with the United States Patent and Trademark Office (“USPTO”) (E.g. Reg. No. 1550833 issued August 8, 1989). 

 

On May 12, 2005, at 6:00AM Eastern Time, Complainant issued a press release announcing its plan to acquire Cuno Inc., a leading designer, manufacturer and marketer of filtration products.  Later that same day, Respondent registered the <3mcuno.com> domain name.  The disputed domain name was originally registered to H J Shin, who transferred it to Respondent after receiving the Complaint.

 

DISCUSSION

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 will draw such inferences as the Panel 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.”).

 

Paragraph 4(a) of the Policy requires Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant’s registration for its 3M mark with the USPTO is sufficient to establish a prima facie case of rights in the mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).  Because Respondent failed to submit a response, Complainant’s presumption of rights is undisputed.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“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.”).  Thus, the Panel finds that Complainant has established rights for purposes of Policy ¶ 4(a)(i).

 

Complainant argues that the domain name that Respondent registered, <3mucno.com>, is confusingly similar to its 3M mark.  The disputed domain name wholly incorporates the famous 3M mark and combines it with the trademark of a company 3M intends to acquire.  The Panel holds that the term “cuno” relates to 3M’s business activities since it is the subject of an acquisition.  Thus, the Panel concludes that the addition of such a term is not sufficient to distinguish Complainant’s mark from the disputed domain name.  See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).

 

            The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant’s allegation that Respondent has no rights to or legitimate interests in the <3mcuno.com> domain name establishes a prima facie case.  Consequently, the burden shifts to Respondent to produce concrete evidence to dispute Complainant’s assertions.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):

 

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.

 

Id.; see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  The Panel will analyze whether Respondent could meet its burden of establishing rights or legitimate interests for purposes of Policy ¶ 4(a)(ii). 

 

Complainant argues that Respondent is not commonly known by the disputed domain name.  In fact, Respondent’s WHOIS information indicates that Respondent is known as “B K Jeong.”  Because Respondent did not submit a response, the Panel accepts Complainant’s allegations as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).  The Panel concludes that because Respondent is not commonly known by the disputed domain name, it has not established rights or legitimate interests under Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). 

 

Moreover, Complainant argues that the content of Respondent’s website, a picture of a computer and a link to an email address, is indicative that Respondent has no rights to or legitimate interests in the <3mcuno.com> domain name under Policy ¶ 4(a)(ii).  Because Respondent did not submit a response, the Panel must accept Complainant’s descriptions as accurate and allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  Respondent diverts users who are looking for Complainant’s newly merged company to a website that is unrelated to the mark.  The Panel holds that such diversion is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under 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).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).  Therefore, the Panel concludes that Respondent does not have rights to or legitimate interests in the domain name pursuant to Policy ¶ (4)(c)(i) or (iii).

 

Accordingly, the Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent registered the <3mcuno.com> domain name with actual or constructive knowledge of Complainant’s rights in the 3M mark.  Given the worldwide prominence of Complainant’s mark and Complainant’s 300 registrations of the mark with the USPTO, the Panel concludes that Respondent had constructive knowledge of Complainant’s rights.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); see also 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.”).  Moreover, Respondent had actual knowledge of Complainant’s rights in the mark due to the obvious connection between Complainant’s press release regarding its acquisition of Cuno and the <3mcuno.com> domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).  The Panel holds that registration of a confusingly similar domain name with actual or constructive knowledge of Complainant’s rights in the mark constitutes bad faith use and registration under Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

 

Moreover, Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.  Respondent is capitalizing on the opportunity to register a domain name that contains the names of both companies that are about to merge in order to confuse potential consumers.  The Panel concludes that such registration is evidence of opportunistic bad faith and constitutes bad faith use and registration under Policy ¶ 4(a)(iii).  See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). 

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <3mcuno.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: August 11, 2005

 

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